Is Nominet's policy killing the domain name secondary market ?

[DropCatcher-co-uk]

Out of pure interest, would you prefer it if the Independent Experts weren't IP specialists and solicitors? What about if they were bakers, chefs, road sweepers, cleaners, teachers, mechanics and cabin crew? .....

With regards to becoming an Independent Expert; have you tried applying? Next time they put the ad in The Gazette, see if you think your skills are relevant and consider applying. I'm going to take a look.

Good question and the answer is yes. I would strongly prefer if the panelists were drawn from other professions. It is obvious that suitable applicants would have to be educated professional people in their own fields as it is necessary to be able to intelligently grasp possibly complex situations, understand both sides of an argument and deliver concise, well written opinions. With no disrespect intended to the hard working men and women who do a sterling job in removing our refuse, I would feel nervous in having a roadsweeper with 1 grade D CSE in craftwork adjudicating the disposition of a £10K domain name of mine. I would feel more confident if a suitably qualified pharmacist or chartered accountant was handling the case.

It would obviously be difficult for me to apply as there are only a handful of major domain players who are not current or former customers of DropCatcher and I would have to decline to act in about 9 out of 10 cases put before me.

I very much look forward though to seeing your impressive powers of argument and balanced reasoning being brought to bear in future cases Dave! I feel sure that you would make an excellent panelist.

 

[Nigel]

What really irks me in this case is a German company using an EU community trademark to take an english word domain from a UK company. As an ardent eurosceptic we've been arguing for years about the powers being given to the EU and the way in which these powers gradually affect everybody i.e. fishing, agriculture, and now domain names . Even though the British public are also staunchly eurosceptic there are always plenty of EU friendly people to fill posts directly or indirectly linked to the EU be it Peter Mandleson, Neil Kinnock or for that matter, David Tatham the Nominet expert who took control of this case. Nominet list his profile here:

http://www.nominet.org.uk/DisputeResolution/Experts/DavidTatham.html

Note his time as president of the European Communities Trade Mark Association and if you go to the following link you will see that he is still a member of their council:

http://www.ecta.org/association_eb2.php

So get ready for more German and French takeovers as they register their community trademarks and with the approval of the UK registrar claim our english dictionary .uk domains from UK individuals and companies :cry: It's enough to make you weep.

 

[Nigel]

Interesting article on the website ecta.org where David Tatham describes his role as President of ECTA during 1994 -1996. Some of it quoted below - see link for full article.


My period as President of ECTA coincided with the realisation of a dream and the culmination of many years of effort and discussion, namely the commencement of the Community Trade Mark system. I was proud to represent ECTA at the opening of the Office in Alicante...

...During my Presidency, the European Community was enlarged by the addition of 3 new Member States ( Austria , Denmark and Finland ) and it fell to me to invite and subsequently appoint 6 new Council members from these countries...

The full article can be viewed here http://www.ecta.org/25_94.php

 

[invincible]

What really irks me in this case is a German company using an EU community trademark to take an english word domain from a UK company.

The TM was only used to demonstrate that the Complainant had rights in a name or mark that was similar or identical to the domain name alternative.co.uk. I don't think it matters whether it was a UK, EU or Bahrainian trademark. The Complainant would still be able to use a registered trademark to demonstrate rights in the term. The DRS doesn't even require a registered trademark to demonstrate rights (unlike the UDRP) in a domain name. Therefore if the Complainant had several variations of alternative.{cctld|tld}, could evidence significant trade under this mark - perhaps in multiple jurisdictions - then they might still have jumped the first hurdle of the DRS.

I'd be interested to know whether an Independent Expert would likely consider rights to have been demonstrated by a Complainant if the party had no registered trademark and had only conducted trade using the term outside of the UK.

The first hurdle in the DRS is usually pretty easy to jump. That's largely because if it relied on Complainants having registered trademarks, that'd prevent a significant number of UK small businesses from demonstrating rights in their sole trader or small business name, even if it were so obviously unique to them.

As I said above, hurdle two was where it really fell down. The Respondent didn't respond and I detect that the Independent Expert might have decided to make issue of that. The Complainant had quite a weak case but, this time, in the opinion of the Independent Expert, it went their way because Respondent never showed up. That's the lesson!

