Nominet UK is the organization that administers the <.uk> domain name registry and is also the <.uk> dispute resolution service provider. <.uk> domain name disputes are determined under the Dispute Resolution Service (DRS) arbitration procedure. Nominet UK has developed the Nominet DRS Policy and Procedure for this purpose. Although the DRS Policy shows similarities to the Uniform Domain Name Dispute Resolution Policy, some important differences include (1) a free mediation process and (2) an appeal by the losing party to a panel of three “Experts” (what they call their panelists).
So if you want an opinion on your chances of success to get a <.uk> domain transferred to you, consider the following information and give us all the possible detail, whereafter we can provide you with our opinion.
To be successful with a complaint under the DRS procedure, a Complainant must prove on a balance of probabilities (1) that it has “rights” in a name similar or identical to a registered domain name and (2) that the domain name is an “abusive registration”.
(1) Rights in a domain name: In terms of the DRS Policy, “rights” include “rights enforceable by the Complainant, whether under English law or otherwise“. Complainants can accordingly rely on:
- registered trademarks;
- unregistered (common law) trademarks (in which case a Complainant must show substantive use, acquired reputation and goodwill); or
- rights acquired by agreement, for example where the parties agreed that the Complainant can take transfer of the domain name.
The Experts seem to ignore punctuation marks when they determine whether a name is “identical”. For example MICHALSONS will be seen to be identical to michalsons.uk. It is a bit more difficult to determine whether a name is “similar” to a registered domain name. It may be regarded to be similar if the public will be confused by the use of the name by the Respondent.
(2) Abusive registration: In terms of the DRS policy an “abusive registration” means a domain name which:
- was registered or otherwise acquired in a manner that took unfair advantage of or was unfairly detrimental to the Complainant’s rights at the time when the registration or acquisition took place; or
- has been used in a manner which has taken unfair advantage of or has been unfairly detrimental to the Complainant’s rights.
The following (non exhaustive list of) factors may proof an abusive registration:
(1) Circumstances indicating that the Respondent has registered or otherwise acquired the domain name primarily
- for the purposes of selling, renting or otherwise transferring the domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the domain name;
- as a blocking registration against a name or mark in which the Complainant has rights; or
- for the purpose of unfairly disrupting the business of the Complainant;
(2) Circumstances indicating that the Respondent is using or threatening to use the domain name in a way which has confused or is likely to confuse people or businesses into believing that the domain name is registered to, operated or authorised by, or otherwise connected with the Complainant;
(3) The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the domain name is part of that pattern;
(4) It is independently verified that the Respondent has given false contact details to Nominet UK; or
(5) The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:
- has been using the domain name registration exclusively; and
- paid for the registration and/or renewal of the domain name registration.
Failure on the Respondent’s part to use the domain name for the purposes of email or a web site is not in itself evidence that the domain name is an Abusive Registration.
There will be a presumption of an Abusive Registration if the Complainant proves that the Respondent has been found to have made an Abusive Registration in three (3) or more DRS cases in the two (2) years before the Complaint was filed.
The following (non exhaustive list of) factors may proof that the registration was not an abusive registration and if you think the Respondent will be able to proof any of these, you must tell us:
(1) Before being aware of the Complainant’s cause for complaint, the Respondent has
- used or made demonstrable preparations to use the domain name or a domain name which is similar to the domain name in connection with a genuine offering of goods or services;
- been commonly known by the name or legitimately connected with a mark which is identical or similar to the domain name;
- made legitimate non-commercial or fair use of the domain name; or
(2) The domain name is generic or descriptive and the Respondent is making fair use of it; or
(3) In relation to “registration as a result of a relationship” (paragraph (5) above): that the Respondent’s holding of the domain name is consistent with an express term of a written agreement entered into by the parties; or in relation to a “pattern of registrations” (paragraph (3) above) and the presumption mentioned: that the Domain Name is not part of a wider pattern or series of registrations because the domain name is of a significantly different type or character to the other domain names registered by the Respondent.
Fair use may include sites operated solely in tribute to or in criticism of a person or business.
If the above presumption applies, the Respondent must rebut the presumption in order to succeed, by proving in his response that the registration of the Domain Name is not an Abusive Registration.
Trading in domain names for profit and holding a large portfolio of domain names, are of themselves lawful activities. The Experts will review each case on its own merits.
“Sale of traffic” (i.e. connecting domain names to parking pages and earning click-per-view revenue) is not in itself objectionable under the Policy. However, the Experts will take into account:
(1) the nature of the domain name;
(2) the nature of the advertising links on any parking page associated with the domain name; and
(3) that the use of the domain name is ultimately the Respondent’s responsibility.
In short we need (1) hard evidence on your “rights” to the name and proof of an abusive registration by the Respondent and (2) all information on any possible defenses that the Respondent may raise.