Some domain name disputes are best left to the courts

Nominet, the registry for all domain names ending .uk, offers a fast, cost-efficient dispute resolution service. But some disputes are better left to the courts, a point made by a Nominet expert last month in refusing to decide a case that he deemed too complex.

Nominet offers its Dispute Resolution Service (DRS) for parties disputing the ownership of domain names. Nominet explains on its web site:

"The DRS does not replace the role of the Courts, it is however open to all and the decisions are binding on the parties involved. As a result of a DRS decision, Nominet has the power to transfer, cancel or suspend the Domain Name registration."

When US adhesive seller Glue Dots International found that a rival, Fantas-Tak Limited, had registered the domain gluedots.co.uk it opted for Nominet's DRS. That meant persuading the appointed DRS expert, Nick Gardner, that it held existing rights in the domain.

Glue Dots therefore provided evidence of a UK trademark for a device and the words "GLUE DOTS", which had been registered in May 2000, and stated that it was applying for a similar Community trade mark. It showed that it had been in business in the US since 1996, and that it owned the web sites known as gluedots.com, gluedots.net and gluedots.org.

Glue Dots also provided a newspaper cutting as evidence of a February 2000 press release announcing its intention to market its product (dots of glue on a roll) in Europe.

Glue Dots complained that Fantas-Tak had no rights to the trade mark GLUE DOTS and therefore no rights to the domain name.

For its part, Fantas-Tak argued that it had registered the domain on March 2000, prior to the trade mark being registered.

Fantas-Tak also argued that "GLUE DOTS" is a generic term, and one that it had been using for many years prior to Glue Dots' trade mark application in the UK. As a result the company said it was also challenging Glue Dot's Community Trade Mark application on the grounds that the term was generic.

Furthermore, said Fantas-Tak, if a browser accessed the disputed domain it is taken straight to Fantas-Tak's site, and no confusion with Glue Dots is caused.

The expert decided that Glue Dots did have rights in a name similar to the disputed domain, by virtue of its trade mark, and therefore the first condition for a successful challenge was met.

However, the expert was unable to make a ruling as to whether Fantas-Tak had made an abusive registration. To make a decision Gardner had to decide whether the term "Glue Dots" was generic, and commented:

"Disentangling this type of evidence is notoriously difficult even in large scale litigation. Trying to disentangle it in the context of the Policy and this dispute is impossible."

Gardner concluded:

"In particular the Expert takes the view that this Policy, insofar as it has the potential to result in the compulsory transfer of a domain name from one party to another, should only be applied in clear cases. Where, as here, there are significant conflicts of fact and evidence in relation to a domain name which may (if the Respondent's contentions are correct) be generic, the Policy should be exercised with caution. Of course, if the Complainant is correct, the Domain Name has acquired secondary meaning and is not generic and the Respondent has been attempting to trade off the Complainant's reputation by adopting the Domain Name. That is a matter the Complainant will have to pursue elsewhere - it cannot be resolved within the framework of the Policy."