Nominet Dispute Resolution Service Policy and Procedure amended
Legal updates: case law analysis and intelligence
Following a public consultation which began in 2006, Nominet, the registry for '.uk' domain names, has implemented changes to update its Dispute Resolution Service (DRS) Policy and Procedure, and to make recovery of domain names less expensive in some circumstances.
However, the substantive requirements of a successful DRS complaint remain unchanged. A complainant must:
- demonstrate rights in a name or mark identical or similar to the domain name at issue; and
- show that the registration of the domain name in the hands of the respondent is an abusive registration.
The new provisions govern complaints filed on or after July 29 2008.
The majority of changes to the policy restate accepted positions, rather than prescribe new grounds of relief:
- a threat to use a domain name in a way likely to confuse people "may be evidence" of an abusive registration;
- trading in domain names for profit is not of itself objectionable; and
- how a domain name is used is the registrant's responsibility.
An 'abusive registration' is still defined as a domain name either acquired or used in a manner which takes unfair advantage of, or is unfairly detrimental to, the complainant's rights. Nominet's 'either/or' approach is notably preferable to the dual requirements of registration and use in bad faith under the Uniform Dispute Resolution Procedure, as it offers a complete response for profiteering cybersquatters who realize the abusive potential of a domain name only post-acquisition.
The more significant changes implemented by Nominet relate to the DRS Procedure. In particular, where a registrant does not respond to a complaint, a complainant may obtain a summary decision for a reduced fee of £200 (plus value added tax (VAT)). A fully reasoned decision can be obtained for the (unchanged) fee of £750 (plus VAT), and will continue to be required to decide complaints where a response is submitted and mediation fails.
Another interesting amendment concerns situations where the complainant does not pay the fee to have the complaint referred to an expert after the period for mediation. If this happens under the new procedure, the respondent may pay the fee in place of the complainant and request a finding that the complainant has tried to acquire a domain name to which it had no entitlement (known as 'reverse domain name hijacking'). Apparently, the respondent can seek such a decision even if it does not respond to the complaint; otherwise, it may continue to ignore the DRS with financial impunity. The presumption of an abusive registration remains in respect of repeatedly abusive registrants, but has not been extended to reverse hijackers.
Although there is no word limit for the annexes to a complaint, the word limit for complaints (and responses) has more than doubled under the new procedure (to 5,000 words). Annexes should now be filed electronically using the revised online interface; where this is impossible, hard copies must be sent in triplicate.
Finally, an Expert Review Group has been formed to peer review all fully reasoned expert decisions before they are published. Members of the group will also form panels for appeal hearings. At present, only approximately 0.01% of all complaints are appealed, but that figure is now expected to fall.
Gareth Dickson, Ashurst LLP, London
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10