Nominet changes have little effect on overall cost of domain name disputes

On 29 July 2008, Nominet introduced changes to its Dispute Resolution Service ("DRS") policy and procedure, following two public consultations. Unfortunately, the changes do not produce solutions concerning the cost of using the procedure.

Key Changes

One of the main changes allows undisputed cases to be settled by way of a “summary judgment” at a reduced fee.

Previously, in order to get a binding expert’s decision, complainants had to pay a fee of £750 irrespective of whether or not a response to the complaint had been filed.

It is estimated that approximately 52% of complaints are not opposed.

The change gives a complainant the opportunity to have unopposed complaints dealt with by way of summary judgment at a reduced fee of £200.

If the complainant opts for summary judgment, the expert will not be required to give a full decision but simply to determine whether rights in the domain name have been established and whether registration of the domain name is an abusive registration.

Whilst the availability of summary judgment does result in a cost saving for complainants in terms of the official fee for obtaining a decision, it does not reduce the time and money that must be spent in preparing the complaint.

Even if it is unlikely that a response to the complaint will be filed, the complainant must still file a full complaint to (a) prove ownership of their rights and (b) to establish there has been abusive registration. Unless the complainant passes both of these hurdles, the complaint will be unsuccessful.

There are a number of other changes which have been introduced, which include:

The new DRS Policy provides that rights may now exist in descriptive terms that have acquired a secondary meaning.
The new DRS Policy clarifies that use or threatened use of a name in a way which has or is likely to cause confusion may amount to abusive registration. This change aligns the Policy with current UK trade mark law.
The new DRS Policy also clarifies that certain activities do not constitute abusive registration. For example, trading in domain names and using domain names to link to parking pages to earn revenue via sponsored advertising links are not in themselves evidence of an abusive registration. It will, therefore, be important for complainants to provide evidence that on the particular facts such activities amount to an abusive registration.

Summary

Whilst the option of having a summary judgment where a complaint has been unopposed will undoubtedly lead to some cost savings, the significant costs incurred in putting together a complaint will not be affected.

In fact, following some of the other changes that have been made, it may be even more difficult for complainants to prove abusive registration and it will be more important than ever to spend time and money gathering together evidence before making a complaint.

Consistent with our policy when giving comment and advice on a non-specific basis, we cannot assume legal responsibility for the
accuracy of any particular statement. In the case of specific problems we recommend that professional advice be sought.

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