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

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 “seiko-shop.co.uk”. 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 “their” 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 “one of the UK’s leading Independent Retailers of Seiko watches”. Seiko argued this was an infringement of their trade marks and the domain name was an “abusive registration” 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 “abusive registration”.

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 “abusive registration”. This is not the same as the “bad faith” test found in the ICANN policy and hence the Nominet policy could apply to cases other than straightforward domain name piracy (or “cybersquatting”).
• Concepts deriving from United Kingdom and European trade mark law could properly be used in interpreting the policy.
• The domain name “seiko-shop.co.uk” did take unfair advantage of Seiko’s trademark. It amounted to a representation that this was “the” Seiko web site as opposed to being merely the web site of a retailer of Seiko watches (such as “we-sell-seiko-watches.co.uk”)

Comment
This is an important decision which would appear to provide even wider protection to established trademark owners than is found under the ICANN procedure for .com domain names, where “bad faith” must be shown. This decision is likely to continue a trend that is already very apparent, where trade mark owners seek to resolve domain name disputes through these procedures as an alternative to litigation. An interesting question is whether future Nominet decisions will all follow this approach. Nominet’s policy provides that “Appeal decisions will not have precedent value, but will be of persuasive value to Experts in future decisions”. Time will tell, but for the moment trademark owners are in a good position to take effective action if they find their names are used by others as a “.uk” domain name.

© Herbert Smith 2002

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