Legal action being threatened

[Jac]

ok james thats fine but:-

can you tell me why the remedy was transfer to the complainant?

Lee,

The only answer I can give you is; that's what the appeals panel decided.

As a point of interest, the panel in this instance consisted of Tony Willoughy; Solicitor: Intellectual Property and Information Technology Partner; Matthew Harris; Head of IP and IT Litigation and Antony Gold: Solicitor: Intellectual Property Partner.

One has to assume (from their credentials) they were well qualified to decide in this appeal.

Regards
James Conaghan

 

[domaingenius]

However, the crux of their decision seems to be encapsulated in paragraphs 8.3.10 and 8.3.11.

Regards
James Conaghan

James, Im interested to see you say that.OK so 8.3.10 and what that seems to do is miss the logical point entirely, and replace it with their own misguided logic. OK so Bounce is "desirable" as they say.That does not mean he violated their rights. It then jumps to a HUGE conclusion that internet users visiting his site are looking for frigging washing powder or whatever junk it is. What a load of bollocks that is. What the F would someone want to look for washing powder for on the internet ??. And then it says "resulting with business opportunities of one kind or another..." Yes of course that is a serious crime. Again a load of BS.
So thats 8.3.10 summed up now we look at 8.3.11 and lets see;

What I would like to know is (a) did P & G ever produce anyone that said they visited the site thinking they were visiting P & G's bounce ? (b) did the domain holder ever sell bounce or other competing product on the domain ??.
If so then there would be a possible case, otherwise sorry to say it is the usual BS which comes from Nominet making the rules up as they go along. It is such a dangerous path to try and run a course half way using TM law (when the Complainant uses it to make his complaint) and then saying that TM law has nothing to do with DRS. Who the F wrote the DRS want stringing up, and Nominet are wholly out of order for continuing to think they are a court of law with their own pathetic rules. Sorry but thats my take. Nominet should concentrate on their business and give the DRS to the Patent Office dispute resolution service (which they now offer) to run properly against TM laws.

DG

 

[Jac]

James, Im interested to see you say that.OK so 8.3.10 and what that seems to do is miss the logical point entirely, and replace it with their own misguided logic. OK so Bounce is "desirable" as they say.That does not mean he violated their rights. It then jumps to a HUGE conclusion that internet users visiting his site are looking for frigging washing powder or whatever junk it is. What a load of bollocks that is. What the F would someone want to look for washing powder for on the internet ??. And then it says "resulting with business opportunities of one kind or another..." Yes of course that is a serious crime. Again a load of BS.
So thats 8.3.10 summed up now we look at 8.3.11 and lets see;

LOL ... I didn't make the decision... why you shouting at me?

Regards
James Conaghan

 

[grandin]

good point

good point: What a load of bollocks that is. What the F would someone want to look for washing powder for on the internet

Interesting to note:renowed law firms are prepared to put their own reputation on the line for the DRS

Transfer to the complainant...very good remedy indeed....truly one sided

Lee

 

[max99]

Probably should have posted this in the "Bounce" appeal decision thread but it seems to have amalgamated with this one so here goes!

Having read results from similar DRS cases, it seems that Nominet will always find for the complainant if the respondent has been shown to indulge in a pattern of abusive registrations in the past. This clearly runs counter to any known rule of (English) law that I am aware of, where evidence from previous incidents is not allowed to be considered as part of the evidence for the current case. If it were so in a court of law then many an innocent individual would have been sent to their doom, condemned by some coincidental evidence from a past incident.

Furthermore, Michael Toth quite rightly asserted that even if one were to take into account the above, the bounce.co.uk is clearly one of his generic domain names, with which I think we would all wholeheartedly agree.

Although Nominet claim that DRS is not a court of law, but a quick method of resolution avoiding use of the courts, why do they insist on not following clearly laid down and understood rules of law arrived at by hundreds of years of combined wisdom. Innocent until proven guilty. The DRS clearly works the other way around. Guilty until proven innocent.

