Posts Tagged ‘Nominet’

Nominet appeal panel polishes off Furniture Village’s complaint

Monday, January 9th, 2012

Furnitureland went into administration in 2005. Its trade marks and the goodwill associated with them were sold to Furniture Village. In 2009, furnitureland.co.uk ltd was incorporated and obtained the domain furnitureland.co.uk.

Furniture Village brought a Nominet complaint about furnitureland.co.uk. The respondent claimed that, although he knew about Furnitureland, he thought they had stopped trading, and so his registration of the domain name was in good faith.

Both the first instance Expert and Appeal Panel agreed, so the respondent gets to keep the domain furnitureland.co.uk, which it is using as a click through website.

The case shows that the Nominet DRS is not suitable unless the complainant can clearly show the registrant knew of the complainant’s rights.

Faced with similar facts, brand owners should consider a passing off or trade mark action, which may have a better chance of succeeding.

It is also worth noting that the panel maintained the DRS’s reputation for speed by refusing to stay the appeal because of a pending trade mark revocation.

Posted by Giles Parsons, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Giles Parsons

Giles Parsons
0121 237 4557
gparsons@brownejacobson.com

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Police could obtain fast-track power to suspend domain names

Friday, September 16th, 2011

Under recently proposed rules, the police and other authorities may obtain the power to suspend ‘.uk’ domain names, without obtaining a court order, by making a request to Nominet, the UK domain name registry, to prevent ‘serious & immediate consumer harm’.

Whilst Nominet has always held a power of suspension, previously used in cases of incorrect registration, their current regulations do not provide a formal procedure for blocking domain names as a result of criminality.

Some commentators have expressed concern about which agencies will be able to request suspensions, and an appeal process together with a periodic policy review are likely to be required.

It seems likely that new procedures will be introduced, and if so these should provide victims of counterfeiting and copyright infringement with another valuable tool for taking action against online infringers.

Laura MacKenzie

Laura MacKenzie
0121 237 3959
lamckenzie@brownejacobson.com

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A beginner’s guide to becoming more abusive

Friday, December 10th, 2010

Nominet recently considered whether an initially non-abusive domain name registration might become abusive through its later use.

In this case Daniel Stubbs registered a number of spread betting related domain names including worldspreads.co.uk for the purposes of making money through affiliate marketing. The website at the domain initially contained links to generic shopping websites.

WorldSpreads, a well-known provider of financial spread betting services, began trading in the UK two months after the date of Mr Stubbs’ registration and was unable to adduce evidence of prior rights in the UK. The registration was, at that point, legitimate.

Following several approaches by WorldSpreads to purchase the domain, Mr Stubbs changed the content of his website to include links to the websites of WorldSpreads’ competitors.

It was held that, although the initial registration was legitimate, Mr Stubbs’ later use of the domain amounted to abusive use.

This decision will be welcome news to brand owners, and private individuals seeking to profit out of speculative domain name registrations will need to tread more carefully.

Posted by Ryan Harrison, who specialises in intellectual property agreements and disputes, licensing, commercial contracts, and commercial and intellectual property issues arising from M & As and disposals.

Ryan Harrison

Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com

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Calling all “short” trade mark owners!

Thursday, November 25th, 2010

Following on from our opinion earlier in the year, Nominet (the UK domain name registry) will make available certain single character and two letter domain names.

From 1 December 2010 until 17 January 2011, owners of registered trade marks which match their desired “short” domain name will have the first option to apply, upon providing evidence that they have used their trade mark in the UK before 1 January 2008.

Following this will be a second sunrise period for owners of relevant unregistered marks and then a landrush period before a general release (dates to be confirmed).

Rights holders might be tempted to apply immediately on 1 December. Nominet expects fierce competition for the domain names, but beware! Applications will be published, and rival applications will proceed to an auction. Applicants should consider the potential commercial advantages of filing closer to 17 January, since Nominet has confirmed that where there are rival applications, no priority will be given to the earliest application.

Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.

Mark Daniels

Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

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Domain name victory for Ryanair (but with hidden extras)

Thursday, October 14th, 2010

Nominet has ordered the transfer of the domain name ihateryanair.co.uk from Robert Tyler to Ryanair.

Robert Tyler registered the domain name and used it for his anti-Ryanair website, which was devoted to criticism of the airline.

Nominet ordered the transfer not because the domain name pointed to a protest site, but because Mr Tyler derived advertising revenue from that site totalling £322 – hardly a fortune.

But maybe Mr Tyler has had the last laugh – he has moved his website to here and has removed the commercial advertisements. Interestingly, at the time of this posting, the domain name ihateryanair.co.uk still points to Mr Tyler’s website.

Conversely a victory for free speech then! Brand owners should beware of the limitations of the Nominet dispute resolution process in relation to criticism websites. If you are looking to manage online content about your brand consider also whether the content is defamatory, or whether your trade mark has been infringed.

Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.

Mark Daniels

Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

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More .uk domain names are set to be released

Friday, April 9th, 2010

Do you own trade marks or brands comprising two letters or a single character? Frustrated that you’ve not been able to register your brand as a domain name in the UK? Well, read on.

Nominet, which runs the register for .uk domain names, which total around eight million, has announced plans to make available those domain names which comprise two letters or a single character (think AA, BA) as well as other reserved names within the second level domains it controls (including .co.uk and .org.uk). Previously these domains were not available due to technical reasons, unless they had been adopted prior to Nominet’s establishment in 1996.

Nominet estimates that around 2,000 such domains would become available and these would first be offered to relevant trade mark owners during an initial “sunrise” period. Prior to the release, Nominet has invited interested parties to offer their views on the release. A summary of responses received to date are published on Nominet’s website. The responses to date seem to be overwhelmingly in support of the release of two-letter domains, but there has been a more cautious response to the release of single character domains – largely because it is perceived that there is less scope for legitimate use of such domains.

The consultation is open until 8 June 2010, and so if you are a stakeholder – maybe your organisation is well known by a two-letter acronym – you can respond to Nominet here.

The release of these domains is certainly a positive step. However, there have to be the correct safeguards in place to protect the interests of legitimate rights owners, and to avoid abusive registrations. This means that Nominet’s dispute resolution service is likely to see an increase in use once these domains become available.

Mark Daniels

Posted by Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

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