Nominet, the .UK registry, released the 2017 annual summary of domain name disputes brought before its Dispute Resolution Service (DRS).
A total of 712 complaints relating to 783 domains, which represents just 0.0065% of the domain names on the register, were made in 2017. Over half of the complaints (55%) in 2017 resulted in a domain transfer. By comparison, there were 703 complaints in 2016, 53% of which resulted in a domain transfer.
The year also saw an increase to 15% in the number of disputes resolved with the domain name being voluntarily transferred to the Complainant by the Respondent upon receipt of the complaint. In 2016, 10% of complaints were resolved in this way.
Brands such as Jaguar Land Rover, Clydesdale Bank Plc, Virgin Enterprises Limited, Moncler S.p.A., “Dr. Martens” International Trading GmbH and the Sony Corporation used the DRS in 2017.
Other users of the service included St Neots Town Council, the fashion designer Philipp Plein, The Commissioners For HM Revenue And Customs, The Secretary Of State For Health and Puddy Cats Cattery in Maplethorpe.
The Complainant, Gumtree.com Limited, is a wholly owned subsidiary of eBay Inc. It operates an online classified advertisement website, and has registered the trade mark “GUMTREE”. The Respondent argued that GUNTREE has been derived from the artistic concept of a tree made of guns or an artistic gun made from wood. GUNTREE advertises weapons to a specific market and therefore, does not offer the same services as the Complainant. The independent Expert agreed with the Complainant’s claim that there is an overlap between the two sites which is likely to confuse Internet users. Domain transferred.
The Complainant was Victoria’s Secret, an American designer and manufacturer of women’s lingerie and beauty products. The Respondent was a beauty therapist, operating a salon in Mayfair, London. The Respondent claimed not to have known about the Victoria’s Secret brand at the time when the Domain Name was registered. In the view of the Expert, “this is not a credible claim, particularly taking into account that the Respondent operates in field of beauty services”. Domain Transferred.
The complaint was brought by Clydesdale Bank PLC (Clydesdale and Yorkshire Bank), after they found that the domain name had been registered by someone who was asking for almost £100,000 in return for transferring the registration. The Expert agreed with the Complainant: that on the balance of probabilities the Respondent noted the Complainant’s trade mark application and purposefully registered the domain name in order to then sell it specifically to the Complainant at a later date. Domain Transferred.
The Complainant was Dignity Funerals Ltd, and the Respondent was an individual who had previously entered into a coexistence agreement with the Complainant’s predecessors in title, providing financial and insurance services through his companies. The Expert stated “it does not appear the Respondent is doing anything that is confusing Internet users”, and that “dignity.co.uk shall remain with the Respondent”. The Complainant appealed against this decision, but a panel of three members of the DRS Experts’ Review Group dismissed the appeal, whilst upholding a finding of ‘Reverse Domain Name Hijacking’ – using the DRS in bad faith.
- In 2017 there were three appeals. Two appeals upheld original No Action findings. In the third Appeal case, the Appeal Panel agreed to combined two cases together for a review and two domain names were returned to the original Registrant.
- The most common industries were Automotive (9) Electronics and Fashion (8 respectively), Retail (7) and Banking & Finance (6)
- The year saw cases bought by complainants from 29 different countries, led by the UK (553) followed by the US (42), Germany (27) and France (20). Respondents came from 34 different countries. Again, the UK leads with 598 respondents, with the US second (17) and China third with 15
- The overall average length of time DRS cases take from being filed to being closed was 57 days
- Mediated cases took an average of 56 days to resolve in 2017 compared with 47 days in 2016. Cases being resolved by a Summary Expert decision took the same time that they did in 2016 (62 days), whilst Full Decision cases took on average 4 days less.
- The majority of cases (87.5%) involved .co.uk domains, 6% were .org.uk or .uk domains and 0.5% were .me.uk
- Court costs avoided in 2017 were almost £7 million – assuming court and legal fee savings of £15k per complaint that progresses into formal dispute resolution
Russell Haworth, Nominet’s Chief Executive says: “Thanks to the efficient DRS processes in place and the many Experts who generously offer their time and expertise, we can see in the numbers that the DRS is continuing to prove a useful tool for .UK customers. A steady increase in the number of .uk second level domain names being disputed year on year – almost doubling since 2015 – also reflects how the shorter domain is increasing in popularity and importance for individuals and businesses.
Nick Wenban-Smith, General Counsel at Nominet comments: “The increase in disputes relating to .uk second level domains is an interesting point. The Right of Registration that some .co.uk Registrants hold over the corresponding .uk domain name comes to an end on 10 June 2019. In the next two years this could lead to a further increase in the number of .uk domain names being subject to disputes as more and more potentially desirable names are made available to be registered on a first-come first-served basis. To avoid such a dispute, it’s important for .co.uk owners to review their options and act sooner rather than later.”
- The figures quoted in this report sit against a context of over 12 million .UK domain names on the register at the end of 2017.
- Court costs avoided are assuming court & legal fee savings of £15,000 per complaint that progresses into formal dispute resolution.
- Nominet established the DRS in 2001 to offer an efficient, transparent method of resolving disputes relating to .UK domain names. The DRS seeks to settle disputes through mediation and, where this is not possible, through an independent expert decision.
- To make a complaint through the DRS, you need to have rights (such as a trade mark) in a name which is the same as or similar to the domain name you are concerned about. You also need to prove that the domain name has been registered or used in a manner that has or might cause you unfair detriment.
- The DRS can usually provide a quicker and cheaper resolution to disputes than going through the courts as this service is based on free, confidential mediation. In the event of deadlock, complainants can pay to appoint an independent expert from a panel to make a binding adjudication. All decisions are made public via Nominet’s website.