There are over 10 million .uk domain names under the management of Nominet and in the last quarter of 2016 alone there were a little over 400,000 new .uk registrations made.
The reserves of unique and available .uk domain names is getting smaller so it is hardly surprising that at some point businesses are going to come into conflict over who has the rights on a particular domain name.
I have just been through a domain name dispute (Case No: D00016994) with someone who had registered a very similar domain name and set up business selling competing services. This blog post is to provide some information to those that are facing the prospect of initiating a domain name dispute. If you are in this position, you should really read, a few times, the Nominet’s official DRS Policy and Procedure to get a detailed understanding of how the process works. Oh, DRS is ‘The Dispute Resolution Service’ for short.
So somehow you have discovered a person or business has registered a domain name and is using it in a way that negatively affects your business. The first thing you shouldn’t do is have a knee-jerk reaction!
Note that I am not a lawyer, or have any legal qualifications in Intellectual Property law. This post is mostly factual from my experience with the DRS process.
Whilst looking at online advertising opportunities to increase my companies profile I discovered in late January 2016 that someone had set-up business selling web design & development services in my geographic locality using the domain name tringwebdesignteam.co.uk. I was both horrified and confused as to why someone would ‘try this on’ when our domain and company names are identical apart from the word ‘team’. Note that in domain name disputes, things like dashes and TLD extensions (.co.uk, .uk, .com) are usually ignored.
Compose yourself, calm your anger and start to think logically – not what I did when I found out from a listing on Yell.com that someone had registered a domain name very similar to mine.
Start a domain name complaint
I immediately vented my anger by initiating the Nominet DRS. This is done via Nominet.uk’s online services portal, an area for managing your domain name(s). There is a whole section for managing complaints. It starts off with a form wizard to take you through the process of complaining about someone else’s use of a domain name. At the end of the wizard is a declaration to tick, confirming that you’ve read the policy and procedure and have included all the necessary information to support your case.
What is important here is confirming you’ve included all the evidence supporting your argument as there are only a few opportunities to get this evidence into the process further down the line, and if your complaint goes to expert decision, in front if an expert.
There are two tests as to whether a complainant has the rights to a domain name and these two tests will determine to some extent the type of evidence you’ll need to send.
Research, research & research…
The point about making sure you have explained yourself and included all the relevant information is vital to your success in the process if it moves on into the expert decision stage. Knowing exactly what information to include to support your argument depends a lot on your specific scenario. The best thing you can do to gather all the necessary information is to read through some of the previous decision notices that are published on Nominet’s website as they will give you some real world examples of how others have done this.
Taking tringwebdesignteam.co.uk as an example, I am a sole trader, trading under that name of “Tring Web Design” as registered with HMRC. I have completed tax returns for the last 7 years of trading. I hadn’t registered my trade mark with the Intellectual Property Office (IPO) nor had I secured my trading name at Companies House. What I now know is that I needed to obtain evidence of my ‘un-registered’ rights to the domain name, e.g. that because of my long history of trading and reputation, what kind evidence could I show them:
1. Wayback Machine Screenshots – I knew my site had been live since March 2009 so doing a search on the Wayback Machine allowed me to obtain screen shots of my website at key junctures throughout it’s history.
2. This one was a long shot – a call to HMRC asking for written confirmation of the date I started trading and the name I used for my t/as name. 40 minutes on hold to HMRC and 2 weeks later I got the letter. 2 weeks later after the initial complaint had been filed with Nominet. See below for methods to get additional and relevant evidence into your complaint.
3. My accounts/tax returns, proving I had been trading since 2009.
I spent hours reading through previous decisions trying to find those that were arguments over a name that had a suffix, misspellings etc.
The initial DRS domain name complaint
So you have started the process. What happens next is that your complaint gets forwarded to the other person (called the respondent) for him/her to reply back to. They can reply with evidence as well. After their reply you have another chance to send a response to their reply. This is key as you can squeeze in more evidence that you forgot to attach to your initial complaint.
After my initial complaint I soon realised that I had scant with my evidence. Screenshots ensued of his website and mine, directory listings and an awful lot of other evidence to try and show Nominet and the eventual expert that the other guy was being dis-honest in his actions.
After the round of communication between you and the respondent, if no resolution occurs then the process moves into mediation. See below for details about what mediation is, but essentially we didn’t come to a compromise that would let each other’s businesses and websites’ co-exist. I felt uncomfortable with the planned changes and couldn’t see them working for me so I called off the mediation process.
The third and mostly final stage in the process is taking the case to an expert who then makes a decision, based on all the evidence available, as to who gains the domain name, whether the respondent keeps it or if it gets transferred to the complainant. This stage costs the complainant £750+VAT to continue.
