Dispute Resolution Service

30 March 2001

Alexis Hawkes
BBC.

BBC Comments on Nominet's DRS review

Please find below the BBC's comments on Nominet's DRS review. Some of these comments arise from the Cyberbeat II conference and the responses made by Nominet's solicitor.

Mediation

If compulsoy mediation fails within 10 days Nominet moves on to a Panel decision. This will add to the overall time period for an application making it about 2-3 weeks longer than ICANN. The BBC accepts that Nominet wishes to include mediation but we think it is important that if no response is made by the Respondent to the Complaint the procedure moves on without delay.

Cost will be £750, there is no mention of a sliding scale similar to WIPO in relation to serial cybersquatters where the registrant is the same for a number of names. Under WIPO's rules you can submit a Complaint for 5 names for $1500, 6-10 domain names for $2000 and WIPO will negotiate a fee for more than 10. This is should be addressed by Nominet.

The requirements

1. The Complainant has rights in respect of a name or mark which is identical or similar to a domain name; and
2. The Respondent has registered and/or is using the Domain Name in bad faith.

rights in the mark

The Complainant only needs "rights", it is not clear but presumably these must be up to the standard of rights that could be protected in law by passing off. However there is no reference to the relevant law which the Panels can consider, under ICANN that point is specifically mentioned. Nominet have said that they thought as they are the UK Registrar based in the UK and its the .co.uk that it would be obvious. We think this should be made clear for the avoidance of doubt.

identical or similar

There is no "confusingly similar" this removes any trade mark type considerations such as confusion due to the use of similar marks for similar goods and services etc. We think this is a positive improvement.

registration and/or use in bad faith

The change to and/or rather than registration "and" use removes the difficulties associated with sites which are under construction or have been left dormant, but Nominet added that in those cases the Complainant must prove bad faith Beyond Reasonable Doubt. The rules also specify that proving an absence of good faith is not sufficient you must prove bad faith exists.

Whilst the change to and/or is very welcome the higher burden of proof is strongly opposed by the BBC. Nominet say that it is a serious allegation to allege bad faith and it must be proved beyond reasonable doubt, in our view this is an unfeasibly high standard of proof. Our main objection is that as there is no oral hearing the Panellist will not be able to assess the demeanour of the witness and there is no opportunity for cross examination. A Respondent would be able to submit a sworn affidavit or witness statement which would presumably carry some weight with the Panel but the Respondent could not be cross examined on that statement. Also there is no sanction for lying in a statement or misleading the Panel as this is not a judicial process so there is no risk of contempt, hence there is no real incentive to be truthful.

One suggestion is that the balance of probabilities should be applied to bad faith in conjunction with more stringent guidelines on evidence. Currently it is difficult to know what evidence should be included with a Complaint or how much weight it will carry.

There is a non exhaustive list of examples of bad faith, slightly amended from ICANN.

circumstances which show the domain name was registered for the purpose of

1. primarily for selling to the Complainant or their competitor for more than out of pocket expenses
2. blocking registration
3. disrupting the business of the Complainant

circumstances indicating that the Respondent is using the domain name in a way which has confused people or business into believing the that the domain name is registered to, operated or authorised by, or otherwise connected with the Complainant.

There is no mention of a series of registrations/pattern of conduct Nominet said that a pattern of conduct can always be included as evidence of bad faith generally. Could this be specifically included in the policy? There is also no specific mention of using confusion to attract internet users to your site for commercial gain in the reasons for registration, however as the list in non exhaustive it appears this can be included as evidence of general bad faith.

Worryingly the Use element seems to refer to past tense "which has confused people" this seems to suggest that confusion may be a question of fact, although the Complainant would have to show circumstances rather than actual proof of confusion suffered by specific people. This does appear a higher threshold than the use "creating a likelihood of confusion".

Word limit: No more than 2000 words, this is cause for concern as where there is a past history relating to the domain name which needs explaining, 2000 words may not be sufficient. The ICANN limit is 5000 words and we think that is far more realistic, a 2000 word limit is far too limiting.

The Response

legitimate interest?

The legitimate interest element included in ICANN is removed , you do not have to prove the negative. This is a very helpful improvement. If the Respondent can show legitimate interest this will effectively be a defence. Does this defence mean that if the Respondent can make out that Defence the Respondent will automatically win or will the Panel still consider questions of bad faith and decide the case on the balance of the evidence? It appears from the rules that this may simply be a factor which is considered rather than a defence. Can this be clarified by Nominet.

Right to Reply

Within 5 days of receiving the response the complainant can submit a reply or a form saying they are making no reply, if nothing goes in the is deemed withdrawn. The inclusion of a right of reply is a welcome improvement but it needs to be very clearly flagged that if no reply/form is received the Complaint will be deemed withdrawn.

Appeals Procedure

Either party can appeal against a decision to a 3 person panel for fees of £3,000 Nominet think this amount of fees will deter cybersquatters from challenging decisions, the new panel will simply consider the case again, no new evidence will be filed. Under ICANN previous decisions are not binding precedents although Panels do consider other cases for guidance, they are not bound by those decisions. If there is to be an appeals procedure it is essential that the decisions are consistent. Appeal decisions should have binding force or they will serve no purpose, those decisions must provide certainty. This is something Nominet must consider.

3 Strikes

Nominet is proposing a "3 strikes and you are out" rule to prevent reverse domain name hijacking. If a Complainant was found to have brought a vexatious claim 3 times they will be prevented from bringing any further claims in the future. According to Nominet this does not mean if you lose three times you are banned from bringing further claims but it seems a very heavy handed approach to deal with the minute number of reverse hijacking cases. Its not clear exactly what would constitute a vexatious claim. We do not think that this provision is necessary, and for companies that face a large number of cybersquatters it would create an unnecessary exposure.

When questioned Nominet conceded that the number of reverse hijacking cases are minuscule. This a provision which is open to abuse and we think that it far outweighs the goal it is trying to achieve.

WHOIS searches

Given that Nominet provides extremely limited whois information which frequently makes it impossible to contact the Registrant the Complainant will have to issue proceedings to even make contact with the registrant. On this basis it is essential that Nominet maintain the clause that the fees will not be paid until after the mediation has failed, however this is not an ideal solution as the Complainant still has to go to the expense of drafting a Complaint.

BBC suggests that Nominet provides a draft Complaint document on its website as WIPO does to provide further guidelines for drafting a Complaint together with guidelines on evidence.