Domain dispute puts question mark over UK ecommerce

Simply put, the Nominet approach to domain resolution comprises two elements that need to be proved by the complainant. One, that they have legitimate rights over the name. And two, the existing owner must be misusing that domain. If both are satisified, the complainant is awarded the domain. If either side is unhappy with a decision, they can go to appeal for £3,000 and/or take the dispute to a court of law for judgement.

Mr Sumpter and his lawyers take issue with a large number of statements within the original decision to the extent that they are unhappy at the 1,000 words appeal limit, arguing it doesn't provide sufficient to make all their arguments.

Straight off, Mr Sumpter said he is more than prepared to sign a declaration of truth for his appeal. In the original decision, the expert, Mr Lothian, made it clear he was according less weight to Mr Sumpter's filing because he had failed to include such a declaration despite it being clearly written down in the DRS procedure. Mr Sumpter swears this was no more than an oversight.

Mr Sumpter did not wish to discuss precise legal arguments he will be deploying before the Appeal begins, but a review of Mr Lothian's decision raises plenty of questions.

Google schmoogle

He accepts two fundamental arguments put forward by Game plc: that a domain name's suffix is not significant to the point of irrelevance; and that Game plc's rights with regard to the name "game" online can be sufficiently gauged by referring to a Google search on that name.

Both arguments are palpably not true and demonstrate a fundamental misunderstanding of how the Internet works. A domain name's suffix - as in .com, .co.uk, .org etc - is of enormous significance. For one, if the dispute was over "game.com" rather than "game.co.uk" the case wouldn't even be being heard by Nominet, it would come under the jurisdiction of ICANN.

The majority of suffixes available come with a widely varying degree of control. Many countries do not allow anyone living outside the country to register a domain with them. Any company without a presence in a certain country would stand little chance of winning a case with that country's suffix. Equally, .net domains were originally only for those companies that played a part in the Internet's infrastructure. Dot-org domains are by-and-large not-for-profit organisations. Domains ending with .pro, .aero and many others all have strict criteria before a domain is handed over.

Even if you look at the UK registry, there are strict controls in place on some domains, some of which has been the source of recent arguments. Use of .me.uk and .net.uk are both restricted. A domain's suffix is in fact just as important as the domain stem itself when it comes to deciding ownership.

As for second argument that Game plc's rights can be adjudged by typing "game" into Google and seeing where it comes - it is akin to deciding a border dispute on the basis of how fat the landowners are.

Game plc provided Nominet's Lothian with a print-out of a Google search for "game" in which it came top out of over 123 million entries. But this was a Google search for purely UK domains. A wider Google search yields a very different set of results in which domains that include the word "game" and which also sells video games feature higher than Game plc.

The argument also ignores the fact that Google results change significantly each month as the company adjusts its formulae. This fact has spurned an entire mini-industry in itself - adjusting websites to maximise Google ranking.

Mr Lothian dismissed Mr Sumpter's point that Game plc is not suing "game.com" because that website has "distinctive branding identified by the Hasbro logo". Which raises the question: how distinctive does a website have to be before it can be adjudged distinctive enough? This impossible scenario is already well recognised in law and is turned the other way to ask whether the company under scrutiny is sufficiently similar to the Complainant for there to be confusion. Online, this confusion is decided through the use of font, colour and page design.

Mr Sumpter's Game.co.uk may not have stood out a mile but at the same time it could not have been mistaken for Game plc website at Game.net. For one thing, one was blue and the other purple.

Tipping the balance

At the end of his deliberations, Mr Lothian accepts that the idea of Game plc's rights "is a very difficult question and in the context of a mark like GAME, being a word in common usage, the Expert takes the view that a demonstration of very wide or extensive use is necessary." Nevertheless, he finds that the Game plc has "narrowly met this requirement".

We believe that by wrongly accepting the two arguments put forward above, the balance was tipped decisively in the wrong favour.

Once he had ascertained Game plc's "rights" to the name "game" online, the question turned to whether Mr Sumpter was guilty of "abusive registration".

This argument revolved around three main points:

1. That Mr Sumpter had changed what the website contained and did (from acting as a front for his consultancy business to selling video games) in order to benefit from Game plc's name.
2. That Mr Sumpter sought to elicit as much money as possible from Game plc for the domain.
3. That there was past and ongoing confusion between Game.co.uk and the Game plc shops and business.

This part of the dispute was harder to discern as Mr Sumpter and Game plc had widely different accounts of what had happened.