First Nominet appeal highlights gaps in procedure

In the first appeal case under Nominet's Dispute Resolution Service Policy, a three-member panel has upheld the decision to transfer 'seiko-shop.co.uk' and 'spoonwatchshop.co.uk' to Seiko UK Limited. The decision should have provided useful precedent, but other panels have failed to follow suit.

The facts in Seiko UK Limited v Designer Time/Wanderweb were not unusual. The registrant, Designer Time, is an independent retailer of genuine Seiko watches, which wanted to attract customers to its website. Therefore, it registered the two disputed domain names.

The appointed expert at first instance ordered the transfer of the domain names, having concluded that:

• Designer Time's registrations were abusive registrations, based on evidence submitted by Seiko to the effect that some public confusion had been caused;
  
  
• the domain names conferred an unfair advantage on Designer Time over its competitors; and
  
  
• this behaviour prevented Seiko from controlling the use of its trademarks on the Internet in a consistent manner.

The appeal panel agreed, finding that Designer Time used 'seiko-shop.co.uk' and 'spoonwatchshop.co.uk' in a way which created an impression of a commercial connection between it and Seiko which did not in fact exist.

While Nominet's Dispute Resolution Service Procedure states that either party has the right to appeal a decision by submitting written grounds of appeal within five days of the decision in question, it does not set out further procedural rules for appeals. Significantly, the panel in Seiko considered that the respondent should have an opportunity to make written submissions in response to the appeal, and that the appellant should in turn have a right to reply to those submissions. Having set a precedent, this procedure was followed in the subsequently appealed cases of Hanna-Barbera Productions Inc v Graeme Hay and Consorzio del Prosciutto di Parma v Vital Domains Limited.

However, the Seiko panel's decision not to re-examine the facts was not followed by the panels in Hanna-Barbera and Parma. Paragraph 9 of the Dispute Resolution Service Policy states: "The appeal panel will consider the appeals both on the basis that a matter be re-examined on the facts, and that procedure has not been correctly followed." While the Seiko panel would only interfere with the findings of fact if it were satisfied that those findings were wrong, the Hanna-Barbera and Parma panels conducted a full review of the facts (ie, a re-determination on the merits).

Unless the procedure regarding re-examination of fact followed by the Seiko panel is followed by other panels, unsuccessful first-instance litigants will be encouraged to appeal; for a fee of £3000 the matter will in effect be re-tried. Nominet should amend its Dispute Resolution Policy to preclude this.

Anna Carboni and Clare Young, Linklaters, London