 

[Nigel]

Interesting points there invincible. From Mr Tatham's report it certainly appears that the Community trade mark was v important. This is what he says:

Complainant’s Rights
‘Alternate’ is a common English word. It does not exist in German (the language of the Complainant). Nevertheless, the Complainant has a valid Community trade mark registration for the word ALTERNATE covering a variety of goods and services, dated February 21, 2001. When making a comparison under the Policy, it is customary to disregard the suffix ‘.co.uk’ and, having done so, it is clear that the disputed domain name and the name in which the Complainant has rights are identical.

Are you seriously saying that you feel that a German trademark would have helped sway a Nominet expert to release a .co.uk english dictionary word to a German company in the same way that this community trade mark has?

Also worth noting that the community trade mark on alternate is dated February 21, 2001 wheras it appears from Nominet's whois that alternate.co.uk was registered prior to this on 28 July 1999. Yet I've scanned throught Mr Tatham's report and cannot see any comment about this. I always thought that the date of a trademark was important in deciding if something was an abusive registration i.e. how can it be an abusive registration if there was no trademark in place at the time? I would be interested to hear anyones views on this as I always thought it was an important factor.

 

[invincible]

Interesting points there invincible. From Mr Tatham's report it certainly appears that the Community trade mark was v important. This is what he says:

Complainant’s Rights
‘Alternate’ is a common English word. It does not exist in German (the language of the Complainant). Nevertheless, the Complainant has a valid Community trade mark registration for the word ALTERNATE covering a variety of goods and services, dated February 21, 2001. When making a comparison under the Policy, it is customary to disregard the suffix ‘.co.uk’ and, having done so, it is clear that the disputed domain name and the name in which the Complainant has rights are identical.

Are you seriously saying that you feel that a German trademark would have helped sway a Nominet expert to release a .co.uk english dictionary word to a German company in the same way that this community trade mark has?

I don't see why not. A Complainant can use whatever they wish to assist their case. Complainant needs to demonstrate that they have rights in a term or mark similar or identical to the domain name at issue. Any registered trademark is likely to 'assist' with this. I'm not sure how much weight an expert would put on a TM registered in the Seychelles if it were submitted as the sole piece of evidence demonstrating rights. However if it were used in combination with other material, such as proof of trade in the UK, and perhaps other things that I cannot currently think of at this moment then it might assist the Complainant in jumping the first hurdle of the DRS.

Also worth noting that the community trade mark on alternate is dated February 21, 2001 wheras it appears from Nominet's whois that alternate.co.uk was registered prior to this on 28 July 1999. Yet I've scanned throught Mr Tatham's report and cannot see any comment about this. I always thought that the date of a trademark was important in deciding if something was an abusive registration i.e. how can it be an abusive registration if there was no trademark in place at the time? I would be interested to hear anyones views on this as I always thought it was an important factor.

I've not examined the TM myself, as of yet, and I will do later on today. However, if it is as you say then I don't know. You can always email the Independent Expert and ask him yourself. Why don't you? I'd like to know too.

 

[Nigel]

I've not examined the TM myself, as of yet, and I will do later on today. However, if it is as you say then I don't know. You can always email the Independent Expert and ask him yourself. Why don't you? I'd like to know too.

I think that is something the original registrant of alternate.co.uk should do if he is reading this forum

 

[domaingenius]

It may be that the TM wasnt the thing that swayed it although I know it was mentioned. Bear in mind that a TM can be granted years after a party has started using that same name and they have IP rights even before they get a trademark. There are many examples of companies that have IP rights in a name but dont have an official TM. Still very unfair. If it was down to the Court to Judge it I doubt that they would have got the name.

DG

 

[Nigel]

The trademark seems to me to be the pivotal piece of evidence. The claimant relies upon it and the expert specifically mentions it. That is why the date of the trademark would appear to be so important. If it wasn't the trademark what else is there? The expert's report mentions 'Copies of various computer magazines in Spanish, Dutch and German which contained Complainant’s advertisements were annexed to the Complaint' which begs the question where were the computer magazines in english bearing in mind they were pursuing a UK domain???

 

[invincible]

The trademark seems to me to be the pivotal piece of evidence. The claimant relies upon it and the expert specifically mentions it. That is why the date of the trademark would appear to be so important. If it wasn't the trademark what else is there? The expert's report mentions 'Copies of various computer magazines in Spanish, Dutch and German which contained Complainant’s advertisements were annexed to the Complaint' which begs the question where were the computer magazines in english bearing in mind they were pursuing a UK domain???

