Dispute Resolution Service

30 March 2001

Tom Hope
Roland Mallinson
Linklaters

COMMENTS ON POLICY AND PROCEDURE PROPOSALS FOR A REVISED DISPUTE RESOLUTION SERVICE FOR .UK

1 INTRODUCTION

1.1 Thank you for giving us the opportunity to make submissions on the proposals for revising the .uk dispute resolution service.

1.2 If you would like clarification on any of the comments, please contact Tom Hope or Roland Mallinson

2 COMMENT

2.1 We generally support the proposal to rebase the DRS so that it no longer is concerned solely with likelihood of confusion to internet users but instead looks at whether or not a domain name has been registered in bad faith. However:

2.1.1 We believe that the 'likelihood of confusion' test could and should be retained and the adjudicators should be entitled also to consider whether the use of the domain name generally infringes the rights of the complainant. If one of the purposes of the dispute resolution procedure is to avoid the expense of court litigation, it can only benefit the parties if it is able to take into account the prospects of each party for succeeding in a court case.

2.1.2 If the 'likelihood of confusion' test is dispensed with, clarification of the current proposals which appear to elide the 'bad faith' and 'confusion' test is desirable.

2.1.3 We believe that the proposed standard of proof for establishing bad faith 'beyond all reasonable doubt' is quite wrong and effectively a charter to encourage cyber-squatting. We elaborate on this below.

2.2 We also generally support the proposal to incorporate deadlines for each of the stages (informal mediation, expert adjudication, appeal) to keep the process moving. However, the 5 working day period for complainants to reply (Procedure, paragraph 6.a) will be too short where instructions have to be taken from some overseas clients. We see that Field Fisher Waterhouse's submission makes the same point and we feel this is likely to be the case for many practitioners in this field.

2.3 We also believe that the proposals for the level of fees and the timing for their payment are acceptable. However, the limit on a Complainant's submissions to 2000 words (Procedure, para. 3.b.i) appears unduly restrictive. Proving something to the criminal standard will inevitably require a more detailed analysis of the facts than would have been the case if the civil standard had applied.

2.4 We think it is wrong that the Complainant should be required to waive all claims it might have against Nominet in relation to Nominet's registration of the domain name. Such waiver should apply only to Nominet's involvement in the dispute and the dispute resolution procedure. Hence, Policy paragraph 8.a may be acceptable but 8.b is not appropriate (the same therefore applies to Procedure para. 3.ix and 20).

2.5 We suggest that the Nominet terms and conditions for registrants should be modified so that it is made clear the registrant submits to the exclusive jurisdiction of the English courts for the purpose of resolving any dispute concerning the domain name's registration (i.e. in equivalent terms to what is required of the Complainant at Procedure para 3.b.viii.) Also on the question of jurisdiction, we concur with views previously expressed that the panel, when considering whether to stay its procedure, should have regard to court proceedings taking place overseas and not just in the UK (Procedure para. 3.b.vii and Policy para. 9.b). A further change to the terms and conditions should be a provision prohibiting the purported sale or transfer of the domain name by the registrant once a complaint has been made under the DRS. This should remain effective until final resolution of the complaint. It is equivalent to the interim injunction granted in MBNA America Bank NA v Freeman (Ch. Div, 17 July 2000).

2.6 We have no problem in theory with the proposal at 16.d of the Procedure (3 'bad faith rulings' against a Complainant means a bar on further complaints) provided that it is made clearer (along the lines of Policy paras 3 and 4, though see below as to their perceived inadequacies) on what basis a finding of bad faith will be made. Simply to refer to Reverse Domain Name Hijacking (which is not defined) by way of example is not helpful. Whilst there is a legitimate concern to prevent abuse of the system by Complainants, it must equally be wrong to deter Complainants from using the system where they believe they have a genuine grievance. If there is to be a bar at all, perhaps this balance can be assisted by limiting the bar in time, e.g. the 3 'separate occasions' must come within 1 or 2 years of each other and, if so, the Complainant is barred from making further complainants only for a similar period of time.

3 PROVING BAD FAITH

3.1 We say above that the proposed standard of proof for establishing bad faith 'beyond all reasonable doubt' is quite wrong and effectively a charter to encourage cyber-squatting. Our reasons include:

3.1.1 'Beyond all reasonable doubt' is a test applicable in criminal courts where the liberty of the accused is at stake and where the evidence can be tested by cross-examination on oath. It is not an appropriate standard for a dispute resolution procedure which is supposed to allow the parties an alternative recourse to the courts.

3.1.2 If the dispute were litigated in court between the parties, a civil standard of proof - on the balance of probabilities - would apply. It should be the same for this DSR.

3.1.3 The surest way for a Complainant to demonstrate bad faith is by evidence of the registrant's willingness to sell the domain name - as reflected in the list of factors at 3.a.i of the Policy. However, with a 'beyond reasonable doubt' standard of proof, allied with the factors set out at 4.a.i.A of the Policy, a cyber-squatter will be able to insulate himself from a bad faith finding by making 'demonstrable preparations to use' either the Domain Name or a similar Domain Name. Whilst this wording requires that there be a 'genuine offering' of goods or services, it will not be for the cyber-squatter to prove this 'beyond all reasonable doubt' - he merely has to inject an element of doubt, no matter how small, as to whether he may in fact have an intention to use the domain name in a genuine way and the Expert should find for him. (He could for example produce a memorandum describing how he intends to use the site for 'non-commercial or fair use'. Provided the memorandum appears to pre-date the Complainant's dispute - and there is no way that the actual date of this memorandum could be effectively tested by the Complainant under the proposed written submission procedure - the cybersquatter would be home free.)

3.2 We therefore urge you to reconsider this point in particular and to adopt instead a 'balance of probabilities' test for all aspects of the DSR. To do otherwise grossly advantages a registrant over a complainant. A dispute procedure with such an in-built imbalance may also offend against Article 6 of the Human Rights Act 1998 (right to a fair trial) to which the Expert and appeal panel would arguably be subject.