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Registration and use of domains at ccTLD registry

Registry

Which entity is responsible for registration of domain names in the country code top-level domain (ccTLD)?

Nominet UK, a not-for-profit company limited by guarantee established in 1996, is the entity responsible for administering the .uk ccTLD and the second-level domains (SLDs) within the .uk TLD, except as provided below.

The SLDs administered by Nominet UK are the following:

  • co.uk (intended for commercial entities and purposes);
  • ltd.uk (intended for private limited companies);
  • me.uk (intended for personal names);
  • net.uk (intended for internet service providers’ infrastructure);
  • org.uk (intended for not-for-profit entities); and
  • plc.uk (intended for public limited companies).

In addition, domain name registrations directly under the .uk TLD became available in June 2014 (see www.dotuklaunch.uk).

Nominet also administers the following SLDs, but for restricted use:

  • nic.uk (intended for network use); and
  • sch.uk (intended for schools only).

The following SLDs within the .uk TLD are not administered by Nominet UK but by third-party registrars as trustees:

  • ac.uk (for higher and further education and research institutions);
  • gov.uk (for national, regional and local government bodies and agencies);
  • mod.uk and mil.uk (for military and related purposes);
  • nhs.uk (for National Health Service organisations); and
  • police.uk (for police forces).

Finally, Nominet is also the registry of the new generic top level domains (gTLDs) .wales and .cymru. However, the new .london and .scot gTLDs are administered by Dot London Domains Limited and the Dot Scot Registry, respectively.

Method

How are domain names registered?

.uk domain names are registered through a registrar and not through Nominet directly. A list of registrars offering .uk domain names is available on Nominet’s website.

By registering a domain name ending in .uk (with some very limited exceptions), the registrant enters into a contract of registration with Nominet and must abide by Nominet’s Terms and Conditions, including the now-consolidated (as from 1 October 2016) Dispute Resolution Service (DRS) Policy and DRS Procedure (the DRS Policy), as well as Nominet’s Rules of Registration and Use of Domain Names (the Rules). Nominet’s new Terms and Conditions came into effect on 1 March 2016 and the new Rules came into effect on 10 June 2014.

Any person may register an SLD within .uk. If a registrant address is not within the UK, a UK address for service must be provided (Rule 7).

Specific rules for each SLD

Each SLD has its own specific rules, as follows:

  • domain names registered in the .co.uk SLD are intended for commercial purposes (Rule 8) and .org.uk are intended for not-for-profit entities, such as charities, trades unions, political parties, community groups, educational councils and professional institutions (Rule 9). However, Nominet does not impose restrictions on the registration of third-level domains in either of these SLDs and the Rules explicitly provide that Nominet will not reject applications or take action against registrations that do not comply with the intended purpose of these SLDs (Rule 4.4);
  • registrants of .me.uk domain names must be, and must remain, natural persons (as opposed to legal entities), with certain exceptions in the case of a transfer of a domain name as a result of a DRS or judicial proceedings or of a transitional measure (Rule 10);
  • all registrants in .ltd.uk and .plc.uk must be incorporated companies under section 714 of the United Kingdom Companies Act 1985 (or later equivalents). Third-level domain names in the .ltd.uk and .plc.uk SLDs must correspond to the company name as recorded in Companies House, and applicants must provide proof of the company’s incorporation (Rule 11.2.2); and
  • registrants in the .net.uk SLD are required to be internet service providers. The domain name registered must be identical or similar to the applicant’s name (Rule 12).

Reservation rights for .uk

As previously mentioned, domain name registrations directly under the .uk TLD became available on 10 June 2014 (eg, example.uk). Nominet will automatically reserve the third-level domain names of existing SLDs at the second level of the .uk TLD for five years (ie, until 10 June 2019), provided that the initial registration at the third level remains active. For instance, example.uk will be reserved for a period of five years to the registrant of example.co.uk. After the five-year period, the domain name will become available for registration on a first-come, first-served basis.

However, where the same string is registered to two or more people under different third levels (for example, one person is the registrant of example.co.uk and another example.org.uk), the registrant of the .co.uk domain name will be eligible for the same string directly under .uk, and if no .co.uk domain name has been registered then the .org.uk will be offered the .uk equivalent.

To prevent any ‘gaming’ of the system, this method will only apply to third-level domain names registered on or before 28 October 2013. Only third-level domain names registered after this date (but before 10 June 2014) under .co.uk will automatically be allocated the corresponding .uk domain name, and domains registered under non-.co.uk extensions will not be granted any rights. This is the case unless there is a ‘clash’ with a domain name registered on or before 28 October 2013, in which case the prior system will apply.

This means, for instance, that if example.co.uk was registered after 28 October 2013 but a corresponding .org.uk domain name was registered before the cut-off date, then the registrant of the .org.uk domain name will be allocated the string directly under .uk. After 10 June 2014, new registrations at the third level do not grant registrants an automatic right to register the same string directly under .uk.

Nominet has created an online ‘rights lookup’ tool that shows whether a domain name (whether it currently exists or not) will confer its registrant the right to the .uk equivalent (available at www.theukdomain.uk/do-i-have-uk-rights/).

Registration policy

Traditionally Nominet has had an open registration policy, accepting domain name registrations on a first-come, first-served basis without vetting applications (Rule 4.2). However, there are some restrictions applicable to domain names administered by Nominet.

