Dispute Resolution Service
29 March 2001
The Institution of Electrical Engineers (IEE).
RESPONSE TO NOMINET UK'S PROPOSALS REVIEWING ITS EXISTING DISPUTE RESOLUTION SERVICE
The IEE is the professional body representing the public, professional and educational interest of over 130,000 electrical, electronic and manufacturing engineers and IT professionals world-wide.
Amongst its membership are a number of Chartered Engineers working in the legal profession. The IEE is building a "Professional Network" of Members and others with an interest in The Legal Framework for Business. For further details please see the IEE website http://www.iee.org.uk
The IEE's observations on the review are as follows:
- The first limb of the two-stage test allows a complaint to be brought against a domain name registration in respect of a mark "or name". This is broader than the ICANN UDRP (Uniform Domain-Name Dispute-Resolution Policy) which requires complaints be based on marks. It is likely that this broadening will be of benefit to famous individuals.
- The first limb of the two-stage test in the Proposals requires that the name or mark be "identical or similar". This appears to be broader than the equivalent UDRP test that requires the domain name be "identical or confusingly similar". This broadening is likely to be welcomed by claimants.
- Under the UDRP, to establish bad faith on the basis of a blocking registration of a domain name, the claimant must establish a pattern of such conduct on the part of the respondent. The Proposals do not require that such a pattern be established. Again this is likely to be welcomed by claimants.
- Under 4(b) of the Proposals, the respondent may demonstrate that it is not using the domain name in bad faith on the basis of sites "established in tribute to or criticism of" a person or business. Two points arise:
- "Established" is probably not the correct test to apply, since sites may be established for one reason but then not used for that reason (or at all). Also the use may be a mixed one, with a motive partly of tribute and criticism and partly commercial. Any commercial motive is almost certain to be seeking to trade off the reputation generated by the goodwill in the prior mark. Rather than "established...", the test would be better set at "established and operated solely...". Obviously criticism may take many forms.
- Many organisations will welcome informed, constructive and reasoned criticism. However, they are likely to be extremely concerned by abusive, offensive or misleading criticism. A qualification to clause 4(b) reading something along the lines of "provided that said criticism be legitimate and reasonable in the circumstances" is likely to be welcomed by potential claimants.
- There appears to be very little detail in the Proposals as to the basis on which Experts are to be appointed. Users of the proposed new DRS will need to be convinced that Experts have relevant qualifications and experience, particularly as unlike under the UDRP three member panel, users will not be able to propose Experts. A transparent moderation procedure to ensure consistent decisions would also be welcomed.
- The opportunity for a formal Reply by the Claimant in the Proposals should be well received. However it is not helpful that a failure to submit a Reply (or Form A if no Reply) leads to automatic withdrawal of the Complaint. It would be better to provide that at the end of the 5 day period for a Reply, if none has been received the Claimant will be deemed to have opted not to submit a Reply.
- The Proposals Policy document would be clearer if a separate paragraph were included for remedies rather than leaving discussion of such issues to a sub paragraph under the title Appeal and Availability of Court Proceedings.
- The inclusion of an appeal procedure is generally not helpful since both parties remain able to take the matter to Court and since the intention of the procedure ought to be to generate fast and effective decisions. An appeal imposes a further level of uncertainty and delay. However, appellate tribunals have the advantage of being able to review cases and set precedents, and that would be valuable. A solution may be to allow Nominet of its own volition to refer questions not related to specific cases to a Review Tribunal.