When is ‘cybersquatting’ legal? Insights from recent Nominet decisions

Nominet is the UK organisation with responsibility for administering the domain name system in the UK and has a well-developed and respected domain name dispute resolution process (DRS).  In the first 6 months of this year, Nominet experts have issued a total of 107 decisions through its DRS.  The decisions only issue though, if either party requests and they can only be requested after the mediation stage, which resolves a lot of the disputes.  So, the figure of 107 is likely to represent a small proportion of the actual complaints filed.

Of the 107 decisions, only sixteen issued in favour of the registrant- about 15%.  The cases that fail mostly do so because the complainant doesn’t demonstrate that the domain name, in the hands of the respondent, is abusive. Domain disputes don’t succeed simply because the complainant has rights to the name in question, or something closely similar. This hurdle is cleared with ease by most complainants, who may then struggle to put forward a coherent and well-reasoned case on why the respondent has acted in an abusive manner when registering or acquiring the domain.

Nominet’s detailed guidelines https://www.nominet.uk/domain-support/uk-domain-disputes/ give extensive information on what is or is not considered abusive, but from reviewing the recent decisions, it seems the key conceptual issue complainants wrestle with, is that trading in domain names is perfectly legitimate and that this can apply even if the domain name is identical to your brand.

Two cases where this is amply demonstrated and, in fact, led to a finding of reverse domain name hijacking against the complainants, are cases D00021240 and D00021075.  Both cases were submitted against Garth Piesse, a New Zealand-based domain buyer/seller.  In both cases, Mr Piesse had acquired the disputed names via the ‘drop-catch’ method i.e. he noted the domains were on a list about to expire and moved to acquire them quickly on lapse because he thought the names were likely to be attractive to traders in the future.  Both domains – matesrates.co.uk and splitpay.co.uk were quite descriptive and it was always going to be difficult for the complainants to make out an argument that Mr Piesse knew of their rights in the names in question, due to the descriptiveness of the terms and due to the fact that the respondent was located in New Zealand, while the complainants were running small-scale businesses in the UK.

It seems, in fact, that these cases were brought by the complainants simply to try to persuade Mr Piesse to part with the domains for less than their advertised sale prices of $2,500/$3,000. Had they sought legal advice or reviewed the DRS policy and guidelines properly, though, and looked at previous cases contested by Mr Piesse, they would have realised their cases stood absolutely no chance of success. It was this factor which led the Nominet expert in each case to decide that the complaints were brought in bad faith in an attempt to deprive Mr Piesse of the domain names, and as these decisions are publicly available and searchable, these findings against the complainants could well be damaging to them in the future.

For both the complainants in these cases, the best advice would have been to choose another domain.  With the plethora of registries now available, there is absolutely no need to become fixated on acquiring a .com or .co.uk/UK domain name. There are so many other options out there which might actually work better for your business in the longer term.

Share to...
  •  
  •  
  •  
  •  
  •  
  •  
  •  
  •  
  •  

Posted on: 10th July 2019