Domain name registrations at the second or third level under the .uk TLD are restricted as follows (Rule 5):

  • domain names may only contain the following 37 characters or a combination thereof: the 26 unaccented Roman letters (namely, a-z); the 10 Western digits (0-9); and hyphens;
  • the first or last characters of a .uk domain name may not be a hyphen;
  • domain names may not contain characters with diacritics, such as accents, cedillas and ogoneks (ie, internationalised domain names);
  • domain names may not be more than 64 characters long in total, including the third and second-level domain and the TLD; and
  • characters corresponding to an existing SLD in .uk (ac, co, gov, ltd, me, mil, mod, net, nhs, nic, org, plc, police and sch) are not to be permitted (for policy reasons) as a third-level domain within co.uk, me.uk, org.uk and net.uk.

Proscribed domain names and criminal activity

In 2014 Nominet revised its domain name registration policy following an independent policy review led by former Director of Public Prosecutions, Lord Macdonald (2013). As a result, Nominet prohibits the registration of domain names that promote or incite serious sexual offences (condition 6.1.4 of Nominet’s Terms and Conditions). According to Nominet’s Terms and Conditions, Nominet will, in its sole discretion, determine whether a domain name appears, on the face of it, to indicate, comprise or promote a serious sexual offence and there is no reasonable or legitimate use for that domain name. In such cases, the proscribed domain name will be suspended and the registrant and registrar informed. Registrants will then have 30 days to appeal Nominet’s assessment, and any disagreement will be referred to an independent external body for review.

Nominet’s Terms and Conditions also expressly prohibit the use of any .uk domains to carry out criminal activity (condition 6.1.5). Accordingly, law enforcement agencies are able to notify Nominet that specific domain names are being used for criminal activity and Nominet will then work together with its registrars to suspend the domain names in question.

Duration

For how long is registration effective?

The registration duration of a .uk domain name may vary depending on the registrar used. A .uk domain name can be registered for between one and 10 years.

Cost

What is the cost of registration?

The cost for registration of .uk domain names varies broadly among registrars. The price includes the registration fee charged by Nominet and other charges for other services provided by the registrar. Registrars that are accredited by Nominet benefit from a discount on Nominet’s registration fees (available on Nominet’s website). The Nominet fee for non-accredited registrars is £80 plus VAT per domain name registration for two years.

Transfer

Are registered domain names transferable? If so, how? Can the use of a domain name be licensed?

A registrant of a .uk domain name may transfer a domain name to a third party by following the registrant transfer process, in accordance with condition 11.3 of Nominet’s Terms and Conditions. To initiate the registrant transfer process, the registrant must log in to his or her Nominet account and select the ‘Transfer Domain(s)’ service. This service costs £10 plus VAT, which can be paid by either the current or new registrant. Nominet-accredited registrars may also carry out the registrant transfer process on behalf of the registrant.

A registrant of a .uk domain name may also transfer a domain name from one registrar to another either by contacting the current registrar or through Nominet by logging into the registrant’s ‘Online Services’ account and selecting the ‘registrar change’ service. Nominet’s fees for this service amount to £10 plus VAT.

.uk domain names can also be transferred as a result of a Nominet DRS procedure or a court order.

A registrant may not transfer a .uk domain name registration pending proceedings under the DRS Policy or for a period of 10 days after their conclusion (unless the transfer is to the complainant as a result of a settlement reached between the parties and approved by Nominet); or during pending court or arbitration proceedings. In addition, a registrant may not, without the complainant’s consent, transfer the hosting of a .uk domain name to another registrar pending proceedings under the DRS Policy or for 10 days after its conclusion (paragraph 26 of the DRS Policy).

Nominet’s Terms and Conditions expressly provide that ‘a domain name is not an item of property and has no “owner”’ (condition 7.1). However, nothing prevents a registrant from licensing the use of a domain name to a third party during the course of the registration period, provided that such registration or use does not contravene Nominet’s Terms and Conditions and Rules of Registration and Use of Domain Names. Generally, the registration agreement for .uk domain names (between the registrar and the domain name registrant) will incorporate an ‘agency clause’ providing that in the event that the registrant intends to license use of a domain name, the registrant accepts that it will remain the registrant of record, will be responsible for maintaining accurate contact information and will be liable for harm caused by wrongful use of the domain name.

ccTLD versus gTLD registration

What are the differences, if any, with registration in the ccTLD as compared with a generic top-level domain (gTLD)?

Traditionally, Nominet has had an open registration policy for .co.uk and .org.uk in the same way as many generic top-level domains (gTLDs), such as .com and .org. However, as explained previously, Nominet has recently reviewed its open registration policy and has implemented certain changes, particularly as regards screening and suspension of domain name registrations involving terms related to serious sexual offences or domain names used for unlawful purposes (ie, criminal activity), which is an element that will set it apart from many gTLDs and other ccTLDs.

Also, as described in question 1, a number of the SLDs have specific restrictions (eg, .me.uk and .ltd.uk).

Registrants’ privacy

Can the registrant use a privacy service to hide its contact information?

In 2015 Nominet introduced two major changes to its WHOIS framework (in force as of 1 March 2016), namely:

  • refining the criteria for its WHOIS Address Opt Out Policy, which allows individuals to opt out of having their addresses published on WHOIS; and
  • officially recognising and allowing registrants to use privacy services to conceal their contact information.

These changes came about further to an extensive consultation process which took place in mid-2015.

According to Nominet’s WHOIS Address Opt Out Policy (in force as of 1 September 2015), domain name holders that are non-trading individuals can opt out of having their address details published on WHOIS (a service provided by Nominet free of charge). Two conditions must be met in order to be able to opt out:

  • the registrant must be an individual (as opposed to a company, organisation or association); and
  • the domain name must not be used to transact with customers (ie, to accept or arrange payments) or primarily to advertise or promote goods, services or facilities. For example, a registrant using a domain name for a blog containing a small amount of pay-per-click links is likely to be held eligible to opt out. However, a registrant using a domain name for commercial purposes such as for a website primarily advertising goods or services or offering the domain name in question for sale on the website will not be eligible to opt out.

