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.
