First Nominet Appeal Decision Strengthens Trademark Owners Rights in .uk Domain Names

Author:Ms Naomi Gross
Profession:Herbert Smith
 
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In the first appeal decision

under the new procedure for resolving disputes about .uk domain names, an

appeal panel appointed by Nominet UK (the organisation responsible for

administering .uk domain names) decided that Seiko, the well known watch

manufacturer, should take possession of ìseiko-shop.co.ukî. This was

despite the fact that the existing owner of the domain name, Designer

Time, was using the domain name for a web site which was selling genuine

Seiko watches.

Background

Last year, Nominet - the Registry for .uk

Internet Domain Names - set up a new dispute resolution service to deal

with the disputes that arise when one person thinks someone else has

registered ìtheirî name as a domain name. The policy was largely modelled

upon a similar policy that had been introduced a couple of years earlier

by ICANN (the body that administers .com domain names). These policies

offer a fast and cheap way of determining this type of dispute as an

alternative to litigation. The ICANN policy has been very successful, with

thousands of disputes being resolved by this method. One of the

refinements that Nominet introduced in its policy was the ability for a

dis-satisfied party to appeal against a decision. The first such decision

has now been published and it raises a number of interesting points. The

full text of the decision can be found at www.nominet.org.uk/drs/appeals.html

The facts

The underlying facts were straightforward. The

domain name seiko-shops.co.uk had been registered in 2000 by Designer Time

who traded via the web site as ìone of the UK's leading Independent

Retailers of Seiko watchesî. Seiko argued this was an infringement of

their trade marks and the domain name was an ìabusive registrationî in

terms of Nominet's policy. Designer Time argued that as they were

legitimately supplied by watches from Seiko, and were selling only those

watches via the web site, their use was not infringing any of Seiko's

trade marks and the domain name was not an ìabusive registrationî.

The Decision of the Appeal Panel

In an initial decision a

Nominet appointed expert had held that the registration was an abusive

registration and had ordered it transferred to Seiko. Wanderweb appealed.

Nominet appointed an appeal panel of three experts to decide the appeal.

In its decision the appeal panel upheld the original decision. Key factors

were:

Nominet's policy is drafted in terms of ìabusive registrationî. This

is not the same as the ìbad faithî test...

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