In order to opt out, the registrant may either submit a request to the registrar or log in to its Nominet online account and select the opt-out option on the account summary page.

The second major change is that Nominet now officially recognises and allows the use of WHOIS privacy services. Previously Nominet did not recognise privacy services and therefore the legal registrant of record was not the underlying registrant using the privacy protection service, but rather the privacy protection service itself. Accordingly, the Registrar Agreement and associated policies have been amended in order to set out the standards registrars must meet if they opt to use the privacy services functionality, namely:

  • act as an address for service for the registrant;
  • respond to or transmit abuse complaints from third parties to the registrant; and
  • provide contact details of the privacy service to be validated by Nominet and which will be published in WHOIS.

Nominet will make registrant contact information available to third parties, such as law enforcement agencies and intellectual property investigators upon request, in accordance with its disclosure policy (as discussed in question 8).

Pre-litigation actions

Disclosure of registrants’ private details

Under what circumstances will a registrant’s privacy-protected contact information be disclosed? What processes are available to lift a registrant’s privacy shield?

The specific circumstances and processes under which a registrant’s privacy shield will be lifted are specified by the registrar that has opted to use the privacy service functionality, in accordance with Nominet’s Privacy Services Acceptable Use Policy. As mentioned in question 7, Nominet will disclose personal data relating to .uk domain name registrations to third parties only for the reasons set out in condition 8 of its Terms and Conditions, mainly to a party with a legitimate interest (based on the exemptions in the data protection legislation), including law enforcement agencies. However, the registrar will be notified if a registrant’s personal data is to be released.

In addition, any party who considers that a registrant has incorrectly opted out its address from WHOIS (pursuant to Nominet’s WHOIS Address Opt Out Policy) may submit a complaint to Nominet via its website (at https://secure.nominet.org.uk/account/whois-complaint.html). Nominet will then investigate whether the registrant is in compliance and, if not, Nominet will disclose the registrant’s address in the WHOIS record. The domain name can also be locked to prevent the registrant from opting back out without appropriate verifications to ensure it is eligible for opt-out. A registrant may, however, appeal Nominet’s removal of the opt-out on a domain name.

Third-party notification

Are third parties (such as trademark holders) notified of a domain name registration or attempt to register a domain name? If so, how? If not, how can third parties receive notice?

Nominet does not notify trademark holders of a domain name registration or attempt to register a .uk domain name potentially infringing a trademark. Trademark holders must thus monitor .uk domain name registrations on their own or subscribe to a domain name monitoring service. However, a trademark holder may be notified of potentially infringing domain name registrations under .wales, .cymru or .london (or any other new gTLD) if they register their trademarks with the Trademark Clearinghouse, a central trademark database designed to support rights protection mechanisms under the new gTLD programme, such as the Trademark Claims and Sunrise Services.

Notice to the registrant

Is there a need to notify the domain name registrant before launching a complaint or initiating court proceedings?

There is no need to notify the domain name registrant before launching a complaint under Nominet’s DRS Policy, although a trademark holder may consider, depending on the particular circumstances of the case, sending a cease-and-desist letter prior to filing a complaint in order to attempt to obtain the transfer of the domain name.

Before initiating court proceedings, the parties must engage in a pre-action dialogue in an attempt to exchange information about the issue and settle the dispute outside the court. This involves notifying the registrant that court proceedings will be commenced if the parties cannot come to a settlement. However, if there is a legitimate argument that pre-action discussions would defeat the purpose of the application, then the court will not expect the applicant to initiate such discussions. While pre-action discussions (usually in the form of an exchange of letters between the parties) are the norm for trademark infringement or passing-off disputes that would, if escalated, end up in court, in the context of domain name disputes under the DRS Policy there is no equivalent requirement for pre-action dialogue, and complaints are often filed without prior notice to avoid the risk of the domain name in question being transferred to another registrant or another registrar.

Transfer or cancellation

Procedure

What is the typical format for a cancellation or transfer action in court litigation (domains registered in either a ccTLD or a gTLD) and through ADR (ccTLD only)?

ADR: Nominet’s DRS

Nominet has been providing a dispute resolution service to resolve .uk domain name disputes since 2001. Nominet’s DRS Policy (version 4) applies to all disputes filed on or after 1 October 2016. It should be noted that domain name disputes involving domain name registrations under new gTLDs administered by Nominet, such as .wales and .cymru, are subject to the Uniform Domain Name Dispute Resolution Policy (UDRP) or the Uniform Rapid Suspension System (URS); thus Nominet’s DRS Policy does not apply to the new gTLDs administered by Nominet.

Substantive aspects

Pursuant to paragraph 2 of the DRS Policy, Nominet will order the transfer or cancellation of a .uk domain name provided the complainant demonstrates that the complainant has rights in respect of a name or mark that is identical or similar to the domain name; and the domain name, in the hands of the respondent, is an ‘abusive registration’.

Rights, as defined in paragraph 1 of the DRS Policy, mean rights enforceable under English law or otherwise, and may include rights in descriptive terms that have acquired a ‘secondary meaning’. Thus, rights are broadly defined to include not only trademark rights, whether registered or unregistered, but other rights such as contractual rights or personality rights. Furthermore, there are no geographical or jurisdictional restrictions with regard to ‘rights’ (paragraph 1.5 of the Experts’ Overview). However, the mere registration of a company name at Companies House does not in and of itself give rise to any ‘rights’ within the meaning of the DRS Policy (paragraph 1.7 of the Experts’ Overview). Neither will a trademark application in and of itself, without evidence of unregistered rights, give rise to rights for the purpose of the DRS Policy.