This is clearly a bad decision as there is no evidence whatsoever that the registration was made in an abusive manner (regardless of what you may think of other registrations in Michael's portfolio). The "experts" always appear to swoon over evidence presented by compainants of how many x millions have been spent on advertising, and how this incontravertibly establishes a complainant's right in the name. Corporate arrogance or what? What hope does any of us ordinary mortals stand in refuting this if advertising spend is taken as a measure of rights in a wholly a generic word or phrase?

Why do the "experts", in their arrogance, assume that Toth must have known of the brand when he registered the name. I forever need to ask who such and such a celebrity is, despite their so-called celebrity, as I take no interest in who they are or what they do, and so it could be for any household product unless you have a need to use it. The panel themselves say, sexistly, that Bounce is a product universally known by "housewives", so by their own yardstick, why should Michael be aware of the brand. Are you a housewife, Michael?

Come on Nominet. For God's sake stop playing the lapdog to big business whenever they stamp their foot. No one should have to justify having to defend the ownership of a truly generic word or phrase in a domain name, regardless of any use of that word by another business. The internet truly is the World Wide Web, and encompasses truly universal use of all language. It's not another arena that should be muscled in on by anyone with enough money and weight to sweep justice aside and get exactly what they want by stamping their big feet.

The main lesson at the end of it all: Don't be caught with any name in your portfolio that can rationally be described as using a trademark (lotussportscars.co.uk etc) as in reality this will be the sole deciding factor in any DRS case against you, regardless of any fair and rational evidence that you provide to the contrary. The DRS has again shown itself incapable of making a fair or rational decision when big business flexes it's muscles.

 

[domaingenius]

You only need to look at the CV of the new Chairman to see where he would take Nominet if he could. I suspect that his ambition will be to try and float Nominet on AIM or somewhere. He is a solicitor I believe with lots of business contacts and clients and I can guess that that may have some sway on DRS

DG

 

[sneezycheese]

Having read results from similar DRS cases, it seems that Nominet will always find for the complainant if the respondent has been shown to indulge in a pattern of abusive registrations in the past.

...This shows yet another apparent contradiction in the murky world of the Nominet contract. The contract defines the 'pattern' as:

3c. There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4 (c)).

Thus it is reasonable to asume that ANY other domain that has NOT been 'explicitly' defined as an 'Abusive Registration' is not one, i.e. if it hasn't been through the DRS/Courts it CAN NEVER be classed as an Abusive Registration... The reason why - What formal tests have been applied to deem it so? - The answer = None!

 

[olebean]

One would have thought that there would have been some response:

- "it's like that because ..."

- "we shouldn't allign with TM law because ..."

- "that's an interesting point, we're consulting with stakeholders and will consider it as part of the upcoming DRS review"

- "GET OUT OLEBEAN"

Was there really silence / no comment?

BB

This was submitted in another thread


This is is part of what I said in the discussion on DRS last week (this may not be word for word):

I asked why Nominet took a global view on rights in relation to TM when there can be co-existance of marks. I explained a little research on the word "more" I found 50 odd class applications for TM (this doesn't include MORE MORE or other combinations of words). In 22 different classes, from 19 organisations. Only 3 applications were declined, 2 of which have not previous mark registered in that class. I was asked if I felt this should be applied to just generics, I said no....... Nominet did not comment further......

Further to that, at one point and this still concerns me this was said (again this may not be word for word):

"We are only interesting in the name"

One last thing for now........... I asked if Nominet get involved with University studies into domains/industry..................

 

[aqls]

Don't be caught with any name in your portfolio that can rationally be described as using a trademark (lotussportscars.co.uk etc) as in reality this will be the sole deciding factor in any DRS case against you, regardless of any fair and rational evidence that you provide to the contrary.