I feel it's a very loose complaint and is much more about an Independent Expert putting Respondents on notice that if they fail to respond, even if you have a generic name, you might actually lose it.

 

[bb99]

I feel it's a very loose complaint and is much more about an Independent Expert putting Respondents on notice that if they fail to respond, even if you have a generic name, you might actually lose it.

A great reminder to keep WHOIS contact info up to date...

 

[Nigel]

One further thing

Visit the home page of www.alternate.net and you will be asked to select the country of your choice. Choose from the flags of:

Germany
Spain
Holland
Austria
Belgium

Which again begs the question - where is the Union Jack? They say in their complaint that they trade 'throughout Europe including the UK' but the website's homepage doesn't show this and the computer magazines sent to Nominet don't show this. So what does a UK visitor do when he arrives at the alternate.net homepage? If it were me I would simply leave the site. This is a tad important don't you think :???:

 

[invincible]

One further thing

Visit the home page of www.alternate.net and you will be asked to select the country of your choice. Choose from the flags of:

Germany
Spain
Holland
Austria
Belgium

Which again begs the question - where is the Union Jack? They say in their complaint that they trade 'throughout Europe including the UK' but the website's homepage doesn't show this and the computer magazines sent to Nominet don't show this. So what does a UK visitor do when he arrives at the alternate.net homepage? If it were me I would simply leave the site. This is a tad important don't you think :???:

Unfortunately it's irrelevant. The first hurdle of the DRS is dead easy to jump. All a Complainant has to do is prove that "Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name". It's that unspecific. So the rights do not have to be registered (i.e. no need for a Registered Trademark) and they don't even have to be relevant to the UK. You could be a sole trader in the Christmas Islands doing business with Australians and you'd still be able to jump the first hurdle, as long as you could demonstrate that you had Rights in respect of a name or mark which was identical or similar to the Domain Name at issue.

 

[domainder]

I always thought that the date of a trademark was important in deciding if something was an abusive registration i.e. how can it be an abusive registration if there was no trademark in place at the time? I would be interested to hear anyones views on this as I always thought it was an important factor.

Many people make the mistake thinking that Nominet DRS is the same as UDRP.

Nominet DRS is very very different to UDRP.

Nominet DRS http://www.nominet.org.uk/DisputeResolution/DrsPolicy/
URDP http://www.icann.org/dndr/udrp/policy.htm


UDRP requires the domain name to have been registered in bad faith AND used in bad faith.
Nominet's DRS requires that the domain name to have been registered in bad faith OR used in bad faith.

With Nominet's DRS the challenger doesn't even need to have a registered trademark and it doesn't matter if your domain name has been registered years ago and the challenger's first use may only be very recent.

Nominet lawyers cunningly put the word OR into the policy which means that the date of registration and circumstances of registration are virtually ignored.

Coupled with the fact the challenger doesn't even need a registered trademark, this means that a large company with their eyes on your domain name can set up a brand, then either try to entrap you or claim that some of their customers are confused and use Nominet's DRS to grab the domain name.

 

[carissima]

http://www.iprights.com/indexwill.asp

The Nominet DRS policy was launched by Willie Black (Nominet Chairman) and Tony Willoughby (appointed Chairman of Experts for Nominet UK) of Willoughby & Partners

 

[invincible]

Many people make the mistake thinking that Nominet DRS is the same as UDRP.

Nominet DRS is very very different to UDRP.

Nominet DRS http://www.nominet.org.uk/DisputeResolution/DrsPolicy/
URDP http://www.icann.org/dndr/udrp/policy.htm


UDRP requires the domain name to have been registered in bad faith AND used in bad faith.
Nominet's DRS requires that the domain name to have been registered in bad faith OR used in bad faith.

With Nominet's DRS the challenger doesn't even need to have a registered trademark and it doesn't matter if your domain name has been registered years ago and the challenger's first use may only be very recent.

