In a case destined to be read in the future only by lawyer geeks and those interested in the ‘access to justice’ camp, Mr Justice Mann ruled in March that Nominet’s Dispute Resolution Service and the relevant policy and procedures effectively prevented a party which had used the procedure from having the dispute heard again by the High Court. Paul A Harris looks a little more deeply into the judgment and its implications.
Those of you who have had disputes relating to domain names, will no doubt have appreciated the cheaper procedure available through Nominet's DRS policy, rather than have to litigate the matter in Court. As you will be aware, all disputes relating to '.co.uk' domain names must go via this route, whereas '.com' are dealt with WIPO's own dispute procedure. However, there are similarities between the two approaches.
In this particular case, the Appellant, Mr. Toth, had applied for 'www.emirates.co.uk' in 2002. It was not, however, until 2008 that the airline, Emirates, initiated Nominet's procedure.
Many of you reading this will be shaking your head wondering how on Earth Mr. Toth could possibly get the domain name registration in the first place, let alone how long it seems to have taken Emirates to wake up and find out he had it. However, where the main stem of a domain name can have one of several meanings (in this case, the geographical region), there is potential scope for arguing that first come first serve, is the correct approach.
Well, yes, all of you reading this article for one reason or another should be aware of the consequences of this particular case. First, for those of you who have not yet conducted any searches to find out whether there is somebody 'cyber-squatting' on a domain name with your company name or brand in it, like for example 'castle', then you may need to consider whether to follow the Nominet procedure, or bite the bullet and go directly to Court.
For those of you who may have needed the dispute resolution procedure generally, then read on.
Emirates successfully followed the Nominet procedure, but only after a lengthy battle. First, the Expert ruled in Mr Toth's favour that the domain name in the hands of Mr. Toth was not an 'abusive registration'. Essentially, that is a registration which takes unfair advantage of or is unfairly detrimental to any rights owned by a third party (particularly intellectual property rights, usually registered or unregistered trade-mark rights). Emirates then appealed, and the appeal panel ruled in favour of Emirates. Mr. Toth was ordered to transfer the domain name to Emirates.
Mr. Toth then commenced proceedings in the Patents County Court (a junior 'IP Court'), in which he sought various declarations, including what in essence was a review of the appeal panel's decision that the registration in Mr. Toth's hands was an abusive registration. That therefore meant that the judge hearing the case would be hearing the matter 'de novo,' in other words, starting all over right from the beginning. The judge in the PCC thought that Mr. Toth had a case and that he could seek such a declaration. This case was clearly swinging from one extreme to the other!
Emirates appealed, and the appeal went before the High Court judge who because of the nature of the case, sided with Emirates. It is, however, his view that what Nominet's procedure gave was a self-contained dispute resolution mechanism, which was closely regulated, cheap, quick and (so he considered) efficient. If the entire matter could be re-litigated before the High Court, the entire rationale for having such a procedure in place would be lost.
And this means…..?
What this essentially means is that cyber-squatters (although where the stem of the domain name is of a generic nature, as is the case with Mr. Toth, it would be wrong to lump them into the same category as those who deliberately register people's trade-marks or company names) cannot drag out the procedure ad infinitum, thus denying the legitimate owner of the domain name the opportunity of getting their hands on it. However, the flip side to that coin is that if there is some degree of risk that the person complaining about the ownership of a domain name might not get their hands on it quickly and cheaply if they follow the Nominet dispute procedure, then they may be better to argue the matter in Court. In Court the 'cyber-squatter's' actions and motivations would come under much closer scrutiny under cross-examination, which is not available following Nominet's procedure. That, however, comes at a greater cost.
That is not to say the 'rightful owner' can never get the domain name. It is simply they would have to bring a 'proper' action in Court for trade-mark infringement or passing off. The decision for you, is whether or not to do that instead of the cheaper procedure being available, perhaps because of the nature of the domain name (i.e., it is not obvious that it should be transferred, whatever the rights or wrongs of ownership or recognition).
Which route you should choose to have the domain name transferred to the 'rightful owner' will depend upon the degree of importance attached to it. Only you know the answer to that!
The full judgment in the case of Toth v Emirates & Anor  EWHC 517 (Ch) is available here.
Paul A Harris is an IP Partner at Gowlings UK LLP, and lectures in trade mark law on the Oxford University IP Diploma course.