The High Court in the recent case of Toth v
Emirates (Nominet UK as intervener) struck out an appeal
relating to an abusive domain name registration. Cassandra McCarthy
of our Commercial Disputes Team looks at why this is positive news
for trade mark owners.
Trade mark and brand owners will welcome the Toth decision, as it
closes the potential floodgates on litigation regarding adverse
Nominet Dispute Resolution Service (DRS) decisions.
Background to the case
Michael Toth had a portfolio of domain names including
china.co.uk; maldives.co.uk, emirates.co.uk and emirates.eu.
Emirates first objected to Mr Toth's registration of
emirates.eu and was successful in getting the domain name
transferred to them. Emirates then brought a complaint under
Nominet's DRS procedure to recover emirates.co.uk.
The DRS panel, on appeal, was satisfied that Emirates had
demonstrated, under the Nominet DRS policy, that it had the right
in the name (Emirates) which was identical or similar to the
disputed domain name and that the registration was abusive, in that
it took an unfair advantage of or was unfairly detrimental to
Emirates' rights. Accordingly, Mr Toth's registration was
deemed to be an abusive registration and was transferred to
Emirates.
Following the above decision by the DRS panel, Mr Toth appealed to
the court for, amongst other things, a declaration that his
registration was not abusive within the meaning of the Nominet
Policy.
Decision about the court's jurisdiction over
Nominet's policies
The High Court had to consider Nominet's policies and
procedures, specifically where any reference was made to the court,
for example "the operation of the DRS will not prevent either
Complainant or Respondent from submitting the dispute to a court of
competent jurisdiction."
The High Court, disagreeing with the Patents County Court, held
that the policies did not allow for a party to ask the court to
review the expert's decision. A party could only seek redress
from the court if it had an action for passing off or trade mark
infringement or there was a breach of contract claim against
Nominet.
By entering into Nominet's contract a registrant submits
themselves to their rules and procedures. If the court were able to
become involved in such decisions, this would increase costs and
slow down the resolution process. This would defy the objective of
the DRS procedure, which is intended to be an inexpensive and a
quick resolution mechanism.
What this means for brand owners
The Toth case shows that the decision whether or not a
registration is abusive remains with the DRS panel. The court will
not allow DRS decisions to be appealed save in limited
circumstances.
Trademark/brand owners can, therefore, still use the DRS procedure
as a quick and inexpensive way of recovering abusive domain name
registrations, which could without action damage their
brand/trademarks.
This document is provided for information purposes only and
does not constitute legal advice. Professional legal advice should
be obtained before taking or refraining from taking any action as a
result of the contents of this document.
United Kingdom: Who Took My Name? Good News For Trade Mark Owners
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