First .uk domain name decision under new DRS

Nominet UK, the organisation which manages the .uk Top Level Domain, today published the first .uk domain name decision under its new Dispute Resolution Service.

The independent expert ruled that the domain name was an abusive registration, and found in favour of the complainant.

Facts

The dispute concerned the domain name, xigris.co.uk. The complainant, a pharmaceutical company, had applied for the registration of XIGRIS as a Community Trade Mark for pharmaceutical preparations in February 1999: this trade mark application was successful.

The respondent, an individual, was employed by the complainant from June 2000 for the period of a year, during which time the respondent became familiar with the complainant's XIGRIS brand. In June 2001, the respondent registered the domain name xigris.co.uk. The respondent made no submissions in the dispute.

The Test

In order to pursue a claim successfully, Nominet UK’s new DRS requires that a complainant has to prove, on the balance of probabilities, that

i. it has rights in respect of a name or mark identical or similar to the domain name; and
ii. the domain name, in the hands of the respondent, is an abusive registration.

Decision

The independent expert found that:

(a) the complainant has rights in respect of a name or mark, which is identical (save for the .co.uk suffix) to the domain name.

(b) the registration of the domain name must be considered to be an abusive registration as,

i. the respondent's conduct was indicative of abusive conduct. One week prior to the registration, the respondent had worked for the complainant and became familiar with the XIGRIS brand. During this time, the complainant had never requested the respondent to register the domain name on its behalf, and therefore, there appears to be no obvious reason why the respondent might be said to have been justified in registering the domain name; and

ii. although the domain name could be used for non-damaging purposes, the conduct of the respondent indicated that there were many more obvious and potentially damaging uses for the domain name in the hands of the respondent; and

iii. public health and public safety issues involved with the name are not conclusive grounds for finding an abusive registration, however, they should be taken into account when a domain name features the name of a pharmaceutical preparation, particularly when a respondent has no obvious justification for its own registration.

(c) the mere registration of a domain name does not amount to a blocking registration unless a complainant can demonstrate that this was the clear purpose of the respondent.

The independent expert therefore found that the domain name was an abusive registration as it was registered in a manner that, at the time of registration, took unfair advantage of the complainant's rights. Consequently, the independent expert has requested that the domain name be transferred to the complainant. Under the DRS, Nominet UK will effect this request 5 days after the publication of the decision, and subject to the respondent not exercising his right to appeal during this time.

The full text of the decision can be found at http://www.nominet.org.uk/drs/decisions.html

To access a previous Law-Now article on the Dispute Resolution Service please Click here

For further information on how Nominet UK's new DRS may affect your .uk domain names, please contact Stephen Whybrow by telephone on +44 (0)20 7367 2183 or by e-mail at [email protected], or Lucy Kilshaw by telephone on +44 (0)20 7367 2376 or by e-mail at [email protected].