plane squatting
22 February 2011
The Nominet Dispute Resolution Service (DRS) is a quick and low
cost route that brand owners can use to claim that .uk domain names
should be transferred to them. However, it can be a frustrating
forum for brand owners, who have often seemed to be one step behind
domain squatters. In contrast to a number of cases where the brand
owner failed, the decision in emirates.co.uk shows how a successful
claim can be brought.
In order to bring a successful Nominet complaint, a Complainant
must show –
- it has rights in respect of a name or mark which is identical
or similar to the Domain Name; and
- The Domain Name, in the hands of the Respondent, is an Abusive
Registration.
A registration is Abusive either if, when it was registered, or
subsequently it took or takes unfair advantage of or was unfairly
detrimental to the Complainant’s rights.
Brand owners rarely have difficulty in showing that they have
rights in respect of a name. However, showing that a registration
is Abusive can be more difficult, particularly as there are no
disclosure obligations or opportunities for cross examination. It
can be particularly difficult for brand owners whose brand could
have an alternative meaning to show that a domain registration is
Abusive.
In verbatim.co.uk, the Appeal Panel said that the Respondent’s
knowledge of the Complainant’s brand was a prerequisite for abuse.
Michael Toth, the Respondent in that case, said that he was
ignorant of the Complainant’s brand until he heard from their
lawyers, and the Complaint failed. The bar was raised even higher
in maestro.co.uk, where the Appeal Panel said that “where a domain
name is a single ordinary English word, the meaning of which has
not been displaced by an overwhelming secondary meaning, the
evidence of abuse will have to be very persuasive, if it is to be
held an Abusive Registration under the DRS policy.”
Delay in bringing a claim could also prejudice a complaint. Last
summer, Coca-Cola brought a complaint that 5alive.co.uk was an
Abusive registration. However, the domain had been held for six
years and the Expert said that “where there has been such a long
delay between the registration of the Domain Name and the
initiation of the Complaint, there has to be evidence beyond mere
assertion to justify the claim that this is an Abusive
Registration”.
The Appeal Panel’s decision in emirates.co.uk provides some
helpful comments on these issues. The Respondent in this case was
again Michael Toth, who owns a large portfolio of domains. In 2009
the Czech Arbitration Court held that he had registered and used
emirates.eu in bad faith. Nevertheless, the Expert held that
‘emirates’ was a generic word meaning the plural of ‘emirate’, and
also a colloquial name for the United Arab Emirates, and
accordingly the registration was not Abusive.
The Appeal Board overturned this decision, and said:
The website at www.emirates.co.uk was not a genuine ‘country
resource related guide’ – most of the content was the same as the
content for www.china.co.uk, with ‘Emirates’ replaced by ‘China’.
Accordingly, the website was not a genuine offering of goods or
services – which is a defence under the DRS;
As a result of the Complainant’s ‘extensive successful trading’,
the word “Emirates” had acquired a secondary meaning syonymous with
the Complainant, and so the word Emirates would be taken to be a
reference to the Complainant;
Given the Complainant’s reputation (it had won over 170 awards
between 1988 and 2002, and had a turnover of almost £150m in 2002),
it was on balance very likely that the Respondent was aware of the
Complainant in 2002. It was a natural inference from this that the
Respondent “very probably designed his use of the Domain Name in
light of that awareness”;
Initial interest confusion could be a possible basis for finding
of an Abusive Registration; and
The generally held view of Nominet Experts is that delay alone
is not a ground on which a Complaint may be denied, and in this
case, the delay had not prejudiced the Respondent.
This decision is encouraging for brand owners. The Appeal Board
took a pragmatic approach, considered the actual use of the domain,
and inferred what must have been the case - that the Respondent
designed his website in light of his awareness of the Complainant.
The case shows how important it is to file a full and thorough
complaint. In 5alive.co.uk, the Expert had been dismissive about
the Complainant’s evidence for reputation – which was just a page
from its own website, and a Wikipedia article. In contrast, in
emirates.co.uk the Complainant filed extensive evidence about its
reputation which impressed the Panel, and unlike Coca-Cola,
Emirates got the result they were looking for.
This article was first published by The Society for
Computers and Law