Dispute Resolution Service
30 March 2001
Refocused Dispute Resolution Process
In the first place, let me join others in stating that the 2-stage test set out in para. 1 of the policy improves on the UDRP model in obvious but important ways. In one way it is simpler but I worry that the simplification may prove to be superficial.
I appreciate why the phrase "name or mark" has been used but given the facts that, for the moment al least, the UK courts still ignore what are loosely called personality rights, and the ideal that DRS should be a quick and accessible solution for clear cut cases, I think some lay expression such as "legally enforceable rights" might be used, in spite of the redundancy of those additional words to lawyers.
Equally, there is some vagueness in a test which depends on similarity per se. Trade mark lawyers will have the natural tendency to argue for the qualification "confusingly similar", but on balance I feel that the word "similar" has a clear meaning and assessment of the "bad faith" element has a natural overlap with notions of confusion.
Which brings me to saying a little about "bad faith" itself. Sadly, sixteen years' experience as an IP lawyer has not really brought me any closer to an everyday formulation of what this is. I can cite examples ( as does the policy ) and I have settled for approximations like "sharp business practice" but, if that equation was ever correct, it is certainly not today. My question is whether this expression is helpful? Why don't we use something we can all understand - may I venture "opportunistic practices" - to my mind it covers most of the scenarios with which we are familiar in this area.
It would in my view be useful if, before the introduction of the new service, broad guidelines might be issued to illuminate Nominet's position on genericism, descriptiveness, tribute / protest sites and other instances, in its eyes, of fair use. Needless to say, this will be a difficult area but some early indications would be appreciated.
In this connection, the decision by Mr Livesey QC in the High Court in February this year in favour of easyJet is noteworthy. All the factors pointed to passing off by the defendant, Dainty, and the grant of the injunction. Notwithstanding comments that the claimant had no monopoly in the simple word "easy", the judge still ordered transfer of the easyRealestate.co.uk name. On one reading of the case, he thought it was per se the property of the airline. The case might be one indication that the UK courts would regard even descriptive terms as private property.
No doubt you will be overwhelmed with comments about fan sites and protest sites. One tension is of course between "rights" and free speech issues. But what do you do about www.macdonalds.sucks.co.uk for example. Its a famous registered mark. It gets the protection of s.10(3) of the Trade Marks Act. The domain name must in trade mark terms be a "similar" mark. Regardless of defamation or other website content issues, the domain name has the potential to affect the repute of the well-known mark. Clearly, Macdonald's has rights. How will these be meaningfully balanced against free speech rights?