New dispute rules now in force for .uk domain names

Details of Nominet’s new Dispute Resolution Service (DRS) are set out in its policy and procedure documents, available at the links below. Nominet intends that the new DRS will offer “an efficient and transparent method of resolving domain name disputes.” The registry previously rejected ICANN’s own dispute rules which are applied by the UN’s World Intellectual Property Organisation (WIPO) and three other bodies in .com, .net and .org disputes.

The first step by Nominet will be an attempt at mediation between the disputing parties (which is free of charge). If that fails, for a decision by a Nominet-appointed independent expert, an aggrieved party pays a fee of £750. The expert has the power to order that a registration be cancelled, suspended, transferred or otherwise amended. An appeal procedure, to a panel of three experts, exists for an additional fee although at any time in the DRS, either party can take the dispute before the courts.

The Nominet test for deciding cases is slightly different to ICANN’s. The party bringing a case must convince the expert of two things:-

• First, that he has rights (defined as including, but not limited to, rights enforceable under English law) in respect of a name or mark which is identical or similar to the domain name. However, this party cannot rely on rights in a name or term which is wholly descriptive of his business.
  • took unfair advantage of or was unfairly detrimental to the aggrieved party's rights under English law at the time of registration or acquisition; or
  • has been used in a manner which took unfair advantage of or was unfairly detrimental to the aggrieved party's rights.

Further guidance is given as to what constitutes abusive registration – for example, it seems to be acceptable to buy a generic name for the purposes of re-selling it at a profit, provided you do not do so with the intention of selling it to a party with rights in the name or a competitor of such a party. It is also abusive to register a name solely to stop a party with rights in the name getting use of it or to disrupt that party’s business.

By comparison, under ICANN’s rules, WIPO charges applicants at least $1,500 (approximately £1,016) and there is a different test to satisfy comprising three parts:-

• First, that the domain name is identical or confusingly similar to the aggrieved party's trade marks;
• Second, that the party registering the name had no rights or legitimate interests in the name; and
• Third, that the registration and use of the name was in bad faith.

Responding to one of the criticisms levelled at the ICANN system, Nominet will sequentially rotate its 30 independent experts. Each case will be handled by the next expert. Recently, a study showed that arbitrators acting for the National Arbitration Forum, a US body that, like WIPO follows ICANN’s rules, decisions have been criticised because the party bringing the case could choose an expert with a reputation for bias towards trade mark owners.

The rules for the DRS also provide that fair use of a domain name “may include sites operated solely in tribute to or criticism of a person or business.” This means that a customer grievance site could be operated at “companyname-sucks.co.uk”.

Finally, to avoid cases of so-called “reverse domain name hijacking,” if the party bringing the complaint is found on three separate occasions within a two year period to have brought a complaint in bad faith, Nominet will not accept any further complaints from that party for a period of 2 years.