This first requirement is therefore essentially a low threshold test designed to determine whether a complainant has standing to bring a complaint. However, if the right is disputed or the surrounding circumstances are particularly complex, the complaint may be rejected for ‘not being appropriate for adjudication under the Policy’ (paragraph 1.6 Experts’ Overview and DRS 04632 (ireland.co.uk)).

As regards the identity or similarity test, the wording of the DRS Policy is considerably broader than that of the UDRP (which refers to ‘confusing similarity’). Like the UDRP, if the complainant’s trademark is a word trademark (as opposed to a figurative trademark), the identity or similarity test is usually straightforward. For the purpose of this test, hyphens or the addition of generic or descriptive terms are generally insufficient to distinguish a trademark from a domain name (paragraph 2.3 of the Experts’ Overview). It is also a well-accepted practice that the suffix, such as .co.uk, is irrelevant for the purpose of this test.

Pursuant to paragraph 1 of the DRS Policy, ‘abusive registration’ means a domain name that either:

  • was registered or otherwise acquired in a manner that, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the complainant’s rights; or
  • has been used in a manner that has taken unfair advantage of or has been unfairly detrimental to the complainant’s rights.

Thus the DRS Policy, unlike the UDRP, does not require that both the registration and use of the domain name be unfair; but that their registration or use be unfair. Therefore, the DRS Policy would cover situations in which it is clear that the registration was ‘fair’ but the subsequent use of the domain name becomes ‘unfair’.

The DRS Policy provides a list of examples of what may constitute ‘abusive registration’. Paragraph 5.1.1 sets out examples that involve the registrant’s intention for registering the domain name: the respondent registered (or otherwise acquired) the domain name primarily:

  • for the purposes of selling or renting it to the complainant (or a competitor), for valuable consideration in excess of the respondent’s documented out-of-pocket costs;
  • as a blocking registration against a name or mark in which the complainant has rights; or
  • for the purpose of unfairly disrupting the business of the complainant.

The following circumstances are also indicative of ‘abuse’:

  • the respondent is using or threatening to use the domain name to cause confusion among internet users so as to mislead them into believing that the domain name is connected with the complainant (paragraph 5.1.2 of the DRS Policy; see also Nominet DRS7539 (edusafe.co.uk) and DRS9108 (michelinstar.co.uk) for more on threatened abuse);
  • the respondent is engaged in a pattern of infringing domain name registrations of well-known names or trademarks (whether under .uk or otherwise) (paragraph 5.1.3 of the DRS Policy and paragraph 3.5 of the Experts’ Overview); or
  • the respondent has provided false contact details to Nominet (paragraph 5.1.4 of the DRS Policy).

Awareness of a complainant’s rights is generally indicative of abusive registration of a domain name under the DRS Policy (DRS 4331 (verbatim.co.uk)).

A distinctive feature of the DRS Policy is that it includes a provision uncommon in other ADRs that addresses abusive registration of domain names as a result of a relationship, such as that between an employer and an employee, a common source of domain name conflict (paragraph 5.1.5 of the DRS Policy). In such cases, the complainant must satisfy two requirements: it must have been using the domain name registration exclusively; and paid for the registration or renewal of the domain name registration.

The DRS Policy also expressly provides that there is a rebuttable presumption of abusive registration where a respondent is found to have made an abusive registration in three or more DRS cases within two years before the filing of the complaint at issue.

Finally, the DRS Policy expressly provides that failure on the respondent’s part to use the domain name (for the purposes of email or a website) is not in itself evidence of abusive registration. However, in certain circumstances, such as when a brand is well-known and there is no apparent legitimate reason for the domain name registration, non-use of a domain name may be indicative of a ‘threatened abuse hanging over the head of the complainant’ (see paragraph 1.3 of the Experts’ Overview and DRS0658 (chivasbrothers.co.uk)).

The DRS Policy (paragraph 8), also sets out a non-exhaustive list of factors that may be evidence that the domain name is not an abusive registration, including:

  • before being aware of the complainant’s cause for complaint, the respondent has:
  • used, or made demonstrable preparations to use, the domain name in connection with a genuine offering of goods or services;
  • been commonly known by the name or legitimately connected with a mark that is identical or similar to the domain name; or
  • made legitimate non-commercial or fair use of the domain name;
  • the domain name is generic or descriptive and the respondent is making fair use of it;
  • if the domain name was registered as a result of the relationship between the complainant and the respondent, the respondent’s holding of the domain is consistent with an agreement between the parties; or
  • the domain name is not part of a wider pattern or series of registrations because the domain name is of a significantly different type or character to the other domain names registered by the respondent.

In addition, the following may be considered legitimate uses of a domain name:

  • fair use (including sites operated solely in tribute to or in criticism of a person or business);
  • trading in domain names for profit, and holding a large portfolio of domain names; or
  • sale of traffic (for example, pointing domain names to parking pages and earning click-per-view revenue), depending on the nature of the domain name; the nature of the advertising links on any parking page associated with the domain name; and that the use of the domain name is ultimately the respondent’s responsibility.

Procedural aspects

The Nominet DRS procedure involves an informal mediation phase following receipt of the parties’ submissions (paragraph 10 of the DRS Policy). If the parties are unable to reach an agreement and if the respondent submits a response, Nominet will proceed to appoint an expert for a full decision, upon payment of the applicable fees by the complainant. However, if the complainant fails to pay such fees, the respondent may opt to pay the fees him or herself to obtain a decision, which is rare (see, for example, DRS 11872 (a1furniture.co.uk)). Otherwise, the complaint will be deemed withdrawn.

