Aston Merrygold, former member of boyband JLS, has been awarded the domain name www.astonmerrygold.co.uk following a complaint to Nominet’s Dispute Resolution Service (DRS). The decision marks the 10,000th domain dispute to pass through the DRS since it was established over 12 years ago.
The decision to award Mr. Merrygold the domain was made by independent legal expert Dr. Clive Trotman from Nominet’s DRS panel. 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. Despite the original registrant never using the domain to host any content, it was ruled that the registration was made in order to take unfair advantage of Mr. Merrygold’s rights.
The Merrygold case marks the 10,000th case since the DRS was established over 12 years ago to offer an efficient and transparent method of resolving disputes relating to .uk domain names, which are administered by Nominet. The DRS seeks to settle disputes through mediation and, where this is not possible, through an independent expert decision. Details on other recent, notable DRS decisions can be found below.
A new Chair of the DRS Expert Panel
As the milestone 10,000th case passes, Nominet is also announcing a new Chair of the Expert Panel that decides DRS outcomes. Existing Chair Tony Willoughby, who has been in the role since the DRS was founded, will be stepping down in January. Nick Gardner, who is currently a member of the DRS Expert Review Group that hears appeal cases, will step into the role. Gardner practised as a lawyer with leading international law firm Herbert Smith LLP in London for over 25 years, with 18 years as a partner in its intellectual property and technology practice.
Gardner said: “I’m proud to take over from Tony Willoughby as the new Chair of the Expert Panel. It’s a daunting task, but I’m looking forward to the challenge. The DRS has an excellent reputation for resolving domain name disputes and I hope to maintain that in the years ahead, working with the incredibly professional experts that make up the panel.”
DRS @ 10,000 disputes: recent cases
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 independent legal experts from a panel to make a full or summary decision.
Alongside astonmerrygold.co.uk, other notable recent cases include:
US fashion company J. Crew International complained about the domain jcrewmercantile.co.uk, registered in May by an individual in China. J. Crew applied for two trademark applications for J. Crew Mercantile long before this domain was registered, both of which generated considerable media speculation about the intended use of the brand. The respondent in this case claimed that the domain was not infringing trademarks and that its intended use was for a non-profit consulting website rather than selling clothes. The DRS expert found that J. Crew owned the relevant rights and ruled that jcrewmercantile.co.uk was an abusive registration. Since this is the third adverse decision against the same registrant in the past four months, there is now a presumption that all registrations made by this individual are abusive.
National Westminster Bank Plc made a complaint about natweest-online.co.uk, which had been registered by an individual based in Wyoming in the US. There was no response to the complaint from the registrant, leading to a summary decision which ruled the registration as abusive and ordered the domain to be transferred.
Car manufacturer Ford complained about the domain name newfordpartsonline.co.uk, which was registered to a business called Newford Parts Centre which sells original parts for old Ford vehicles. Ford complained that the domain was unfairly using its trademarked company name to increase trade. The website itself also featured the Ford logo and several images of Ford cars, despite the registrant not being officially connected to Ford in any way. The registrant argued that the domain name was legitimate, since it trades under the name Newford Parts Centre and is not in competition with Ford. However, a DRS expert ruled that the domain took unfair advantage of Ford’s rights and constituted an abusive registration.
These rulings, along with all others made over the last 12 years, are publicly available to view via Nominet’s website.
For more information
Please contact Cathy Donald / Victoria Marnoch at Brands2Life on 020 7592 1200 or by email at [email protected]