Dispute Resolution Service
31 March 2001
Note on Proposed Nominet Dispute Resolution Procedure
This note sets out, in brief, Lovells' comments on the proposal for a new dispute resolution service as posted on the Nominet website at www.nic.uk. This note does not represent the views of our clients. As a general comment, the proposed scheme is welcomed in that it envisages a process which will be quick, cheap and transparent. In our view the proposed Nominet dispute resolution service and the ICANN procedure are not "perfect" solutions to the problem. Whilst they are quick and cheap, it may also be said that they are, to some extent, "rough and ready". However, a complainant has a choice and, if he wants the "Rolls Royce" service, he can always take the matter to the High Court where the decisions so far have been relatively sympathetic to rights holders. Any attempt to make the proposed system "perfect" and introduce all the checks and balances of a High Court action would inevitably, in our view, detract from the key advantages of the proposed scheme - speed and economy. Nonetheless, there are areas where we would suggest changes and/or clarification will improve the proposed system whilst keeping it quick and cheap. The following are points of concern or points that appear to require clarification.
Location of prior rights
Under the ICANN procedure, the jurisdiction in which a complainant has the prior trade mark rights upon which he relies has not been a great issue because of the international nature of the .com, .net and .org suffixes (although the geographical separation of the registrant and the jurisdiction in which the complainant's rights exist does appear to have some effect in determinations of bad faith). Although web sites operated with a .uk suffix are accessible from anywhere in the world, web sites operated from such addresses will, because of the .uk suffix, tend to have a UK bias. It is not clear from the proposals whether this means that a complaint must show that he has rights in respect of a name in the UK or whether rights in other jurisdictions will suffice.
One of the problems with the ICANN procedure is the lack of an appeal system. The ICANN procedure produces widely divergent decisions by the ICANN arbitrators on precisely the same points. Without an appeal system to give guiding decisions on these points, it is difficult to have any certainty as to how these issues will be decided by the ICANN panelists. A review of the ICANN decisions will produce a large number of cases dealing with the point but there is no way of knowing which will be preferred. The appeal procedure proposed by Nominet is therefore welcomed but we would suggest the proposals go further and require that the appeal decision carry additional weight, a system of precedent. Given that there will only be two levels in the decision making process, first instance and appeal, having such a system of precedent would not be overly legalistic or complicated so as to deprive the proposals of their perceived speed and efficiency.
Criticism or tribute sites
Purely as a matter of the mechanics of the proposals (leaving aside the issue of the legitimacy of such sites), the proposals for criticism/tribute sites raise a number of questions. Firstly, when will tribute or criticism come within the ambit of "fair use". The ICANN procedure makes it clear that non-commercial use will only be allowed where this does not "tarnish" the mark in question. In our view, a similar safe guard would be appropriate in the Nominet proposals. Secondly, will "fair use" result in an evaluation by the panelists as to whether or not the criticism is in fact valid or would it simply be an assessment of the domain name itself. The former would involve an assessment of the content of the site and its validity. This would appear to be, potentially, a very time consuming enquiry to make and does not seem compatible with a quick and cheap system. There is also the question of how "fair use" can be determined where the registrant has acquired a domain name clearly intended for criticism purposes (e.g. "[company name] sucks.co.uk") but has not established a web site at the address. How will "fair use" be assessed in those circumstances?
Standard of Proof
The current proposal is to have two standards of proof for the two main elements to be proved by the complainant. Bad faith will require the higher criminal level of proof. In our view, this has two drawbacks. Firstly, having two differing standards of proof complicates the process and makes it more legalistic (something inconsistent with a quick and cheap process). Secondly, given that the process conducted in a summary manner and solely on paper and given that the bad faith element is something which the complainant is required to prove about another, the criminal standard of proof required of a complainant to show bad faith appears to be too onerous.