If a respondent fails to submit a response, the complainant may apply for a summary decision (paragraph 12 of the DRS Policy). In the case of a summary decision, the expert is not required to write a full decision, but only to certify whether the complainant has rights and whether there has been an abusive registration.

Both full decisions and summary decisions are decided by a single expert (contrary to appeal cases within the DRS that are decided by a three-member panel).

Court proceedings

Substantive law

In the United Kingdom, domain name disputes are mainly decided by courts on the basis of trademark infringement, the common law tort of passing-off or both.

Registered trademark rights are protected against infringement under section 10 of the Trade Marks Act 1994 (implementing European Directive No. 89/104/EEC), which allows the owner of a registered trademark to prevent a third party from using in the course of trade:

  • a sign that is identical to the trademark in connection with identical goods or services for which the mark is registered;
  • a sign that is identical to the trademark in connection with goods or services similar to those for which the trademark is registered; or a sign that is similar to the trademark in connection with identical or similar goods or services for which the trademark is registered and there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trademark; or
  • a sign that is identical or similar to the trademark in connection with goods or services that are not similar to those for which the trademark is registered, where the trademark has a reputation in the United Kingdom and the use of the sign, being without cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark.

Furthermore, unregistered trademark rights are protected under the common law tort of passing-off. To be able to succeed in an action for passing-off, a claimant must demonstrate the following three requirements:

  • goodwill or reputation attached to the supplied goods or services associated with the trademark;
  • a misrepresentation by the defendant to the public leading or likely to lead the public to believe that the goods or services offered by the defendant are the goods or services of the claimant; and
  • damage, or a likelihood thereof, resulting from said misrepresentation.

The main difficulty in resolving domain name disputes based on trademark infringement stems from the ‘use in the course of trade’ requirement. However, the English courts have found that the mere registration of a domain name can constitute trademark infringement and passing-off, in spite of a defendant’s non-use of the domain name. In this regard, the landmark domain name decision is British Telecommunications plc v One in a Million Ltd [1998], which involved the registration of several domain names identically reproducing well-known trademarks, including britishtelecom.com, virgin.org and marksandspencer.com that were not actively pointing but were registered by the registrants with the intention to sell them to the trademark owners. This is the leading case on trademark infringement and passing-off in the context of domain names in the UK, and stated that the registration of a unique and distinctive name that is a registered trademark in itself amounts to trademark infringement and passing-off. Despite its being nearly 20 years old, One in a Million continues to be applied regularly in the English courts. See, for example, Future Publishing Ltd v Edge Interactive Media Inc [2011], Ross v Playboy Enterprises International Inc [2016] EWHC 1379 and the recent case of Azumi Ltd v Zuma’s Choice Pet Products Ltd [2017] EWHC 609.

Procedural aspects

Before commencing a legal action for trademark infringement or passing-off, the parties involved must attempt to settle their dispute outside the courtroom.

Trademark infringement or passing-off actions are commenced in the Chancery Division of the High Court or in the Intellectual Property Enterprise Court (IPEC, formerly the Patents County Court) with the issue of a claim form that sets out the claim and relief sought. The claim form is then served on the defendant and the particulars of claim must be contained in or served with the claim form or be subsequently served on the defendant within 14 days after service of the claim form (Rule 7.4 Civil Procedure Rules). The defendant may then serve a defence, including any counterclaims, and the claimant then has the opportunity to serve a reply to the defendant’s defence, as well as (if applicable) a defence to the counterclaims. Following this there is the disclosure process, the exchange of witness statements and, if a party relies on an expert witness, expert evidence. The case then will proceed to trial.

Choosing a forum

What are the pros and cons of litigation and ADR in domain name disputes? What are the pros and cons of choosing a local forum to litigate a gTLD dispute compared with the ICANN ADR format for the gTLD?

The advantages of resolving domain name disputes through ADR proceedings, such as the UDRP or Nominet’s DRS, is that both provide a fast and inexpensive alternative to court proceedings. In addition, Nominet’s informal mediation proceeding, which is uncommon in other domain name ADR, is particularly effective. Further, both Nominet and the UDRP have built-in mechanisms that allow complainants to overcome jurisdictional issues that often prove difficult within local forum litigation (as many registrants are often located outside the jurisdiction of the complainant).

However, some domain name disputes are better suited for the courts to decide, particularly cases involving more complex issues arising from trademark or contract law or where the aggrieved party would like to seek injunctive relief, compensatory damages or legal fees (none of which are available under ADR proceedings such as Nominet or the UDRP).

Appeal

What avenues of appeal are available?

Unlike other domain name ADR proceedings, Nominet gives the losing party the possibility to appeal an expert’s decision before a panel composed of three experts (paragraph 20 of the DRS Policy).

To appeal a DRS decision, the losing party must submit within 10 days of the date of notification of the decision either a statement of intention to appeal (and a non-refundable deposit), which must be followed within 15 days by an appeal notice; or an appeal notice (and applicable fees), explaining the reasons for the appeal.

Nominet will forward the statement of intention to appeal or appeal notice to the other party within three days of receipt. The other party will then have 10 days from the date of receipt of the appeal notice to submit a response (not exceeding 100 words) specifying the reasons why the appeal should be rejected. The submissions by either party should not contain new evidence or annexes and the appeal panel should not take into consideration any new evidence unless it deems that it is in the interest of justice to do so.

Upon receipt of the appeal response or the expiry of the 10-day period to file it Nominet will proceed to appoint a three-member panel (composed of the chairman of the group of experts and the next available two members appointed by rotation), who must deliver a decision within 30 days.

Nominet’s decisions are not subject to review by a court (see Michael Toth v Emirates [2011] EWPCC 18). However, the DRS policy does not prevent either the complainant or the respondent from submitting the dispute to a court of competent jurisdiction on the basis of, for example, trademark infringement or passing-off (paragraph 20.13 of the DRS Policy).

