HORSES, BICYCLES & BALANCE BOARDS – 2016 IN .UK DOMAIN NAME DISPUTES
22nd June 2017
Nominet, the company responsible for running the .UK namespace, has today released the 2016 annual summary of domain name disputes brought before its award-winning Dispute Resolution Service (DRS), which allows .UK disputes to be settled efficiently and cost-effectively.
A total of 703 complaints relating to 785 domains were made in 2016 – 25 fewer complaints than were made in 2015. Over half of the complaints resulted in a domain transfer, which was the same as the previous year (53%). 2016 also saw a 10% increase in the number of summary decisions made by DRS independent Experts, who support the DRS by giving their time and professional expertise to help resolve disputes when needed.
Brands such as Facebook Inc, O2 Worldwide, Jaguar Land Rover Limited, Virgin Enterprises Limited, JD Sports Fashion Plc and Anne Summers Ltd used the DRS in 2016.
Other users of the service included Brighton & Hove Albion Football Club, The National Council For Voluntary Organisations, the National Council For The Training Of Journalists, Wembley Primary School and PAGE, a campaign against gravel extraction in South Oxfordshire.
The Complainant, Jockey Club Racecourses Limited, is the owner of the registered UK trade mark FESTIVAL/THE FESTIVAL for racing and organisation of race meetings. They hold a portfolio of race courses including Cheltenham and Aintree. The Respondent provides a comparison of odds, breaking news, statistics, analysis, racing cards and free tips in relation to horse racing including the Cheltenham Festival. In the view of the Expert, consumers are unable to tell if the site is connected with the Complainant or not, and that the Respondent took unfair advantage of the Complainant’s rights in registering and using the domain name. The decision to transfer the domain name was upheld in an appeal.
The dispute was between two trade associations in the bicycle industry. The Complainant was The Bicycle Association of Great Britain Limited, and the end user of the domain name was a company called National Association of Cycle Traders Limited that uses the name Association of Cycle Traders (ACT). The domain name was registered in the name of a privacy provider, but other parties were involved. An appeal panel upheld a decision to award the transfer of the domain name, and was satisfied that whatever the motives of either the Respondent or the ACT, the ACT’s use of the Domain Name was likely to cause confusion.
The Complainant was the registered charity British Red Cross. They argued that the unauthorised use of the Red Cross name is a criminal offence under the Geneva Conventions Act 1957. No Response was submitted, and a Summary Decision awarded the transfer of the domain name to the Complainant.
swegway.co.uk & swegwayboards.co.uk
The Complainant in these two cases was Segway Inc, who introduced their electric, two-wheeled, self-balancing transportation device in 2001. There were two separate Respondents who were using the domain names to sell other ‘balance boards’. One Expert agreed that the term “Swegway” was taking unfair advantage of the Complainant’s rights in the name Segway. The Expert in the second case did not share that view, and agreed that the term “Swegway” has become a broad generic term describing personal mobility devices. These cases highlight that each case is decided on its own merit, and that the Experts are free to use their own interpretation of the facts of a case to make their decision.
- In 2016 there were 5 appeals, with 4 original decisions being upheld. One appeal overturned a No Action decision to a Transfer decision.
- The most common industries were automotive and Internet (14 each); retail (12); software and sports (7 and 6 respectively).
- The year saw cases brought by complainants from 28 different countries, led by the UK (570) followed by the US (46), France (13) and Germany (10). Respondents were widely dispersed, coming from 35 different countries. Again, the UK leads with 570 respondents, with the US second (22) and St Kitts and Nevis third (16).
- Mediated cases by Nominet took an average of 47 days to resolve in 2016, compared with 41 days in 2015, and 47 days in 2014. Cases being resolved by an Expert decision also took slightly longer to close than in 2015.
- The majority of cases (91%) involved .co.uk domain names, with 4% of cases involving a .org.uk domain. The .uk domain names, launched in June 2014, made up 4% of cases in 2016, an increase on the 3.5% in 2015 and 1.6% from 2014.
Russell Haworth, Nominet’s Chief Executive says: “While only a small proportion of domain names overall – 0.0074% of the .UK register – resulted in a dispute in 2016, the DRS continues to provide an efficient and cost effective way of resolving those that do arise. In fact, we should not underestimate the value of the service as £7million could have been saved on legal fees last year alone, thanks to the efficient process in place and the many volunteer Experts who generously offer their time and expertise.”
Nick Wenban-Smith, General Counsel at Nominet comments: “Almost 12,000 Complaints have been made to the DRS since 2001 with more than half of these resolved between the parties directly, through mediation, or an Expert. With millions of small businesses and individuals now in possession of a domain, it’s also important to bear in mind that the DRS recognises a wider class of rights than simply trade marks. So, if someone has the rights in a name which is the same as or similar to a .UK domain name they are concerned about and they can provide proof that the domain name has been registered or used in a manner that has or might cause unfair detriment, then the DRS is a good first port of call to address those concerns.”
- The figures quoted in this report sit against a context of over 10 million .UK domain names on the register at the end of 2016.
- Court costs avoided are assuming court & legal fee savings of £15,000 per complaint that progresses into formal dispute resolution.
- 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. You also need to prove that the domain name has been registered or used in a manner that has or might cause you unfair detriment.
- 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 binding adjudication. All decisions are made public via Nominet’s website.