…From insurance for pets and people to big brands, the .UK Dispute Resolution Service has it covered…
Nominet, responsible for running the .UK namespace for 25 years, has today released its summary of domain name disputes brought before its Dispute Resolution Service (DRS) during 2021.
The number of Complaints was at a record low since the DRS began in 2001, with just 548 Complaints filed in 2021. The total number of domain names related to those DRS Complaints in 2021 was 623 domains, representing just 0.0056% of the register. Under half of all complaints (43%) in 2021 resulted in a domain transfer, in line with the steady annual decline in the number of transfers in previous years of 46% in 2020, 47% in 2019 and 49% in 2018.
The DRS allows .UK disputes to be settled efficiently and cost-effectively. As a public benefit company, Nominet does not profit from running the DRS, but supports its administration and provides mediation, while all fees for decisions are paid to the Experts for their time adjudicating disputes.
In 2021 the DRS was used by brands such as Bosch, Petplan UK, Nokia, the Admiral Insurance Group, Tesco and Taylor Wimpey, and also parties such as The University of Westminster, the Little Caesars pizza chain, the glassmaker Bormiolo Luigi, and the Gainsborough Theatre Company.
2021 case examples:
A complaint was filed by FF Bequest Limited, who provide life insurance services using the trading name “Bequest”. The Respondent claimed that their web site was live before the complainant’s trade mark was registered, and the initial Expert stated…”In broad terms, if an entity, such as the Complainant, wishes to trade under a generic, dictionary term that is related directly to the goods or services being offered, then they should not be surprised if an unrelated third party also chooses to trade under the same generic, dictionary term.” The Complainant appealed, but the Appeal Panel upheld the original No Action finding.
The Complainant was Chanel Ltd, the luxury brand specialising in producing premium fashion, beauty and fragrance products. The Domain Name resolved to an escort website which the Complainant argued conflicts with its premium brand. The Complainant claimed that the false association with its brand was likely to damage its reputation and bring the Chanel name into disrepute. The Respondent failed to submit a response, and the Expert stated: “By reproducing the Complainant’s distinctive mark in the Domain Name, the Respondent’s website suggests that it is affiliated with or endorsed by the Complainant. Considering the nature of the content found at the Domain Name, such an association is likely to tarnish the Complainant’s trade mark.”
The Complainant is a well-known German car manufacturer founded in 1931 that specialises in producing and selling high performance cars under its name “Porsche”, along with the spares and components for those cars, and branded accessories such as clothing. The Complainant claimed that certain items being sold by the Respondent were not authentic, whereas the Respondent stated that they had never knowingly sold counterfeit products, and had been doing business using the name PorscheShop for a number of years. The Expert awarded the transfer of the domain name, and wrote: “…these instances are, in the Expert’s view, sufficient to have confused those accessing the Website that the goods being sold there are either the Complainant’s genuine goods or endorsed by the Complaint for sale, which neither were.”
The Complainant was Upfield Europe B.V., who own various plant-based food brands, including the Flora spread. The Complainant claimed that there is no reasonable justification as to why the Respondent would acquire, or use, a domain name solely comprised of the term “Flora”. The Respondent had had control of the domain name for over 20 years and had previously traded as “Flora Products International”, supplying floristry wholesalers in the UK and other countries. Whilst the Expert acknowledges that “flora” can be a generic term associated with horticulture, they found that as a result of the advertising and marketing activity for the Flora mark and the success of the Flora product, the term has transcended this generic or descriptive meaning, and that it has come to be associated with the Complainant’s products in the minds of a significant proportion of the UK public.
The original Transfer decision was appealed by the Respondent, and the Appeal panel and overturned the Transfer decision, stating: “… in all the circumstances the Panel considers that on the balance of probabilities the available evidence does not support a finding that the Respondent’s original registration of flora.co.uk took unfair advantage of or was unfairly detrimental to the Complainants’ Rights.”
Nick Wenban-Smith, General Counsel at Nominet comments: “Despite the worldwide shift towards online activity during the pandemic, and WIPO disputes on the increase, we haven’t seen a parallel pick up in the number of .UK domain name disputes for the past two years, but instead are reporting a record low in Complaints filed since the DRS launched back in 2001. We hope this is a result of our continued efforts to make .UK a safe place to be online.”
“The DRS continues to hold merit for businesses large and small. We are proud to offer an affordable and efficient service and are grateful to all our independent Experts for their time making decisions where complexities arose. Their support has assisted in hundreds of disputes being resolved without protracted court proceedings.”
· With a number of cases still open, in 2021 there was one appeal that was upheld.
· In 2021, the most common industries for Complainants were Banking & Finance (8), Retail (8) Food, Beverages & Restaurants (6), Automotive (4) and Hotel & Travel (4).
· In 2021, the year saw cases brought by Complainants from 23 different countries, led by the UK (429) followed by the US (45) and France (20).
· In 2021, Respondents were widely dispersed, coming from 40 different countries. The UK continues to lead with 389 Respondents, with the US second (34) and Panama third (25).
· Cases being resolved by a Summary Decision took on average 60 days in 2021, 59 days in 2020, compared to 62 in 2019, whilst Full Decision cases took on average 79 days in 2021, 99 days in 2020, compared to 90 in 2019.
· Court costs avoided in 2021 was around £4.3 million – assuming court and legal fee savings of £15k per complaint that progresses into formal dispute resolution.
Nick Wenban-Smith adds: “With a number of 2021 cases still open, the past couple of years have certainly seen some interesting appeals, highlighting the work of our DRS Experts and the Appeals panel to settle the most challenging of cases.
“Some of the most difficult ones involved similar business ideas that would never have competed in a pre-internet world, with cases being filed from around the globe. A reminder that while the DRS looks after the national UK namespace, it’s used and appreciated by people worldwide.”