Dispute Resolution Service

27 March 2001

IP Litigation Group
Field Fisher Waterhouse

Nominet UK - Dispute Resolution Service (DRS) Review

We have reviewed the proposed DRS and have a number of comments. Before commenting on the actual Policy and Procedure, we wish to comment on Nominet UK's decision not to sign up to ICANN's UDRP.

We understand that Nominet UK rejects ICANN's UDRP for a number of reasons, including the following:

• It does not offer mediation;
• It is an international solution, whereas .uk registrations predominantly affect UK citizens;
• The decisions are inconsistent;
• It favours trade mark owners.

We will deal with each bullet point in turn:

1. As to mediation, we believe that Nominet could offer mediation as a pre-cursor to the UDRP. Mediation is not a reason for rejecting the UDRP.
    
2. As to the notion that the UDRP is an international solution, in our view .uk registrations do pose an international problem and therefore, require an international solution. We have dealt with countless disputes involving foreign registrants of .uk domain names and foreign complainants. Moreover, more and more ccTLD registries are signing up to ICANN's UDRP.
    
3. As to the inconsistency of decisions being handed down under the UDRP, it is still early days and, as more decisions are made and precedents are adopted, the decision-making will become more uniform.
    
4. As to the fact that the UDRP favours trade mark owners, given that the aim of the UDRP (and Nominet's new DRS) is to tackle abusive registrations and cybersquatters, we believe that trade mark protection is of paramount importance.
    

Finally, the UDRP has proved to be a quick, inexpensive and recognised way of dealing with domain name disputes which we believe is appropriate for .uk domain names.

1. DRS Draft Policy

1. Under paragraph 2b and 3b, it is proposed that the burden of proof for establishing that the respondent has registered and/or is using the domain name in bad faith is beyond reasonable doubt. Given that Nominet is not a body whose decisions have binding legal force (subject to the contractual rights with registrants), it is difficult to reconcile the application of a criminal standard of proof within the terms of a DRS policy. Our understanding of beyond reasonable doubt is that if there is any doubt on the part of the expert, then the complainant will lose. This is far too high a standard for a DRS policy. We would suggest replacing this standard of proof with guidance as to the type/level of evidence required by Nominet. The other point to make is that we are dubious as to whether this standard of proof can be dealt with in a Complaint limited to 2000 words.
    
2. Under paragraph 3a,i,A reference is made to "the Respondent's documented out of pocket costs directly associated with acquiring or using the domain name". We believe that this is too vague a definition and means that out of pocket costs could extend to any costs incurred in the acquisition or use of the domain name, including, for example, costs associated with marketing the domain name. We believe that this should be limited to out of pocket costs directly associated with the registration of the domain name.
    
3. Under paragraph 3a,i,B the term "blocking registration" is used. Proving that a domain name has been registered as a blocking registration can be difficult and we would therefore recommend that blocking registration is defined to specifically include registration of a domain name without use.
    
4. Under paragraph 4b, it is said that fair use may include tribute or criticism sites. The inclusion of such sites within a definition of "fair use" introduces complicated issues of passing off which are not suitable for resolution by a Nominet expert (and are more suitable for resolution by a Court). We therefore believe that reference to tribute and criticism sites should be removed.
    
5. Under paragraph 8a, Nominet excludes all liability for anything other than "deliberate wrongdoing". At minimum, we believe this paragraph should make reference to deliberate wrongdoing and negligence.
    
6. Under paragraph 8b, the policy states that Nominet will not be named as a party in any proceedings concerning the registration or use of a domain name. We query whether this paragraph is lawful. Is Nominet in a position to fetter the jurisdiction of the Court?
    

2. DRS Procedure

1. Under paragraph 2a and 4a, the onus is on Nominet to forward the complaint to the Respondent. We would suggest that, in line with ICANN's UDRP, the complainant be entitled to serve the complaint on the respondent at the same time as filing the complaint with Nominet. This would avoid any delay in the service of the proceedings.
    
2. Under paragraph 3bi, the complaint is not to exceed 2000 words . This word limit appears restrictive given the proposed standard of proof. However, it may be that the word limit can be overcome by the use of annexes (as per paragraph 3bx). If so, this point should be expressly made in the Procedure. Likewise, the limit to 2,000 words for the Response (paragraph 5a) and any Appeal (paragraph 18a) may also be too stringent.
    
3. Under paragraph 3bix, for the reasons set out at point 1.5 above, we do not believe that a complainant should have to waive all claims against Nominet except in the case of deliberate wrongdoing.
    
4. Under paragraph 6, the complainant has five days to reply to the respondent's response. We believe this time period is too short, especially if the complainant is based abroad. We do not believe that five days is sufficient for a solicitor acting for an overseas complainant to take detailed instructions and respond. We would suggest a minimum of 10 days.
    
5. Paragraph 8 deals with the appointment of the expert. Nominet say that they will maintain a list of experts and their qualifications. It would be interesting to know the basis on which the experts will be selected.
    
6. Under paragraph 9a, Nominet has a discretion to appoint a substitute expert if necessary. Can the parties also object to a particular expert? If so, on what basis? We would suggest that the answers to these questions be covered in the new DRS Procedure.
    
7. Under paragraph 12a, Nominet and the expert have power to extend any period of time in exceptional cases. We believe that this should be defined.
    
8. Paragraph 15c also makes reference to exceptional circumstances. This is a vague concept and is worth defining.
    
9. Under paragraph 16d, Nominet will not accept further complaints from a complainant who is found to have brought three complaints in bad faith. We would propose that this be at Nominet's discretion, rather than making it a blanket ban.
    
10. Paragraph 21 sets out the fees for an expert determination and appeal. In cases where the expert has made a blatantly wrong decision which is subsequently overturned by an appeal, we believe that there should be some scope for recovering the appeal costs from Nominet.
     

General Points

We note that there are no transitional provisions dealing with the transfer from the current DRS to the new DRS. Given the very different focus of the current and new DRS, we believe that some form of transitional provisions are crucial.

Also, at present domain names registered through the Naming Committee (i.e. pre-Nominet) are not subject to the current DRS. Will the new DRS apply to these domain names?