A complainant may also opt to refile a complaint, pursuant to paragraph 21.2 of the DRS Policy; in this regard, the DRS Policy provides that the expert shall consider the following:

  • whether the complainant, the respondent and the domain name in issue are the same as in the earlier case;
  • whether the substance of the complaint relates to acts that occurred before or after the close of submissions in the earlier case;
  • whether, in the event the substance of the complaint relates to acts that occurred before the close of submissions in the earlier case, there are any exceptional grounds for the rehearing or reconsideration; and
  • whether the acts on which the refiled complaint is based are substantially the same as the acts on which the previous complaint was based.

The following are examples that may be sufficient to justify a rehearing (paragraph 21.3 of the DRS Policy):

  • serious misconduct on the part of the expert, a party, witness or lawyer;
  • submission of false evidence to the expert;
  • the discovery of evidence that could not have been reasonably foreseen or known for the complainant to have included it in support of the earlier complaint;
  • a breach of natural justice; and
  • the avoidance of an unconscionable result.

Court proceedings

The Court of Appeal, which is based in London (at the Royal Courts of Justice), hears appeals from the High Court. To appeal a judgment, permission must be sought from the lower court or the Court of Appeal.

The Supreme Court hears appeals from the Court of Appeal. Appeals may only be brought with the permission of the Court of Appeal or the Supreme Court if the permission is refused by the Court of Appeal. Permission will be granted only if there is an alleged error of law on the part of the lower court or a point of general public importance involved that ought to be considered by the Supreme Court.

Who may claim

Who is entitled to seek a remedy and under what conditions?

Under the DRS Policy, any person or entity may submit a complaint. Pursuant to paragraph 1 of the DRS Policy, to be entitled to seek a remedy, a complainant must have rights that are enforceable under English law or otherwise, which includes not only trademark rights (registered or unregistered) but also contractual rights, personality rights or other rights. If the rights on which a complaint has relied have been licensed, depending on the circumstances of the case, both the licensor and licensee should appear as complainants (see Experts’ Overview, 1.1(b), Nominet DRS No. 2120 (orbaoriginals.co.uk) and DRS10862 (theempire.co.uk)).

Under the Trade Marks Act 1994, an action for trademark infringement is actionable by the proprietor of the trademark (section 14). If the mark is co-owned, proceedings can be brought by any of the proprietors but in order to proceed, all the co-owners of the mark must be joined in the proceedings, unless the court authorises otherwise. In certain circumstances exclusive (section 31) or non-exclusive (section 30) licensees may also bring actions for trademark infringement.

Who acts as defendant

Who may act as defendant in an action to cancel or transfer a gTLD in local courts?

An action to obtain the cancellation or transfer of a domain name through courts is often brought against the registrant, but nothing prevents a party from bringing an action against the registry or the registrar. Indeed, while Nominet’s Terms and Conditions expressly exclude and limit Nominet’s liability (condition 12), an action may be brought against Nominet in its capacity as registry of the .uk TLD. In this regard, see Michael Toth v Emirates and Nominet UK [2012] EWHC 517 (in which the judge on appeal overturned the decision of the Patents County Court that the decisions of a Nominet-appointed expert or appeal panel in .uk domain name disputes were subject to review by a court), Pitman Training Ltd v Nominet UK [1997] FSR 797 and Alliance Française de Londres Ltd v Nominet UK [2005] EWHC 3049 (Ch) on a different point, namely an application brought by Alliance Française that the court order an injunction to prevent Nominet from cancelling a domain name once it was up for renewal. In November 2013, Cartier International AG, the luxury jewellery maker, successfully brought an action against Nominet in its capacity as registry for .uk before the High Court of Justice, Chancery Division, seeking an injunction to require Nominet to ‘remove from its domain name registry (de-tag and lock) various domain names that resolve to websites that infringe the claimant’s CARTIER mark’.

Burden of proof

What is the burden of proof to establish infringement and obtain a remedy?

The burden of proof to establish ‘abusive registration’ and obtain a remedy under the DRS Policy is ‘on the balance of probabilities’ (paragraph 2.2), which is the same standard required in civil court proceedings for trademark infringement or passing-off actions. However, the greater the severity of an allegation, the more evidence the expert will require (see paragraph 2.1 of the Experts’ Overview).

Remedies

What remedies are available to a successful party in an infringement action?

Remedies available to a party in a trademark infringement or passing-off action include but are not limited to injunctive relief (interim or final), damages or account of profits, costs and the cancellation or transfer of a domain name (section 14(2) of the Trade Marks Act 1994). Website blocking injunctions may also be available (see question 18).

Injunctive relief

Is injunctive relief available, preliminarily or permanently, and in what circumstances and under what conditions?

Injunctive relief, preliminarily or permanently, is available as prescribed by the Civil Procedure Rules. A preliminary or interim injunction may be sought where the matter is urgent and may cause irreparable harm to the applicant if the injunction is not granted. In cases of extreme urgency, an interim injunction may be sought without notice to the other party. The court will take into consideration the ‘balance of convenience’ between the damage caused to the applicant if the injunction is not granted and the damage that could be suffered by the respondent if it is granted. If the applicant prevails at trial then the interim injunction may become permanent.

A permanent injunction can also be granted where the court has found trademark infringement or passing-off (British Telecommunications plc v One in a Million). The court has jurisdiction to grant an injunction in order to prevent fraudulent use of the trademark in a domain name or transfer of the domain name to a third party.

