For anyone who has filed a complaint at Nominet against a registration involving one of the multitudes of “.uk” domain names, the process was likely to have been expensive, frustrating and highly inconsistent. The central complaint is that an enormous amount of money has to be spent by a complainant to prepare the necessary documentation and evidence, even when no response was filed by the domain name registrant. At the end of 2007, and after two consultations, Nominet finally decided to listen to the numerous complaints against its dispute resolution service (DRS) and in July 2008 finalised revisions to its policies and procedures. All is not rosy, however, in UK cyberspace, despite the numerous amendments through the pipeline, since many of the amendments were a compromise between competing interests.
The current complaints process remains unchanged, except that in cases where no response is made by the registrant, the complainant is now given the option of obtaining a type of “summary decision” from an expert, at a reduced cost of £200 plus VAT (as compared to a full reasoned written decision at £750 plus VAT). This could potentially impact around 52 per cent of all current Nominet expert adjudications. The expert will in effect issue a quasi certificate confirming that “rights” and “abusive registration” have been made out by the complainant. In practice, however, experts will still need to perform a fairly comprehensive analysis of the facts in order to assess whether necessary rights exist and therefore whether an abusive registration has been made.
Where a response is provided by a registrant, the case will then go into mediation and the expert fee will remain the current £750 plus VAT for a “full” decision. Many of the experts involved in the consultation process were quite put out by this news. This was because, firstly, the fees for a summary judgment were reduced dramatically whilst the work involved will not realistically be proportionately reduced; and, secondly, the fees for a “full” decision will remain at £750 plus VAT, which means there have been no fee increases in over five years. Indeed many experts proposed increases in rates of up to £1200 to reflect the work involved, but this was roundly rejected by the Nominet consultation board.
One of the most important amendments involves the definition of what are “rights” under the DRS Policy. The Policy now recognises rights in “descriptive terms which have acquired a secondary meaning”. This will hopefully create a more uniform approach by experts when determining whether the rights (e.g., common law trade mark) are in fact “wholly descriptive” of the product or services provided by the complainant. Over the years there has been much criticism over perceived inconsistencies in expert opinions. Some experts applied a very strict interpretation of the rights definition under the previous Policy. Others took the view that a descriptive name that acquired secondary meaning (e.g., British Gas, British Petroleum, etc) can never be considered to be “wholly descriptive”, nor was it originally intended under the Policy that such institutions would not be able to protect their names from potential abuse. The amendments to the Policy should make such inconsistencies a thing of the past.
ACTS NOT ABUSIVE PER SE
Nominet has also clarified the new DRS Policy to confirm that certain activities will not be in themselves an abusive registration, but that cases of this kind will depend on their particular facts. For instance
- The storage of domain names for sale is not necessarily an abusive use of the addresses.
- Trading in domain names for profit, and holding a large portfolio of domain names, are not of themselves unlawful activities. The expert will review each case on its merits and the sale of traffic (i.e., connecting domain names to parking pages and earning click-per-view revenue) is not itself objectionable under the Policy. The expert will now take account of the nature of the domain name and the nature of the advertising links on any parking page associated with the disputed domain name. Ultimately, however, the use of a domain name is the registrant’s responsibility and therefore it is up to them not to cross the line and become abusive under the Policy.
LIKELIHOOD OF CONFUSION AND THREATENED USE
Nominet introduced a “likelihood of confusion” factor and has emphasised that threatened use of a domain name may be evidence of an abusive registration. This amendment reflects the interpretation consistently held in expert decisions and English law.
Numerous administrative amendments were made in order to smooth over and provide certain efficiencies in DRS Policy. These amendments include
- An Expert Review Group of six panelists formed to act as a “second pair of eyes” for experts and to provide a final sanity check in addition to picking up on typos and ensuring at least consistency between the various DRS expert decisions. These panelists will also form the appeal panels but will no longer form part of the pool of experts able to render everyday decisions.§ Changes to DRS Procedures to make it clear that the Reply stage is purely an opportunity to respond to new matters raised in the respondent’s response.
- Clarification of the Procedure with regard to further statements (i.e., those communications made outside of the standard process other than a complaint, response, reply, appeal notice or appeal notice response) made under Procedure paragraph 13(b). Nominet will now only copy the explanatory first paragraph to the parties, unless the expert requests sight of the full submission.
- The option for respondents to pay for an expert decision if the complainant declines to pay, in order to request a finding of reverse domain name hijacking.
- An increase in the word limit for submissions in the complaint and response to 5,000 words.
- The option to attach evidence electronically. Nominet has also improved the formatting, appearance and usability of the online forms.
These amendments are long overdue and represent a valiant attempt to provide an economical choice for rights holders in taking on rogue domain name registrants. Unfortunately, establishing that a complainant possesses the necessary rights and that a registration is abusive may yet prove to be an expensive process, as complainants will often choose to involve a lawyer in setting out the necessary evidence in the formal complaint. Time will tell whether these amendments will create a more streamlined and consistent