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If Nominet has spoken, you can't come here – High Court

Rulings on registration abuse can't be re-tried in court

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Those registering '.uk' domain names are not entitled to a fresh hearing in court to assess whether they have abusively registered those domains if the issue has already been determined through an industry dispute resolution service, the High Court has ruled.

Nominet is the body responsible for .uk addresses and it operates a dispute resolution service. Mr Justice Mann said that the wording of the dispute resolution service policy and procedural rules meant that decisions reached through Nominet's system could not be re-tried in court.

"The DRS (dispute resolution service) and Procedure put in place a regime in which the question of abusive registration is one for, and only for, the Expert appointed under the DRS," Mr Justice Mann said in his ruling.

The judge overturned a decision by the Patents County Court which had ruled that Nominet rules did allow courts to hear issues determined through Nominet's system afresh.

Disputes over Nominet-registered domain names can be heard through the UK courts or via a dispute resolution process operated by the registry.

Michael Toth vs Emirates Airlines

Airline operator Emirates had used the Nominet process to challenge Michael Toth's right to register the 'emirates.co.uk' domain name and said it owned trademark rights to the name. Although Nominet originally decided Toth's registration of the address was legitimate, an appeals panel reversed the decision and ordered Toth to transfer ownership of the address to Emirates.

Toth asked the High Court to declare that he had not abusively registered the 'emirates.co.uk' domain name with Nominet according to the internet registry's own rules. However, Mr Justice Mann said that Nominet's rules meant that the court was unable to issue such a declaration.

Nominet requires those registering '.uk' domain names to adhere to a number of separate policies, including one relating to dispute resolution.

Under Nominet's 'dispute resolution service policy' a person is said to have made an 'abusive registration' if a domain name "was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or has been used in a manner which has taken unfair advantage of or has been unfairly detrimental to the Complainant's Rights".

The policy also states the rules on the right to appeal against original decisions made by Nominet-appointed "experts". Those rules state that an appeal panel "will consider appeals" but that the "operation" of the dispute resolution process "will not prevent either the Complainant or the Respondent from submitting the dispute to a court of competent jurisdiction".

The rules also state that, generally, an expert's original decision "will not be reconsidered ... by an expert" but can be appealed. Re-submissions of already rejected complaints are automatically dismissed if identified as such by the experts.

Nominet rules also state that it will "suspend" proceedings under its own dispute resolution system if "legal proceedings relating to a domain name are issued in a court". The rules require those taking the legal action to "promptly notify" Nominet if they initiate the court proceedings "during the course of [its dispute resolution system] proceedings".

Emirates argued that the court had "no role" in determining whether Toth had made an abusive registration and that Nominet's rules meant only an expert could make such a judgment. The company argued that Toth was essentially looking for a re-hearing which was not allowed, subject to exceptions, under Nominet rules.

Toth argued that the court had authority to rule on the issue and that by doing so it could mean that he does not have to transfer his ownership of the domain name to Emirates. His lawyer argued that decisions stemming from Nominet's dispute resolution system were provisional and should only become "binding" if parties to the decisions do not initiate court proceedings for a fresh hearing within 10 days of the decisions being made.

However, Mr Justice Mann said the rules could not be read in the manner in which Toth relied. He said he was 'striking-out' Toth's declaration request because he agreed with counter-arguments put forward by Emirates and Nominet.

Expert should make the call

"The overall mechanism is much more consistent with the conclusion that the question is one for the expert alone," Mr Justice Mann said. "The whole concept of abusive registration has no significance until a complainant complains, and when he does a clear mechanism is provided for dealing with it. No independent cause of action based on 'abusive registration' existed before then or is created at that moment. What is created is a question for the expert to decide. That leaves no room for parallel (or consecutive) court proceedings on the point".

He also said that his reasons were supported by the apparent intention of the Nominet system to "create a self-contained dispute resolution mechanism which is closely regulated, cheap, quick and (apparently) efficient". The judge said that "to add a parallel route of applying to court (which I fear would not always attract all those adjectives) would be inimical to the apparent intention of the parties".

Mr Justice Mann said that to assess the Nominet rules according to Toth's view would provide a "lopsided result". This is because domain name owners could prevent others challenging them over alleged abusive registrations through the Nominet system by pre-emptively seeking a court declaration that their behaviour was legitimate.

"If [Toth's lawyer] is right he has the right to apply to the court immediately for a declaration that he has not been guilty of [abusive registration]," the judge said. "If that were to happen, then any DRS procedures that were subsequently started would be immediately suspended ... The Complainant would be deprived, for the time being, of the proceedings which the DRS held out to him.

"On the other hand, the Complainant would have no parallel opportunity to seek a declaration as an alternative to invoking the [dispute resolution service], because he has no rights at all unless and until he initiates procedures [under the dispute resolution service]; and he would certainly not be able to get any useful relief from the court by somehow relying on the [dispute resolution service], because on no footing does it appear that the court could order what an Expert could order. In order to get his relief, the Complainant would have to start all over again under the [dispute resolution service]," Mr Justice Mann said.

Mr Justice Mann said it was not relevant to consider the Nominet rules in light of rules covering disputes over other domains which allow court action to be taken following the resolution of disputes relating to other domain names. Nor was it relevant to assess how the Nominet rules should be applied in light of a World Intellectual Property Organisation report in 1999 which recommended that parties to any domain name "dispute-resolution system" should not be precluded from taking their issues to court.

The judge said that such "knowledge" could not be expected to be known by parties to domain name contracts.

"The idea that first the domain name holder (when he contracts with Nominet) and then the Complainant (when he complains) ought somehow to inform themselves of the background to the Nominet arrangements, and in the course of so doing would find the WIPO report and the [other dispute resolution system rules that operate for other domains] does not seem to me to be realistic or in accordance with normal contractual principles," Mr Justice Mann said.

Even if those other rules and the recommendations were assessed, they would not sway how the Nominet rules themselves should be read, the judge said.

"Even if they were allowed in they would not demonstrate that which [Toth] wants to rely on. [Toth's lawyer] says that they demonstrate that there was an intended regime ... and then an actual regime ... which respectively contemplated and contained dispute resolution procedures which allowed the same point to be taken in the civil courts," Mr Justice Mann said. "I do not consider that they do, or at least not clearly enough to be a clear piece of factual background to that effect which would have been 'known' to the parties," he said.

Toth nevertheless argued that the court still had jurisdiction – under the Civil Procedure Rules (CPRs) – to issue a declaration stating that he had not abusively registered the domain name under the terms of Nominet's rules. Mr Justice Mann said that whilst the CPRs did allow him to issue such a declaration, it was dependent on whether the Nominet contract terms allowed him to. He ruled that it didn't.

"If it is a contract which leaves the question of abusive registration to the expert (and appeal panel) then the court must decline to grant a declaration, either as a matter of jurisdiction, or as a matter of discretion (it does not matter which)," Mr Justice Mann said. "I have already held that that is the effect of the contract, so the declaration route is not open to Mr Toth," he said.

The CPRs set out the rules that govern how the civil court system in England and Wales works.

Copyright © 2012, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

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