The English courts have stated that where trademark infringement is found online, the remedy of website blocking injunctions can be granted (Cartier International AG v British Sky Broadcasting Ltd [2014] EWHC 3354 - known as ‘Cartier I’). This decision was appealed and heard by the Court of Appeal, which issued a judgment upholding the High Court decision on 6 July 2016 (and in the intervening period the High Court issued another judgment in a second Cartier case (Cartier and Another v BSkyB and Others [2016] EWHC 339 (Ch) (known as ‘Cartier II’) following the principles set out in Cartier I, notwithstanding the then-pending appeal). It should be noted that the decision from the Supreme Court in Cartier I on the costs of intermediary injunctions is currently pending. These injunctions force the relevant internet service provider to prevent the public from accessing the website; they do not force the removal or transfer of ownership of the infringing domain name (previously, this remedy was only possible for copyright infringement). Note that while the Cartier case concerned infringement of a trademark on a website, given that the court in One in a Million held that trademark infringement can occur through use of domain names, the principle and remedy ought to apply equally to infringement through use of domain names.

Calculating damages

How is monetary relief calculated?

In domain name litigation, damages are generally calculated on the basis of the same principle as any other infringement action: the aggrieved party must be put in the same position as if the tort had not taken place (ie, as if the defendant in the domain name litigation had not registered the disputed domain name).

Criminal remedies

What criminal remedies exist, if any?

There are no criminal sanctions for domain squatting per se. However, the Trade Marks Act 1994 sets out criminal offences in relation to the unauthorised use of trademarks in relation to counterfeiting activity (section 92), making a false entry in the register of trademarks (section 94), falsely representing that a mark is a registered trademark by using the word ‘registered’ or any other word or symbol indicating a reference to registration (section 95), among others. Thus criminal sanctions would come into play where a domain name is being used for any of the above. Accordingly, for example, using a domain name to point to a website that facilitates counterfeiting activity would be actionable in the courts under section 92 of the Trade Marks Act 1994. In this regard, criminal sanctions under section 92 include imprisonment for a term not exceeding six months or a fine, or both; or a fine or imprisonment for a term not exceeding 10 years, or both.

The court may also make orders for forfeiture and confiscation orders under proceeds of crime legislation (R v H Sheikh and Others [2004] EWCA (Crim) 429).

Limitation period

Is there a time frame within which an action must be initiated?

An action for trademark infringement or passing-off may be barred if it is not commenced within six years of the wrongful act.

Under the DRS Policy, like the UDRP, the doctrine of laches that would prevent a complainant for bringing a complaint for undue delay does not apply (D00010948 (gillinghamfc.co.uk) and D00013531 (heraklith.co.uk)).

Expiry of rights and estoppel

Can a registrant’s rights in a domain name expire because of non-use. Can a registrant be estopped from bringing an infringement action? In what circumstances?

Nominet’s Terms and Conditions do not impose a use requirement to maintain the validity of a .uk domain name registration. Thus a registrant’s rights in a domain name will not expire for non-use. However, non-use of a domain name, in certain circumstances, may be considered an indication of abusive intent under the DRS Policy (paragraph 3.7 of the Experts’ Overview), although, as previously mentioned, the DRS Policy expressly provides that failure to use a domain name (for the purposes of email or a website) is not in itself evidence of ‘abusive registration’ (paragraph 5.2 of the DRS Policy).

Under UK trademark law, a trademark owner can be estopped from bringing an infringement action if he or she has acquiesced for a continuous period of five years the use of a later registered trademark in the UK, unless the registration of the later trademark was in bad faith (section 48 of the Trade Marks Act 1994). This provision may be relevant where a domain name consists of a registered trademark: the owner of the earlier trademark may be estopped from preventing use of the later registered trademark as a domain name where the owner of the earlier trademark was aware of such use and acquiesced for a continuous period of five years. The doctrine of estoppel also applies: waiver by estoppel may prevent a party from bringing an infringement action where such party, believing itself to have a right to a domain name, does not exercise its right and its conduct objectively indicates an intention not to enforce a right, namely, the use of the domain name in question.

Furthermore, under section 46 of the Trade Marks Act 1994, the registration of a trademark may be revoked on one or more of a number of listed grounds, including that: the mark has not been used for five years and there are no proper reasons for non-use; or in consequence of the acts or inactivity of the trademark proprietor, it has become the common name in the trade for a product or service for which it is registered. If any of these grounds is upheld, the proprietor can be estopped from bringing an infringement claim against a domain name owner as there is no longer a valid trademark to be infringed.

In addition, the doctrine of laches may also prevent a trademark holder from bringing an infringement action for unreasonable delay in the context of court litigation. However, as previously mentioned, such doctrine is generally not applicable in Nominet’s ADR or the UDRP (D00010948 (gillinghamfc.co.uk) and D00013531 (heraklith.co.uk)).

Time frame for actions

What is the typical time frame for an infringement action at first instance and on appeal?

The average time frame for resolution of Nominet DRS cases is around six to eight weeks (although some cases have been resolved in a matter of hours whilst others have taken a number of months), while court proceedings naturally take much longer depending on the complexity of the case.

The time frame for an infringement action in the English courts will vary according to a number of factors, including the complexity of the issues, the number of experts and witnesses involved, the number of interim applications made and the anticipated length of trial required.

Infringement actions can be heard in the IPEC or the High Court. In general terms, an action that is to be heard in the IPEC will take around 12 months from the issue of the particulars of claim to the trial. An action that is to be heard in the High Court is likely to take a minimum of 18 months to reach trial once the particulars of claim have been issued. An appeal to the Court of Appeal may take around a year, a further appeal to the Supreme Court another year to two years, and if a reference on a point of law to the Court of Justice of the European Union were to be required (from any of the aforementioned courts), this would add two to three additional years.

Case law

Is a case law overview available on procedural or substantive issues? Does the case law have a precedential value?