Let's assume you ['Respondent'] registered somedomain.co.uk in 1998. In 2000 another party ['Complainant'] registered a trademark on someterm. In this example somedomain.co.uk and someterm are identical. If somedomain.co.uk was used to market goods relating to someterm prior to Complainant registering their trademark, Respondents use of somedomain.co.uk might not be abusive. Whether it is, or isn't, depends on what someterm is. If someterm is generic and descriptive, and there is no evidence to suggest that Complainant coined someterm, I'd say you should be fine. If someterm is obviously coined and you are using it together with somedomain.co.uk to market goods that are similar to, or the same as, the goods that Complainant markets - and you even did this prior to the Complainant registering someterm as a trademark - then somedomain.co.uk could be considered an abusive registration. Whether it is, or it isn't, depends on whether Complainant could evidence trade prior to gaining their trademark registration on someterm.

Nominet lawyers cunningly put the word OR into the policy which means that the date of registration and circumstances of registration are virtually ignored.

This is probably to leave the DRS as loose and open ended as possible, so it can fit a myriad of different circumstances. Nominet are keen to assist the ordinary businessman without a registered trademark.

Coupled with the fact the challenger doesn't even need a registered trademark, this means that a large company with their eyes on your domain name can set up a brand, then either try to entrap you or claim that some of their customers are confused and use Nominet's DRS to grab the domain name.

They have to prove and evidence it. You are making it too black and white. You need to have a very specific set of circumstances, and evaluate them, before you can comment. That really needs to be done on a case by case basis, rather than trying to be too broad. As I am sure you are aware, no two cases are the same and that is why it is so important to Respond in full. If you don't, an Independent Expert cannot be expected to guess in a Respondents favour.

 

[invincible]

The Nominet DRS policy was launched by Willie Black (Nominet Chairman) and Tony Willoughby (appointed Chairman of Experts for Nominet UK) of Willoughby & Partners

How interesting. What's your point? :???: Personally I'd expect it to have been launched by the then Chairman of Nominet in combination with an 'expert' in the field of IP, rather than the milkman.

 

[Nigel]

Unfortunately it's irrelevant. The first hurdle of the DRS is dead easy to jump. All a Complainant has to do is prove that "Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name". It's that unspecific. So the rights do not have to be registered (i.e. no need for a Registered Trademark) and they don't even have to be relevant to the UK. You could be a sole trader in the Christmas Islands doing business with Australians and you'd still be able to jump the first hurdle, as long as you could demonstrate that you had Rights in respect of a name or mark which was identical or similar to the Domain Name at issue.

I can't agree with your assumption that a foreign company which doesn't even trade in the UK has rights in a .co.uk domain as this is completely at odds with the service Nominet says it provides to the 'the UK internet community'. Indeed they say on their own website 'Nominet is not a governing or regulatory body, but provides a public service for the .uk namespace on behalf of the UK internet community'.

This term the 'UK internet community' is mentioned time and again presumably because .uk is intended for our own domestic market. So how can a German company that has apparently provided no proof (if they did send any to the Nominet expert it was not included in the report) of any UK presence be deemed part of the 'UK internet community'. Ironically, the company that has lost the name was part of the 'UK internet community'.

 

[invincible]

I can't agree with your assumption that a foreign company which doesn't even trade in the UK has rights in a .co.uk domain as this is completely at odds with the service Nominet says it provides to the 'the UK internet community'. Indeed they say on their own website 'Nominet is not a governing or regulatory body, but provides a public service for the .uk namespace on behalf of the UK internet community'.

This term the 'UK internet community' is mentioned time and again presumably because .uk is intended for our own domestic market. So how can a German company that has apparently provided no proof (if they did send any to the Nominet expert it was not included in the report) of any UK presence be deemed part of the 'UK internet community'. Ironically, the company that has lost the name was part of the 'UK internet community'.

Read the DRS Policy again. I am sure you know what it says by now. It's there in black and white.

2. Dispute Resolution Service:
a. A Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts to us, according to the Procedure, that:
i.The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

Whether you want to agree with me or not, it's there on the page! It makes no mention of the clause being specific to the UK or those that trade in the UK. It is completely open to interpretation by each Independent Expert as they see fit. However if, as a Complainant, I registered a trademark in the Seychelles which was identical or similar to the Domain Name at issue then I would pass the first hurdle according to the DRS Policy.

 

[retired_member6]

I've heard the defendent actually has to pay the fee to defend himself, is that right? farcical if it is. Nominet should simply lay down a list of rules, not a - z and pick any letter you want, if they have to spend all the money they have, then that's the least they can do.