Domain Name Disputes – Judicial Alternatives to Nominet Decisions

In 2005 over 1 million UK domain names were registered, E-commerce revenue exceeded £8.2 billion in the UK alone and growth of internet usage shows no signs of slowing. The internet is the trading ground of the future. Protection of UK trademarks is left largely in the hands of the private company that runs the registration, but there are judicial alternatives available.

The UK domain registrar Nominet is no stranger to trademark litigation. It seems natural that domain names that relate to trademarks should be afforded the same level of protection as the trademarks themselves, given that the internet is now the dominant market force in many lucrative industries, such as music and software. The courts are beginning to recognise that domains are a valuable asset and that Nominet holds a unique position in the control of these. While very few domain disputes ever get past Nominet’s own internal dispute resolution service, it is clear that the courts will intervene if required.

In most cases Nominet’s internal procedure, the Uniform Domain-Name Dispute-Resolution Policy (http://www.nominet.org.uk/disputes/drs/policy/), often referred to as the “UDRP,” is used effectively for disputes regarding domain names. This policy consists of a three-stage test:

The complainant must prove:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the Registrant has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Bad faith, in this case, can be shown in a number of ways including trying to sell to the owner of the mark, for a profit; preventing the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; attempting to disrupt the business of a competitor; or trying to drive traffic to another site by using the claimant’s mark in a domain.

This test covers most of the complaints that Nominet receives and fewer than 0.01% of disputes are appealed or go to court

(http://www.nominet.org.uk/disputes/drs/help/?contentId=1596).

Where it is not possible to use Nominet’s internal dispute resolution, i.e. for non-.uk domains owned by a person subject to English jurisdiction or where Nominet’s procedure is insufficient or produces an undesirable result, it is possible to apply to the courts to obtain a “One in a Million” order which requires the transfer of the domain by mandatory injunction. In the Court of Appeal case, British Telecommunications Plc v One in a Million Limited (British Telecommunications v One in a Million [1999] 1 WLR 903), Aldous LJ summed up the test for these matters at pg 920:

“Whether a name is an instrument of fraud will depend on all the circumstances. A name which will by reason of its similarity to the name of another inherently lead to passing off is an instrument of fraud…. The court should consider the similarity of the names, the intention of the Defendant, the type of trade and all the surrounding circumstances. If it be the intention of the defendant to appropriate the goodwill of another …I can see no reason why the court should not infer that it will happen, even if there is a possibility that such an appropriation would not happen.”

This is

clearly a different test and can be applied over and above any decision made by Nominet if required.

Judicial review has never been successfully pursued against Nominet but it is clearly a possible alternative to pursuing a One in a Million style action. Although Nominet is not a public body, it is amenable to judicial review. In ex parte Datafin (Regina v. Panel on Take-overs and Mergers, Ex parte Datafin Plc. And Another [1987] Q.B. 815), judicial review extended to a non-governmental body whose powers were “governmental” in nature. In Datafin the court propounded a number of factors to be considered in answering the question of amenability to judicial review.

(i) Does the body fulfill a role otherwise supplied by the Government?

No, it does not. Nominet is officially recognised as the .uk domain name registry by the internet industry, users and the UK Government

. Nominet works in co-operation with the UK government but the relationship is not official and the Government does not fulfill any of the functions of Nominet. If Nominet, or some similar company did not exist, the function would have to be fulfilled by the government.

(ii) Are its processes "underpinned" by statute?

Nominet does not have any statutory authority to make the decisions about UK domains. However their authority has developed as a result of use and custom.

(iii) Is it a monopoly or near monopoly?

Nominet is the only domain registrar in the UK. Membership of Nominet’s scheme is dependent on the submission of a registration application and the relevant fee

. In order to register a domain with Nominet the registrant must agree to be bound by the dispute resolution service. So Nominet has a total monopoly as registrar of the .UK domain.

(iv) Has the person seeking to review the body agreed to be bound by the decision?

In order to register a domain a registrant must agree to be bound by Nominet’s rules.

It is therefore clear that Nominet is subject to judicial review.

At the date of writing, there have been no successful cases of judicial review of Nominet. One unreported case, CyberBritain Group Limited v Nominet UK Limited (CyberBritain Group Limited v Nominet UK Limited Unreported),

was ruled out on the grounds that the application was out of time and because CyberBritain Group had not made full use of the appeal process of Nominet. This case did, however, indicate that it was entirely possible to judicially review a decision by Nominet.

If the Nominet appeal process is insufficient or would take more time than the litigant would require, it may be possible to skip the process and go straight to judicial review by relying on the provisions outlined in ex parte Goldstraw (R. v Epping and Harlow General Commissioners Ex p. Goldstraw [1983] 3 All E.R. 257). Urgent requests may be better served by judicial review than by the Nominet process that can take up to three months, during which time there may be serious damage to goodwill.

In order for a judicial review to succeed procedural impropriety or Wednesbury (Associated Provincial Picture Houses v Wednesbury Corporation [1948] 1 KB 223) irrationality must be shown. These are both very high tests. Given the expert status of the Nominet tribunal (http://www.nominet.org.uk/disputes/drs/experts/) it is unlikely that a case of irrationality will ever be shown. The Wednesbury test requires that a decision be “so unreasonable that no reasonable person could contemplate it.” However it is much more possible that one of the experts may fail to follow the Nominet guidelines in which case it would be likely that judicial review would be granted.

There are therefore several options open to any person who believes that the Nominet process would be insufficient to protect their mark or their domain. Although judicial review of Nominet is possible it is unlikely that the substantive grounds would be found. It should only be used when Nominet have failed to follow its own procedures correctly as irrationality is exceptionally hard to prove. In rare cases where the judicial guidelines in One in a Million apply and the Nominet guidelines do not then a “One in a Million” order is the best course of action. These cases are few and far between and usually the best course of action is to follow the Nominet appeals procedure. This does take quite some time and if a speedy solution is required then judicial alternatives should be employed.