Nominet provides an Experts’ Overview on both procedural and substantive issues with the purpose of assisting participants in domain name disputes under the DRS Policy. It provides an overview of common procedural and substantive issues, including reference to prior DRS decisions, and the consensus view of Nominet experts. In addition, Nominet also provides a decision search tool on its website.

Nominet DRS decisions are not binding, so decisions do not have precedential value (paragraph 20.12 of the DRS Policy). However, prior DRS decisions are persuasive, particularly appeal decisions.

While there are similarities between the DRS Policy and the UDRP, both policies differ considerably in various aspects, so citing UDRP precedents in a dispute under the DRS Policy may not be particularly helpful.

Appointment of panellists

Can parties choose a panellist in an ADR procedure involving a ccTLD? Can they oppose an appointment?

Nominet appoints panellists (referred to as experts) on a rotational basis from a list of experts it maintains (available on Nominet’s website). Thus parties are unable to choose or participate in the selection process of a panellist involving .uk TLD domain name disputes under the DRS Policy.

The DRS Policy expressly provides that ‘the expert shall be impartial and independent’ and before or during the proceeding, the expert must disclose to Nominet ‘any circumstances giving rise to justifiable doubt as to his or her impartiality or independence’ (paragraph 15.1 of the DRS Policy). Accordingly, before accepting an invitation to adjudicate a dispute, the expert is required to sign a declaration certifying his or her impartiality and independence. Nominet has the discretion to appoint a substitute expert if necessary (paragraph 15.1 of the DRS Policy).

While the DRS Policy does not expressly provide that a party can oppose an appointment, nothing in the DRS Policy prevents a party from raising a partiality concern before Nominet. Nominet has received very few allegations of partiality against the appointment of an expert and none of them have warranted recusal of an expert.

Costs

What is the typical range of costs associated with an infringement action, including pre-litigation procedures, trial or ADR, and appeal? Can these costs be recovered?

Nominet’s DRS

The applicable fees for Nominet’s dispute resolution service are regulated in paragraph 22 of the DRS Policy.

There are no fees for Nominet’s informal mediation process or administrative services (including filing a complaint, a response, reply or non-standard submissions).

The applicable fee for a summary decision is £200 excluding VAT for disputes involving one to five domain names and one complainant. For disputes involving six or more domain names or more than one complainant, the fee will be determined in consultation with the expert.

The applicable fee for a full decision under the DRS is £750 excluding VAT for disputes involving one to five domain names and only one complainant. For disputes involving six or more domain names or more than one complainant, the fee will be determined in consultation with the expert.

As a general rule, the complainant is responsible for paying the applicable fees set out above. However, if the complainant fails to submit payment within 10 days of receipt of notice of the expert’s appointment, the complaint will be deemed withdrawn, unless the respondent chooses to pay for a decision (paragraphs 12.2 and 13.2 of the DRS Policy).

The applicable fees for the submission of an appeal are £3,000 excluding VAT.

There may be additional fees in exceptional circumstances (for example, if an in-person hearing is held).

These fees do not include counsel’s fees.

Recovery of costs is not available under Nominet’s DRS.

Court proceedings

Costs for bringing a trademark infringement or passing-off actions before the English courts vary depending on numerous factors, but are without doubt considerably higher than Nominet’s ADR proceeding. The following are approximate costs for various stages of formal legal proceedings.

In the pre-litigation phase, costs for filing an action in the IPEC are approximately £15,000, while in the High Court they are approximately £10,000. The cost for preparing an interim injunction can range between £10,000 and £20,000. An application for summary judgment can also exceed £10,000. The cost for preparing an application for default judgment would be around £10,000. These estimates include counsel’s fees.

Costs for a trademark infringement action in the High Court from issue of proceedings to the trial hearing could be as high as £300,000, subject to a number of variables specific to the case. In the IPEC, the likely cost of such an action from the issue of proceedings to trial would be in the region of £150,000.

In the IPEC costs are subject to a cap, with a £50,000 cap on recoverability of costs and a £500,000 cap on damages or an account of profits. There are no such caps in the High Court. However, the IPEC tends to be more expensive than the High Court for early-stage proceedings as the work (and therefore cost) is very front-loaded, although this can be an incentive to encourage early settlement.

On appeal, costs may vary depending on the number and complexity of the issues, but costs are likely to exceed £200,000.

If a dispute is settled out of court, it is open to the parties involved to agree who should bear the costs of the dispute. If the parties cannot agree the amount of costs to be paid, they can issue ‘costs-only’ proceedings to obtain an order for costs from the court.

If a dispute is not settled and goes to court, the court can decide in its discretion how the costs are to be paid. Costs of formal proceedings are recoverable in principle by the successful party from the unsuccessful party. The amount of costs to be paid is subject to a process called ‘assessment’, and is subject to numerous rules on what type of costs are recoverable, depending on the conduct of the parties, the outcome of the dispute and any offers to be settled during the course of proceedings. Generally, only the costs of legal work that are reasonably incurred, reasonable in amount and proportionate to the matters in issue will be recoverable from the losing side (the ‘standard’ basis for assessment). The principle of proportionality is key in English litigation, and the courts are keen to ensure that parties keep the costs of proceedings down. In rare cases, where there is some element of culpability or abuse on the part of the paying party, the onus will be on the paying party to show that the receiving party’s costs are disproportionate (the ‘indemnity’ basis for assessment), and inevitably higher costs are recoverable.

Typically in English proceedings, about 60 per cent of costs are recoverable from the paying party. On occasion, the English courts have demonstrated a willingness to grant higher costs orders, and there have been cases where 100 per cent of costs have been ordered (although these are uncommon).