UK domain name dispute under Nominet's DRS
If your domain name dispute concerns a UK domain (e.g. .co.uk or .org.uk), then you may be able to recover the domain name under an arbitration procedure called the Dispute Resolution Service, also known as the DRS, set up and operated by the UK internet naming authority Nominet UK.
Proving your case under Nominet's DRS
To succeed with a Nominet UK DRS complaint, you have to prove the following:
First, that you have "rights" in a name which is identical or similar to the domain name. You can rely on unregistered trademarks as well as registered trademarks. Unregistered trademarks are also known as "common law rights" and are based on reputation and goodwill acquired in a particular name. Frequent pitfalls with Nominet UK DRS complaints include relying on registered trademarks which are in someone else's name (e.g. a parent or other related company). And failing to provide sufficient supporting information and evidence when relying on common law rights.
Second, that the domain name is an abusive registration. This can relate either to the circumstances in which the domain name was registered or in which it was used (unlike under the UDRP for .com and other gTLD domain names which requires registration and use in bad faith). Nominet's DRS policy lists non-exhaustive examples of factors which may be evidence that a domain name is (or is not) an abusive registration. Each case will be different but as a domain name solicitor we know that, whatever the circumstances, you have to provide sufficient detail and supporting documents to establish abusive registration. Otherwise the DRS proceeding will fail.
Appeals under Nominet's DRS
Unlike most other similar domain dispute schemes, Nominet provides an option for the losing party to appeal to a panel of three independent experts (obviously excluding the independent expert who decides the original case). The appeal panel proceeds by way of a rehearing ie it considers the matter afresh.
Nominet DRS case law
Though previous Nominet DRS decisions are not binding on a Nominent expert, they are persuasive - particularly Nominet appeal panel decisions. Familiarity with these can give a good indicator of whether a case is likely to succeed and obviously it helps to cite previous relevant / favourable decisions when making one's DRS submission..
Nominet DRS fees
There are no fees for filing a complaint or response under Nominet's DRS. Once the submissions are complete, Nominet conducts a telephone mediation. If that doesn't resolve the case, then the complainant can pay a fee of £750 plus VAT to obtain a decision by an independent expert (or £200 if you want a "summary decision" and the registrant hasn't filed a response). The appeal fee is £3000 plus VAT, payable by the appealing party. The filing fees don't include any legal costs involved in preparing complaints / responses / appeals.
Timescale for Nominet DRS complaints
The timescale for resolution of Nominet DRS cases tends to be six to eight weeks.
Outcome of Nominet DRS complaints
If you succeed with a Nominet DRS complainant, you can normally expect to obtain transfer of the domain name in dispute but you can't be awarded damages or costs.
Nominet's DRS versus court
An alternative to Nominet's DRS is to go to court based on a legal cause of action such as passing off or trade mark infringement. Nominet's DRS has the advantage that it is much quicker and cheaper than court. It also incorporates a mediation process which is very effective in resolving UK domain name disputes.
How Adlex Solicitors can help you with Nominet DRS disputes ...
... for a free initial chat and more information, contact Adam Taylor on +44 (0) 207 317 8404 or email.