Phishing, The Force & Fashion: 2015 In .uk Domain Name Disputes
5th July 2016
Nominet, the company responsible for .UK, has today released an annual summary of domain name disputes brought before its Dispute Resolution Service (DRS) in 2015.
While the number of domains being disputed is low overall, Nominet’s award winning DRS allows .UK disputes to be settled efficiently and cost-effectively. The service provides a low cost alternative to court action or paying for legal advice, avoiding costs of up to £15k per complaint in 2015 – a possible £7,740,000 overall against the number of complaints made.
A total of 728 complaints were made to Nominet in 2015, just two more than were made in 2014, while the number of domain registrations increased by more than 118,000. However, the most striking feature was the 26% increase in the number of cases successfully mediated by Nominet staff.
Brands such as Aldi, Amazon, the BBC, Cash Converters, Google, Microsoft, McDonald’s and Urban Outfitters used the DRS in 2015. Other users of the service included a former British Parliamentary Under-Secretary of State, one of Scotland’s oldest archery clubs and a former top ranked British tennis player.
- bankofscoltland.co.uk and hallifaxbnk.co.uk
Both complaints were made by Bank of Scotland Plc, and whilst neither domain name resolved to an active website, they argued that these were classic examples of typo-squatting. The Complainant argued that it cannot be excluded that the Respondent uses the disputed domain names for fraudulent activity, e.g., by profiting off the likelihood of confusion from ‘phishing’ activities. Both domain names were awarded to Bank of Scotland in summary decisions.
The Complainant is the film and television production company founded by the filmmaker George Lucas. The Respondent sells fancy dress costumes, including Star Wars branded costumes, via its Jokers’ Masquerade website. An appeal panel considered that it was clear that the Respondent chose the starwars.co.uk domain name because of the “pulling power” of the trade mark. It is generally accepted that where a domain name is an unadorned reproduction of a Complainant’s trade mark, this would be enough to establish that confusion could or has occurred, even if a visitor to the site realised when they got there that the site was not connected with the Complainant. The appeal panel upheld an original finding and seven domain names were transferred to Lucasfilm Ltd., LLC.
- mango.co.uk and mango.uk
The Complainant, Consolidated Artists B.V., is a multinational business which designs, manufactures and markets clothing and accessories. They provided a number of trade marks for the term MANGO, which pre-dated the domain name registration. However, the Expert’s view was that the word ‘mango’ was generic and that the Complainant did not put forward sufficient or persuasive evidence to show that the Domain names were registered to target it or its Rights. The Expert found that the complaint had been brought in frustration at the Respondent’s unwillingness to sell mango.co.uk for a price it was willing to pay, rather than because of the merits of its position in terms of the Policy’s requirements.
This complaint was brought by the BBC, which is responsible for licence fee collection and enforcement. The domain name was registered under a WHOIS privacy service, and the end user was not known. The BBC argued that that there was a likelihood of confusion because the domain directed to a website offering television licences for £291, an amount exceeding the prescribed fee of £145.50. In some cases the fee was not passed on to the Complainant and the customers remained unlicensed after applying for and paying through the website. The Expert was satisfied that this made the domain name an Abusive registration.
There have been 92 full decisions made in cases filed in 2015 (an adjudication most commonly made where the respondent has defended the case). The most common industries were retail (18); automotive (15); internet, software and fashion (5).
The year saw cases brought by complainants from 40 different countries, led by the UK (542) followed by the US (55), Germany (28) and Italy (12). Respondents were even more widely dispersed, coming from 46 different countries. Again the UK leads with 553 respondents, with the US second (26) and China third with 23.
The average length of DRS cases is decreasing. Mediated cases took an average of 41 days to resolve in 2015, compared with 47 days in 2014 and 69 days in 2010. Expert decisions also took less time to complete in 2015. Experts are volunteers from the legal sector who support the DRS by giving their time and professional expertise to help resolve disputes when needed.
The majority of cases (94%) involved .co.uk domain names, with 4% of cases involving a .org.uk domain. The newer, shorter .uk domain names, which were launched in June 2014, appeared in 3.5% of cases in 2015, an increase on the 1.6% of cases from 2014.
Russell Haworth, Nominet’s Chief Executive says: “With thousands of .UK domain names registered each week, it’s inevitable that some might lead to a dispute. Our Dispute Resolution Service continues to be a valuable resource for many individuals and businesses, and while the number of disputes recorded is largely static, we are pleased to report that the time it takes to resolve these is on the decrease, demonstrating the speed and efficiency of the process. Much of the success can be attributed to our volunteer legal Experts who are a key part of the DRS and enable disputes to be settled in a cost effective way for many, who otherwise may not feel they are in a position to raise a complaint for fear of spiralling court and legal fees.”
Nick Wenban-Smith, Senior Legal Counsel at Nominet, comments: “To successfully make a complaint using our Dispute Resolution Service you must be able to prove the domain name, in the hands of the current registrant, is an abusive registration. It’s important that businesses and individuals are able to protect themselves, and consumers more widely, against any abuses, so resolving cases that could have led to customer trust or brand reputation issues is important to us. Whether you’re a family business, a great British institution or a global franchise phenomenon, Nominet’s DRS can help to protect your rights in the .UK namespace.”
Notes to Editor
The figures quoted in this report sit against a context of over 10 million .UK domain names on the register at the end of 2015.
Court costs avoided in 2015 are assuming court & legal fee savings of £15,000 per complaint that progresses into formal dispute resolution.