The expert is picked from Nominet’s pool of experts, which appears to consist mostly of Intellectual Property (IP) Lawyers. I got one who has been an IP lawyer in the fashion brand sector for the last 25 years so there was no doubting his experience.
The expert will look at the initial complaint, the replies and all the attached evidence. The expert will not look at any communications between the parties during mediation. You do have an opportunity however to get more evidence into the process at this stage via what’s called a non-standard submission, although whether the expert agrees to review this additional evidence is down to them. Their decision is based on an introductory paragraph that must be included in the submission detailing why it’s required.
After an agonising 21 days the expert made his decision in my favour. The respondent is given 11 days to decide if they wish to appeal the expert’s decision (and pay a whopping £3000+VAT for the appeal). The final expert decision of tringwebdesignteam.co.uk can be found here in PDF format.
What is Nominet?
Nominet is a private, not-for-profit UK based business established to oversee the .uk domain name infrastructure. Companies like Go Daddy, 123-reg, Heart Internet use it to register .uk domain names on behalf of their customers.
What is the Dispute Resolution Service?
The Dispute Resolution Service, or DRS for short, is a means to resolve conflicts over domain names by not involving the UK court system. It is a cost effective method (read: cheaper) for dealing with domain name conflicts and far quicker then instructing IP Lawyers to take the complaint through the court system.
Over the last 5 years, on average there were 720 domain name complaints made each year. In 2014, 55% of the complaints results in a domain transfer.
How does the DRS process work?
There are three key components to the DRS process. There is a very detailed procedure document that sets out the DRS process and if you find yourself in the DRS, it is worth reading this a few times to understand the process and how it works. It’s not heavy reading and isn’t full of legalese.
The Initial Complaint
This is the beginning of the process. Someone (called the complainant) starts the process with a complaint about someone else’s (referred to as the respondent) use of a domain name.
There are three opportunities at this stage to enter information into the process that shows you have rights to the domain name, and that in the hands of the respondent, their use of the domain name is an abusive one.
It’s important to ensure that as the complainant you use these opportunities well and establish your rights and why the registration is abusive clearly at the outset.
Tip: If you are trying to establish that you have right to the domain name, historical evidence proving these rights is key further down the process. Documents like confirmation of the date you started trading from HMRC, or Companies House incorporation documents, even Wayback Machine screengrabs showing a ‘live’ website attached to your domain name are very useful.
After the initial complaint, the respondent has the opportunity to send a reply back to the complainant outlining why they should own the domain name. The complainant has a further opportunity to add more information if needed to the complaint.
If the parties don’t agree on an outcome within this initial bout of emails, then the process moves into the mediation stage.
Domain Name Mediation
Mediation is becoming popular in the UK as a means of resolving conflict without involving costly court cases. The mechanism uses a person, the mediator, who sites between two parties who are at conflict with each other.
In the context of a DRS, the mediator talks to each party individually to understand the reasons behind the conflict to try and come up with a resolution, some means for each party to co-habit with each other. The mediator does this by telephone and email and corresponds between both the parties.
DRS Mediation is a confidential process, so any communications that occur within mediation stay in mediation and can’t be discussed outside of mediation. Either party can end mediation. If it is ended the process moves on to expert decision
To proceed with the expert decision, the complainant has to pay a fee of £750+VAT. Once this has been paid, Nominet select an expert from their pool of IP Lawyers.
The expert then has a set period of time to review the communications between both parties, e.g. the initial complaint, reply and response from above. No communications that occurred in mediation are disclosed to the expert.
This is why it’s imperative to get all the facts and necessary information into the initial complaint, which if you are the complainant gives you two opportunities to put your case forward, if you are the respondent, you only get one chance.
You can however, submit a “non-standard submission under paragraph 13b”. What this means is that you can, if you feel the need to, provide additional information direct to the expert in support of your case. This is discretionary though and the expert doesn’t have to look at this non-standard submission.
You will need to provide an initial paragraph in the non-standard submission that sets out why the submission is required. Nominet will then forward this first explanatory paragraph to the expert for consideration. An example of this is that you perhaps needed more time to gather evidence than the initial process allowed for because you had to rely on third parties.
The expert will communicate their final decision to Nominet, who will then forward the decision on to both parties. The losing party will receive some proforma invoices (£300 deposit and £2700 final invoice) to take the decision to an appeal if they wish to do so. An appeal involves three experts to look at the case.
The expert decision is then published on Nominet’s website. There is an excellent archive of all previous expert decisions that has a useful search feature allowing you to search through previous cases on a multitude of criteria. There is also some excellent guidance from Nominet on the DRS process as a whole.
If you are in the DRS process and you aren’t an IP lawyer I would strongly recommend looking at previous cases that might be similar to yours, and focus on the ones that were rejected as the reasons for rejection will be stated in the decision document and this is valuable information to help you build your case.