…From pet and personal insurance to major brands, the .UK dispute resolution service has it all…
Nominet, responsible for managing the .UK namespace for 25 years, today published its summary of domain name disputes brought to its Dispute Resolution Service (DRS) in 2021.
The number of complaints was at an all-time high since the DRS began in 2001, with only 548 complaints filed in 2021. The total number of domain names linked to these DRS complaints in 2021 was 623 domains, representing only 0.0056% of the register. Less than half of all complaints (43%) in 2021 resulted in a domain transfer, matching 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 makes it possible to resolve .UK disputes efficiently and cost-effectively. As a public interest company, Nominet makes no profit from running the DRS, but supports its administration and mediates, while all adjudication fees are paid to experts for their time adjudicating disputes.
In 2021, DRS was used by brands such as Bosch, Petplan UK, Nokia, Admiral Insurance Group, Tesco and Taylor Wimpey, as well as parties such as the University of Westminster, pizza chain Little Caesars, the glassmaker Bormiolo Luigi and the Gainsborough Theater Company.
Case examples 2021:
A complaint has been lodged by FF Bequest Limited, which provides life insurance services under the trading name “Bequest”. The defendant claimed that its website was online before the registration of the plaintiff’s mark, and the initial expert stated… “In general terms, if an entity, such as the plaintiff, wishes to trade under a generic dictionary term that is directly related to the goods or services offered, they should not be surprised if an unrelated third party also chooses to trade under the same generic dictionary term. upheld the initial no-action finding.
The plaintiff was Chanel Ltd, the luxury brand specializing in the production of high-end fashion, beauty and fragrance products. The domain name has been resolved to an escort website which the complainant claims conflicts with its premium brand. The Complainant claimed that the false association with his brand was likely to damage his reputation and bring the Chanel name into disrepute. Respondent did not submit a response and Expert stated, “By reproducing Complainant’s distinctive mark in the Domain Name, Respondent’s website suggests that it is affiliated with or endorsed by Complainant. Given the nature of the content found at the Domain Name, such an association is likely to tarnish the Complainant’s brand.
The Complainant is a well-known German automobile manufacturer founded in 1931 which specializes in the production and sale of high-performance cars under its name “Porsche”, as well as spare parts and components for these cars, as well as accessories for brand such as clothes. The Complainant asserted that certain items sold by the Respondent were not genuine, while the Respondent stated that he had never knowingly sold counterfeit products and had been doing business as PorscheShop since several years. The Expert granted the transfer of the domain name and wrote: “…these instances are, in the opinion of the Expert, sufficient to confuse those accessing the website that the goods sold therein are either Complainant’s genuine goods were approved by Complaint for sale, which were also not.
The plaintiff was Upfield Europe BV, owner of various brands of plant-based foods, including Flora spread. The Complainant asserted that there was no reasonable justification as to why the Respondent would acquire or use a domain name consisting solely of the term “Flora”. The Respondent had controlled the domain name for over 20 years and had previously operated as “Flora Products International”, supplying florist wholesalers in the UK and other countries. Although the expert recognizes that “flora” may be a generic term associated with horticulture, he found that due to the advertising and marketing activity of the Flora brand 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 British public.
The initial transfer decision was appealed by the Respondent, and the Appeal Panel reversed the transfer decision, stating: “…in all the circumstances, the Panel considers that, under the On a balance of probabilities, the available evidence does not support the conclusion that the Respondent’s original registration of flora.co.uk unduly benefited or was unfairly detrimental to the rights of the Complainants.”
Nick Wenban-Smith, General Counsel at Nominet comments: “Despite the global shift towards online activity during the pandemic and increased litigation at WIPO, we have not seen a parallel increase in the number of .UK domain name disputes over the past few years. two years, but instead we are reporting an all-time high in complaints since DRS was launched in 2001. We hope this is the result of our continued efforts to make .UK a safe place to be online.
“The DRS continues to have merit for companies large and small. We pride ourselves on providing an affordable and efficient service and are grateful to all of our independent experts for the time they spent making decisions where complexities arose. Their support has helped resolve hundreds of disputes without lengthy legal proceedings. »
· With a number of cases still open, in 2021 one appeal was confirmed.
In 2021, the most common industries for complainants were banking and finance (8), retail (8), food, beverage and restaurant (6), automotive (4) and hospitality and travel (4).
· In 2021, the year saw cases brought by plaintiffs 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 United Kingdom remains in the lead with 389 respondents, followed by the United States (34) and Panama (25).
Summary disposition cases took an average of 60 days in 2021, 59 days in 2020, down from 62 in 2019, while full disposition cases took an average of 79 days in 2021, 99 days in 2020, down from 90 in 2019.
In 2021, the majority of cases (85%) were for .co.uk domains, 12% .uk and 3% .org.uk. The rest included a handful of sch.uk, plc.uk, ltd.uk and .me.uk domains.
Legal costs avoided in 2021 were around £4.3 million – assuming legal and litigation cost savings of £15,000 per claim that progresses to formal litigation.
Nick Wenban-Smith adds: “With a number of cases from 2021 still open, the past two years have certainly seen some interesting appeals, highlighting the work of our DRS experts and appeals committee to settle the toughest cases.
“Some of the toughest involved similar business ideas that would never have competed in a pre-internet world, with cases filed all over the world. United, it is used and loved by people all over the world.