This in itself is a ridiculous and sofar unchallenged decision influence.

to take your extreme example lotussportscars.co.uk

there is no trade mark for lotussportscars and as for "lotus" there is noone selling for example:
Class 03:
Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

under lotus or lotussportscars

and which you "should" by trademark law be able to do without infringement on anyone else's property.

so how the experts are able to decide by looking at your portfolio and seeing a name that is trademarked under some categories to then decide that you have infringed someone's trademark is not right.

Each domain should be innocent until proven guilty and the penalty (of useage not ownership) should be decided on that one domains situation only.

-aqls-

 

[hunkydorey]

Surely just transfer the domain and the trouble goes away

This thread has got me a bit worried to be honest

I reg'd a series of sportsmen/women domains recently such as kevinpieterson.co.uk and maursemo.co.uk , I parked them with 1plus for news and a few google ads on the side.

Surely I've not committed an offence in registering them ? and If they ask for them surely all I need to do is let them have the domains, or at least transfer the namservers to those of their choice.

I mean think of this, a newspaper puts a story about a celeb on it's front page and puts adverts on the page, this is done without the permission of the celeb and unless it defames them there is no legal ramifiactions, they are earning revenue of the backs of the celebs.

 

[grandin]

lucky you found us

lucky you found Acorn. I was directed to this site by Nominet. Shame they didnt recommend you come here prior to buying the domain....thats assuming its a co.uk name.

Were you prompted to gain legal advice prior to buying your domain name?

Lee

 

[hunkydorey]

Innocent until proven guilty

No, I didnt ask for legal advice, I just decided to reg them

My view was that if I get asked for the domain by the individual of the same name I'd give it to them free of charge to avoid any court cases.

I am not a rich man, so I cant believe a court would fine me if I offered the domain for free before court proceedings.

Thre are no warnings when you buy a domain and no vetting so Nominet allowed me to do it.

It's not against the law and if the individual of the name concerned lives in say Russia, Ithink they'd have enormous difficulty pursuing me. Surely I wouldnt be extradited !!!

 

[hunkydorey]

How about this

Perhaps I should just approach the stars concerend and say that I'd like them to have the domain for free , then if they didnt reply then they would find it difficult to pursue me.

 

[grandin]

Ask for you money back

If you truly were acting in good faith, which I personally believe you were, then maybe you could ask Nominet for your money back...if they say no but you still want to take it further then you could contact your MP or do as I did contact your Local Trading Standards dept...they should take it up for you if your bought it as a consumer.

Do you want to add to this Jac?

Lee

 

[Jac]

This thread has got me a bit worried to be honest

I reg'd a series of sportsmen/women domains recently such as kevinpieterson.co.uk and maursemo.co.uk , I parked them with 1plus for news and a few google ads on the side.

Surely I've not committed an offence in registering them ? and If they ask for them surely all I need to do is let them have the domains, or at least transfer the namservers to those of their choice.

No. You haven't committed an 'offence' in registering them, but if I have understood your situation correctly, you have registered a domain name that is similar to, or the same, as a sports personality? In which case, it would not surprise me that they object and if they object they will undoubtedly pursue you for the name; probably through the DRS first. There is an informal mediation stage when a DRS complaint is lodged during which Nominet mediators attempt to get both sides to reach an agreeable resolution. After that, the complainant has to lodge £750 with Nominet for a full blown DRS. If the domain name is the same as, or similar to, the personality complaining, I'd say it's a reasonable assumption you will lose the name. If you feel you have a legitimate reason for holding it (and only you can be brutally honest with yourself here) then put in a defence.

I mean think of this, a newspaper puts a story about a celeb on it's front page and puts adverts on the page, this is done without the permission of the celeb and unless it defames them there is no legal ramifiactions, they are earning revenue of the backs of the celebs.

Freedom of the Press is a complete different issue from DRS disputes. A DRS dispute is about who has the greater right to hold the domain name and whether your registration of someone else's name can be seen as abusive.

