Nominet: Boy bands, Motorbikes and Parish Councillors: 2014 in .UK Domain Disputes

Nominet logo726 complaints handled and £7.5m in legal costs saved by Nominet’s award-winning Dispute Resolution Service in 2014

[news release] Nominet, the company behind .UK, has today released the annual summary of domain name disputes bought before its Dispute Resolution Service (DRS). A total of 726 complaints were made, up 8% on 2013. However, the year also saw a 51% increase in the number of cases where people were able to come to an agreement themselves and with the help of a Nominet mediator, without needing to appoint an expert to make the decision. 55% of cases resulted in the domain name being transferred to the person making the complaint. For the first time since the DRS was established in 2001, no decisions were appealed.

Brands such as John Lewis, Post Office, Vodafone, NatWest, BT, and National Express used the DRS in 2014. Interesting cases included:

  • The Cabinet Office and DVLA complained about an official-looking website charging people a premium for driving licences. The domain was transferred to them and a prosecution for conspiracy to defraud the public is in progress. Similarly, HMRC complained that and were being used to confuse consumers and charge for services they provided for free. These domains were also transferred to the complainant.
  • ALDI complained that a man was using the domain for his own online supermarket. Despite the respondent maintaining that the site was an expression of his genuine love for ALDI, the DRS expert found the registration was abusive and the domain was transferred.
  • The respondent had registered the domain name in 2000. The complainant tried unsuccessfully to buy the domain in 2010 and 2011, and then registered the trademark CHEMIST4U in 2014. The DRS expert ruled this was a case of “Reverse Domain Name Hijacking” – where the complainant tries to use the DRS in bad faith to deprive a respondent of a domain name – and the domain was not transferred.
  • Aston Merrygold, a former member of boy band JLS, was transferred the domain after the DRS expert ruled the registration was made to take unfair advantage of his rights. The original registrant of the domain first registered it the day after JLS’ appearance in the X Factor final in December 2008, along with similar domain names for the other members of the group.
  • The owner of Sussex Motorcycles complained that a rival motorcycle business had registered the domain name to pass itself off as his. Despite the name being a generic description of a motorcycle business based in Sussex, the DRS expert found it had acquired a distinctive secondary meaning locally and the domain was transferred.
  • Ufford Parish Council complained about an ex-parish councillor who originally registered the domain on behalf of the Council, then refused to transfer it back after resigning. The DRS expert ruled the registration was likely to confuse residents and the domain was transferred.

Based on a conservative estimate of £15,000 per dispute in court costs and fees, the 500 cases that progressed to formal dispute resolution in 2014 add up to an estimated £7.5 million in avoided costs.

In 2014 there were 98 full decisions (where the respondent has defended the case) made. The most common industries were retail (18); automotive (7); banking and finance (6); food, beverages and restaurants (6); and internet (6).

The year saw cases bought by complainants from 35 different countries, led by the UK (549) followed by the US (64), Germany (15) and Lichtenstein (13). Respondents were even more widely dispersed, coming from 51 different countries. Again the UK leads with 545 respondents, but Saint Kitts and Nevis is in second place with 26.

Russell Haworth, Nominet’s Chief Executive, comments, “2014 was a landmark year for Nominet’s Dispute Resolution Service, as we marked its 10,000th case in October. To date, the DRS has saved an estimated £82 million in court costs. Whether you’re a supermarket giant, a Sussex motorcycle business, or a pop star embarking on a solo career, you can be confident that .UK will provide a safe, trusted platform to do business and promote your brand.”

Nick Wenban-Smith, Nominet’s Senior Legal Counsel, adds, “While we like to think that the ‘wild west’ days of the internet are over, it’s still important that we act to protect consumers and uphold intellectual property rights in the .UK namespace. The DVLA case is part of a wider effort to stop scammers imitating government websites, which can charge innocent victims for free government services. On a lighter note, ‘ilovealdi’ was our first case in which a party used an emoticon in their submission. The respondent’s ‘sad face’, however, doesn’t appear to have swayed the expert making the decision.”

Nominet established the DRS in 2001 to offer an efficient, transparent method of resolving disputes relating to .UK domain names. The DRS seeks to settle disputes through mediation and, where this is not possible, through an independent expert decision.

To make a complaint through the DRS, you need to have rights (such as a trade mark) in a name which is the same as or similar to the domain name you are concerned about. The DRS can usually provide a quicker and cheaper resolution to disputes than going through the courts as this service is based on free, confidential mediation. In the event of deadlock, complainants can pay to appoint an independent expert from a panel to make a full or summary decision. All decisions are made public via Nominet’s website.

This Nominet news release was sourced from: