The deadline for submissions is 7 January 2013

CONSULTATION TO REGISTER DIRECTLY UNDER .UK FOR UNITED KINGDOM

Nominet's proposals include a number of significant initiatives, such as:

  1. Introduction with Sunrise

Firstly, it is planned that the registration of direct .uk domain names will be introduced in four phases, including two Sunrise phases for the owners of intellectual property rights.

  • Registered Rights Sunrise - Domain names corresponding to registered trade marks will be available to register and, in the event of multiple valid applications for the same domain name, will be allocated by auction.
  • Unregistered Rights Sunrise - Domain names corresponding to unregistered trade marks will be available to register and, in the event of multiple valid applications for the same domain name, will be allocated by auction.
  • Landrush - A domain name will be allocated by auction between multiple eligible valid applicants. The potential for these auctions represents the main significant difference from the General Availability period where domain names will be allocated first come first served.
  • General Availability
  1. Registered Rights Sunrise

The holders of registered marks will be eligible to apply for a domain name corresponding to their registered mark during this period. If there are multiple, valid applications for a domain name, the domain name will allocated by auction.

In order to form the basis for a registered rights sunrise application, it is likely that the trade mark must:

  • be in force in the UK (e.g. a UK trade mark, Community trade mark or international trade mark designating the UK);
  • have been registered before 1 July 2012;
  • be proved to have been put to genuine use in the UK in relation to a genuine offering or goods or services.
  1. Contractual prohibition on the sale of sub-domains, such as keyword.trademark.uk T

The registry plans to contractually prohibit the owners of direct .uk domain names from selling sub-domains created under any direct .uk domain name to third parties. For example, the owner of trademark.uk would be prevented from selling keyword.trademark.uk, but would most likely be allowed to create such sub-domains for his own internal use.

  1. Currently the proposal does not appear to prohibit:
  • the creation or use of such third level sub-domains containing third parties' registered marks; or
  • the distribution of third level sub-domains to third parties without a sale.

Nominet also proposes to verify that registrants of direct .uk domain names provide verifiable, UK land-based contact information, such as a physical address or a business presence. It has not yet been finalised what will be a sufficient UK business presence, but this likely to be mean an address for service in the UK: the registry proposes to post a PIN to the applicant which it will need in order to activate their direct .uk domain name registration. This may provide some deterrent but will not eliminate the possibility for bad faith actors.

Action to consider

Brand holders and existing registrants of .uk domain names should consider submitting their opinion to Nominet before Monday, 7 January 2013. The consultation is available online, please click here. It is also possible to contact Nominet directly regarding this at direct@nominet.org.uk. Further information about the consultation is available by clicking here; and here.

Brand holders should also exercise caution with other third party websites that may be collecting opinions on the consultation.

If you require assistance with preparing a submission or understanding how this proposal may affect your rights, please contact us.

General Knowledge: The existing .uk domain name system

In order to better inform your thoughts on Nominet's proposal, we set out below an overview of the existing regime for registering a .uk domain name.

Nominet administers a contractually-binding arbitral proceeding, known as the Dispute Resolution Service (DRS), which applies to disputes involving the registration of domain names under the existing .uk regime. The DRS is similar to the UDRP that applies to generic Top Level Domains, such as including .net and .com. Many of the provisions of the DRS, however, are considered to be more favourable to rightsholders.

Currently, there are five significant .uk extensions under which domain names may be registered. These can be grouped into two categories:

  • Those where registration is largely unrestricted; and
  • Those where registration is more restricted.

.co.uk Unrestricted

.org.uk Unrestricted

.me.uk Restricted

.ltd.uk Restricted

.plc.uk Restricted

An overview of the criteria to register names under the three restricted domains is provided below.

.me.uk

Registration is only available to natural persons (a “qualifying person"), who may not be recorded on the domain names register as being the agent, trustee, proxy or representative for any other type of person or entity. Two exceptions exist where:

  • the domain name was transferred to an entity which is not a qualifying person as a result of judicial proceedings or the Dispute Resolution Service, provided no use is made of the domain name; or
  • the domain name was registered before 25 October 2004.

.ltd.uk

Registration is specifically restricted to companies listed on the index of company and corporate names ('the Names Register'), maintained under section 714 of the Companies Act 1985 (or later equivalents). It is only possible to register one .ltd.uk domain name per company.

For .ltd.uk domains, the registrant must be entitled to use 'Limited', 'cyfyngedig', 'ltd.' or 'cyf'. in their corporate name and the domain name itself must be derived from the registered company name of the proposed registrant.

Nominet provides an algorithm to assist applicants for .ltd.uk domain names with their selection of an acceptable domain name.

.plc.uk

Regulation of the registration of .plc.uk domain names is similar to that in force for .ltd.uk domain names. Like .ltd.uk applications, it is specifically restricted to companies listed on the index of company and corporate names ('the Names Register') maintained under section 714 of the Companies Act 1985 (or later equivalents). It is, again, only possible to register one .plc.uk domain name per company.

For .plc.uk domains the registrant must be entitled to use 'Public Limited Company', 'Cwmni cyfyngedig cyhoeddus', 'Plc.' or 'ccc'. in their corporate name and the domain name must be derived from the registered company name of the proposed registrant.

Nominet provides an algorithm to assist applicants for .plc.uk domain names with their selection of an acceptable domain name.