In this case and in my humble opinion, it would be difficult to prove that registering someone else's name (especially a celebrity name) would have been for any other reason than because they were who they were. In which case, it could well be held to be an abusive registration.

Please note, this is only my opinion based on DRS policy but it is given in a community spirit of good faith.

Regards
James Conaghan

 

[hunkydorey]

Sleepless nights

Things is there are so many people doing what I've done.

It makes me wonder just how likely it is that I'll be pursued especially as I'm defaming the celebs concerned.

I just checked sharapova.co.uk reg by a squatter with no content just adds.
Compared to that my maursemo.co.uk has news stories about her so it surely isnt doing her any harm.

Well, I guess if I do contact Nominet it will at least show that I tried to give up the domains which will be a big help should I get pursued later.

 

[robrob is verified member.]

WayneRooney.com is being challenged, so one would assume WayneRooney.co.uk (same registrant) is also being challenged.

All via the 'normal' domain dispute methods under the extensions.

As for giving up the names http://www.nominet.org.uk/registrants/maintain/surrender/ go and surrender them

 

[grandin]

good advice

There you go Hunkey...all good advice thanks to Acorn

Lee

 

[Jac]

If you truly were acting in good faith, which I personally believe you were,

I am not sure if registering someone else name as a domain name could be seen as acting in good faith, especially if the person concerned is a reasonably well know sports personality.

then maybe you could ask Nominet for your money back...

I know you disagree with Nominet's Terms and Conditions Lee, but until the powers that be (DTI, Trading Standards, or otherwise) decide they are unfair, they are the governing contract of registration and the following applies:

"We are a not-for-profit company limited by guarantee, generally performing these services on a cost-recovery basis, and we cannot investigate what rights you have to register or use the domain name. So, we think it is reasonable for us to limit our liability in certain respects so that we may continue to offer our services in the interests of the whole internet community."

You might like to note the words on the end (and I quote): "in the interests of the whole internet community". There are about 5.1 million .uk registrations and probably over 4.5 million registrants but there are millions more in the whole internet community because it includes not just registrants but everyone who uses a .uk domain in the course of their internet usage.

Full Terms and Conditions here.

if they say no but you still want to take it further then you could contact your MP or do as I did contact your Local Trading Standards dept...they should take it up for you if your bought it as a consumer.

Do you want to add to this Jac?

Lee

You are quite right to point out that if someone isn't happy they have recourse to the regulatory bodies that are there to ensure fair play in all aspects of life and business. Though one would assume you look at the existing contract of registration (which you have agreed to) and decide if just agreeing to it binds you to it, or if it is unfair on you. But here's a thought. If one or one hundred people (or even 1,000) think it is unfair, does that mean that the other 5 million are naive or just stupid, or do they simply accept that for every service you wish to partake of in life there is a service level agreement or contract. Have you checked your own ISP's contract? You may find some of the terms and conditions unfair too like the bit where they usually say they can deactivate a website at their discretion.

But where does it end? Do you say the contract for Council Tax or Water or Electricity Supply or your digital TV is unfair because it doesn't match your own expectations? Or do you say this is a community and I should respect the consensus; and consensus is about majority acceptance not minority wish-lists.

Regards
James Conaghan

 

[robrob is verified member.]

There you go Hunkey...all good advice thanks to Acorn

Not sure if you are being sarky, but the surrender information is public on the nominet website.

To get there a user goes to Nominet main website.

Clicks 'registrants' section (for he/she/cat is one.)

Clicks 'Cancelling my domain name' as that is the bit 'I am interested in'.

Voila.

At what level do you want Nominet to hand hold ?

In the T&C you agree to on registration section 3.5 says nominet agrees to 'publishing procedures for you to renew the domain name and for recording a transfer, surrender or change of agent for the domain name.'

Which is what they have done in a easy to find manner!?