To assist parties in deciding whether the DRS is the correct forum for their complaint, we have compiled a list of six of the most common types of case. It is important to understand that the list is non-exhaustive and is intended as a guide only. If your case does not match with one of the items on the list this does not necessarily mean that a complaint would be unsuccessful.

It is equally important to remember that each case is decided on its own merits.  An Expert is not bound to follow a decision in a previous case. The most common reasons for an Expert to find against a party (either complainant or respondent) is a failure to supply any evidence to back up their assertions and explain in detail the situation. Whatever the facts of the situation, your case is only as good as your Complaint or Response.

Important: The information contained on this page is not a substitute for reading the Nominet Policy and Nominet Procedure and all complainants and respondents should ensure that they are familiar with these documents before filing a Complaint/Response.

1. Registering Domain Names to Sell

There have been a number of cases where the Expert has decided that the domain name was registered by the Respondent with the deliberate intent to sell it to the Complainant.

NB It is particularly important for Complainants to consider whether the domain name was registered primarily to sell to them. For a domain name to be an Abusive Registration under paragraph 3(a)(i)(A) of the Policy then the domain name must have been registered with the primary intention to sell to the Complainant or one of its competitors for more than the documented out-of-pocket costs of obtaining it. Thus if a name is generic, and may not be Abusive even if it was registered with the intention to sell to anyone (see zhl.co.uk)

DRS 00876 grundfospumps.co.uk
DRS 00576 zhl.co.uk
DRS 00573 questmotors.co.uk
DRS 00570 blackpooltower.co.uk
DRS 00475 mro.co.uk
DRS 00203 cheltenhamgloucester.co.uk

 

2. Registering the business name of a competitor as a domain name

This is possibly the most common type of DRS case. If sufficient evidence is supplied to establish that they have Rights in a name similar or identical to the domain name and the respective relationship of the parties, the Complainant is often successful in demonstrating that the registration is Abusive. Even if the Respondent has not used the domain name it may still fall within paragraph 3(a)(i)(B) of the Policy (blocking registration). However if the Expert finds that the Respondent also has Rights in the name, or if the name is generic then the Complaint may fail (see premierfinance.co.uk and greymatterltd.co.uk)

DRS 01026 addiktion.co.uk
DRS 00864 greymatterltd.co.uk
DRS 00859 supplydesk.co.uk
DRS 00813 turnerengineering.co.uk
DRS 00550 jamajr.co.uk
DRS 00488 hoylandfox.co.uk
DRS 00336 premierfinance.co.uk
DRS 00262 meadwayestates.co.uk
DRS 00153 coftoncountry.co.uk
DRS 00145 vistacomp.co.uk

 

3. Using the name of a well-known company or trademark in a domain name

Typically examples include: i) the distributor of the Complainant's products registering a domain name identical to the Complainant's company name or product, ii) a third-party trading from a website which sells products not connected to the Complainant, iii) pointing the domain name to a tribute or criticism site about the Complainant, or iv) an unconnected third-party registering the domain name and providing no explanation or reason for doing so. There has been Appeal panel decisions on a distributor case (see seiko-shop.co.uk) and a criticism/tribute site case (see scoobydoo.co.uk). Note that the effects of the 'without prejudice' rule discussed in scoobydoo.co.uk are now dealt with under paragraph 6 of the DRS Policy.

Distributor

DRS 00652 landregistry.org.uk
DRS 00593 propecia.co.uk
DRS 00285 sparco.co.uk
DRS 00248 seiko-shop.co.uk - original decision
DRS 00248 seiko-shop.co.uk - appeal

Selling products by other manufacturers

DRS 01796 epson-ink-cartridges.co.uk
DRS 00784 asseenonqvc.co.uk
DRS 00445 vodafoneretail.co.uk
DRS 00077 gefanuc.co.uk
DRS 00068 nokiagsm.co.uk
DRS 00058 nokiaringtones.co.uk

Tribute/Criticism

DRS 00389 scoobydoo.co.uk - original decision
DRS 00389 scoobydoo.co.uk - appeal
DRS 00104 bbfc.org.uk
DRS 00048 pharmacia.org.uk

Unconnected third party

DRS 01781 wwwamazon.co.uk
DRS 01738 ukhewletpackardink.co.uk
DRS 01636 onken.co.uk
DRS 00832 oxfordinstruments.co.uk
DRS 00658 chivasbrothers.co.uk

 

4. Generic/Descriptive Domain Names

Nominet receives a considerable number of complaints concerning domain names which could be described as descriptive of a business (e.g. lawyer-mediator.co.uk) or generic (e.g. banana.co.uk (fictional)). Despite the number of complaints received few have progressed all the way to a decision. There are probably two reasons why this is the case:

1) The DRS Policy specifically states; "... a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business."
2) Many Complainants feel they have a greater right to use a domain name simply because the current registrant does not appear to be using it, however paragraph 3(b) of the DRS Policy reads; "failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a website is not in itself evidence that the Domain Name is an Abusive Registration."

If you are complaining about a name which might be argued to be generic or descriptive, you should explain in detail why it is not (see airlinewarehouse.co.uk)

Nevertheless it is possible that the way in which the Registrant has used a descriptive or generic domain name could make it an Abusive Registration (see truckandtrolley.co.uk).

DRS 01576 airlinewarehouse.co.uk
DRS 01629 cyclone.co.uk
DRS 01498 farming.me.uk
DRS 01399 loan.co.uk
DRS 01159 gluedots.co.uk
DRS 00753 datingagency.co.uk
DRS 00543 lawyer-mediator.co.uk
DRS 00468 truckandtrolley.co.uk
DRS 00370 therugcompany.co.uk 
DRS 00359 parmaham.co.uk - appeal

 

5. Acronyms

Nominet periodically receives complaints which are wholly or partly based on acronyms: a fictional example would be "Automaton Example Case Ltd" complaining about 'aec.co.uk' or 'aecase.co.uk'.

These do not automatically fail (see bbfc.org.uk, lmeholdings.co.uk) but some do  (mro.co.uk, zhl.co.uk) and many more never reach the decision stage. If they are to succeed, the Expert must be convinced that the Complainant has rights in that particular name (i.e. the initials) not an expanded version of it. Even if the organisation is very large and well known, or is clearly only known by its initials, this must be proved by the evidence. Where this is not the case, substantial evidence will have to be provided to meet the 'rights' test, and the respondent will usually claim that acronyms are generic (see point 4). Most of the complaints on this topic that have failed have done so because of lack of any evidence of rights in the specific name in question.

DRS 01816 ywca.co.uk
DRS 01738 ukhewletpackardink.co.uk  (includes ukhp.co.uk)
DRS 00576 zhl.co.uk
DRS 00475 mro.co.uk
DRS 00490 bcisf.org.uk
DRS 00133 lmeholdings.co.uk
DRS 00104 bbfc.org.uk

 

6. "Agent" cases and ex-employees

In this type of complaint Party A (the Respondent), sometimes a web-designer or an Internet Service Provider, has registered a domain name under the instructions of Party B (The Complainant). Party A has then proceeded to register the domain name in their own name (i.e. giving themselves legal control of the domain name). The most common reason for Party A registering in their own name is to ensure that they receive payment from Party B for the work they carry out on Party B's behalf. Sometimes the parties have signed a contract but often have only communicated verbally making it difficult to establish the exact facts. Several cases have gone forward to a decision and the opinion of the Experts has varied between deciding that it is a contractual dispute between the parties to deciding that the domain names were Abusive Registrations as they should have been registered in the name of Party B. In order to clarify this, these matters are now specifically addressed by the current Policy (3(a)(v)).