In an interview with Out-Law.com, Nominet senior legal counsel Nick Wenban-Smith defended the internet registry's approach to handling domain name applications and resolving disputes over the use of trade marks. Nominet is the internet registry for '.uk' domain names.
Nominet receives more than 100,000 new domain name registration applications every month and accepts the applications by default. Trade mark owners that believe that domain names registered with Nominet infringe on their rights must either pursue infringement proceedings through the UK courts or engage with Nominet's dispute resolution service if they wish to obtain redress.
Under the scheme, Nominet can order domain name registrants to transfer ownership of their domain name to rights holders where the rights holders can show that they have rights in the name or in a similar mark and that the registered owner's registration or use of the domain name was abusive because it took unfair advantage of those rights.
ICANN, the Internet Corporation for Assigned Names and Numbers (ICANN), is currently overseeing the launch of a range of new generic 'top level' domains (gTLDs) to add to the existing list which includes '.com' and '.net' where many web addresses are rooted. ICANN wants to see an expanded list of domains, meaning almost any word could be registered as a domain.
To coincide with the new gTLDs regime, ICANN launched a trade mark clearinghouse which allows brand owners to pay to list their trade marks in an index. New gTLD registrars are obliged to refer to the index before allowing applications for new web addresses to be registered. Where there is a direct match, trade mark owners have the opportunity to themselves register the domain name. The system does not convey any rights on mark owners where proposed new domain names are merely similar to the marks they have listed with the clearinghouse.
However, Wenban-Smith said that Nominet has no plans to introduce a similar clearinghouse to allow trade mark owners to register their marks and weed out applications for new '.uk'-rooted domain names that infringe on those rights. He said operating a trade mark clearinghouse system would add cost and complexity to the process of resolving domain name disputes and that it would be wrong to automatically prevent registrations of domain names just because trade mark rights are engaged. He said other businesses may have rights in the same or similar marks and that there can also be legitimate use made of marks that are not abusive.
"Quite often the mischief is in the way domain names are used and it is only after they are registered that you find out whether the use falls into the 'abusive' category," Wenban-Smith said, rejecting the idea that it is possible to identify all abusive registrations at the registration stage.
Wenban-Smith instead said that "post-registration dispute resolution" was a more "proportionate way to work". He said the dispute resolution service Nominet operates is accessible and cheap to use and that it allows for an expert assessment to be made as to whether trade mark rights are engaged in individual cases and, where they are, whether domain name registrants actually have a legitimate right to use the mark.
In addition, he said Nominet provides monitoring services that allows trade mark owners to track domain name registrations that may impact on their brand.
Nominet's senior legal counsel said that the dispute resolution service allows for competing rights such as trade mark rights and freedom of expression rights to be balanced. He pointed specifically to a recent case involving Optical Express as highlighting the difficulties in weighting the competing rights.
In the case, dealt with through Nominet's dispute resolution service, an appeal panel rejected an Optical Express complaint about the 'opticalexpressruinedmylife.co.uk' (OERML) domain name. The company had argued that the use of the domain name by registrant Sasha Rodoy was abusive.
Optical Express claimed specifically that the so-called criticism site operated by Rodoy was set up and funded by rival business Optimax. Rodoy rejected the claims and said that the site is "used exclusively for the benefit of her campaign for regulation of the industry in which [Optical Express] is engaged."
The appeal panel said it was "unable to reach a finding that either the OERML website or [Sodoy] are covertly funded by Optimax" and said Optical Express should pursue such claims "in a forum more suitable for determining serious and disputed allegations of integrity and dishonesty against someone who on the face of matters appears to be pursuing a bona fide protest campaign".
Wenban-Smith said that the cases dealt with through Nominet's dispute resolution service are "fact sensitive" and that, as a consequence, it was important that people "weigh up the factors" involved. He said the process acts as a "check and balance" against both spurious complaints and abusive registrations.
Weighing factors such as trade mark rights and freedom of expression rights in disputes involving criticism sites is particularly difficult, Wenban-Smith said.
"Different experts can reasonably agree a different outcome based on how they weight the factors in each case," he said.