Alleged passing off and trade mark infringement
In your submissions you alleged that the registrant was in breach of passing off laws and referred to your trade mark.
We wish to make it clear that Nominet has based its decision whether or not to suspend the delegation or cancel the registration of the Domain Name on the grounds set out in our Rules. Whether or not the registration or use of a Domain Name in the .uk Top Level Domain infringes your company's alleged intellectual property rights would be a matter for a Court of competent jurisdiction to decide.
However, as manager of the .uk Top Level Domain, Nominet will of course comply with orders of Courts of competent jurisdiction.
The ICANN Uniform Domain Name Dispute Resolution Policy ("UDRP")
The registrant has directed Nominet to copies of decisions relating to generic Top Level Domains and has submitted that, whilst not binding, these decisions are highly persuasive and highly relevant to any decision given in relation to the .uk Top Level Domain.
Decisions made in relation to domain names registered with manager of Top Level Domains, that have incorporated ICANN's UDRP into their Terms and Conditions, are made on grounds which differ substantially from those set out in Nominet's rules. As Nominet's authority to suspend the delegation or cancel the registration of a Domain Name is derived directly from its Terms and Conditions, we confirm that Nominet has no authority to take into account decisions made on grounds other than those set out in its Rules.
Motivation behind the registration
During the course of the dispute the parties agreed that the registrant registered the Domain Name in good faith. As you will see from reading the grounds set out in paragraph 3.5 of the Rules, Nominet has no power to assess the motivation of the registrant in registering the Domain Name. We wish to confirm that we have reached this decision on the basis of the grounds set out in Rule 3.5 and that the whether or not the registrant has acted in good faith has not influenced Nominet's decision.
Domain Name being used in a manner likely to cause confusion to Internet users
In order for a complainant to be successful under the ground that a Domain Name is being used (or is likely to be used) in a manner likely to cause confusion to internet users, Nominet must be satisfied that all three elements have been met:
- The Domain Name is being used
- There is confusion to internet users, or such confusion is likely
- The confusion is caused by the use of the Domain Name.
- Nominet is aware that the registrant is using the Domain Name for at least two purposes:
- The registrant is using the Domain Name to resolve to the website described in paragraph 10.
- The registrant is using the Domain Name to send and receive e-mails; including receipt of e-mails intended for the complainant that have been misaddressed or misdirected to the registrant.
- It is not necessary for a complainant to show that confusion has actually occurred, merely that it is likely to occur:
- It is not alleged that the website is a source of confusion to internet users and in Nominet's opinion the registrant's website is unlikely to be confused with that of the complainant.
- It is common ground between the parties that the registrant has received e-mails intended for the complainant. Nominet accepts that the registrant registered and has been using the Domain Name since before the complainant became known as the FSA. However, Nominet is also aware that the FSA is now well known and that it is foreseeable that correspondence of a sensitive or confidential nature may be intended to be sent to it by e-mails. The correspondence received by the registrant but intended for complainant by Freshfields was of just such a nature, and is in Nominet's opinion evidence of actual confusion.
- Therefore it is in the use of the Domain Name for the purpose of e-mails that, in Nominet's view, confusion is likely to occur. The question then is whether the use is the cause of the likely confusion.
- In Nominet's view there is scope for confusion to exist independently of the registration of the Domain Name. In such circumstances the confusion cannot be said to be caused by the use of the Domain Name and would therefore not be a breach of our Rules. An example would be confusion that exists even if the Domain name is not actually registered.
- The confusion resulting from e-mails being sent to a domain name on an assumption that it belongs to a party, when in fact it does not, can be confusion that exists independently of the registration of the domain name and so may not be caused by use of the domain name. However, this is only true if the registrant was either:
- Not using the Domain name for the purpose of receiving e-mails; or,
- Operating e-mail for the Domain Name in such a manner that most, if not all, misaddressed e-mails were not accepted by its servers thus preserving a state similar to not using the Domain Name for the purposes of e-mail.
- It is Nominet's view that the current the circumstances whereby the registrant accepts all e-mails addressed to the Domain Name on a wildcard basis is likely to cause more confusion than can be said to naturally exist on the internet as internet users will not be immediately aware that they have sent their e-mails to the wrong address.
- Despite being aware of the potential for confusion and knowing that it is technically trivial to configure ones' e-mails server to only accept e-mails addressed to specific addresses the registrant continues to accept all e-mails addressed to the Domain Name on a wildcard basis.
- Therefore it is Nominet's opinion that the registrant's current use of the Domain Name to receive e-mails on a wildcard basis is likely to cause confusion to internet users.
Likelihood of legal action being commenced
- Although the registrant has submitted that you have disclaimed such a course of action, we note that you have stated in your submissions that you may commence legal action if the Dispute Resolution Service is not successful.
- However, we are unable on the basis of your submission to find that legal action is likely to be commenced regarding use of the Domain Name and are unable to take any action on this ground.
- The registrant has also made a number of submissions as to the likelihood of success of any legal action. Nominet confirms that the above finding is a decision on the grounds set out in paragraph 3.5 of the Rules, namely the likelihood of legal action occurring. We make no finding in connection with the likelihood of success of any legal action.
- Having reviewed the facts and such documentary evidence as we have received, it is Nominet's decision to suspend the delegation of the Domain Name on 26 September 2001 for a period of one month. The effect of suspension is that there will be no name server service and consequently no facility to use e-mails or access the website, however the Domain Name will remain registered to the registrant.
- During or prior to the suspension period the parties are encouraged to come to a mutually acceptable arrangement regarding the use of the domain name. However, if by 5pm on Friday 26 October 2001 Nominet has not been informed that an agreement has been reached between the parties, Nominet will thereafter cancel the registration of the Domain Name and it will once again become available for registration on a first come first served basis.
- Nevertheless, we reserve the right to review our decision if Nominet is informed that the registrant has changed its use of the Domain Name. In Nominet's view a fundamental objective of the Dispute Resolution Service is removing the cause for complaint. Consequently it follows that a registrant must be able to improve their position by altering those factors that are contributing to the confusion. Therefore, in the event of such a review we will establish whether, in Nominet's opinion, that new use can be said to still cause the confusion resulting for misaddressed e-mails.
Referral to Independent Expert
- As you are probably aware, if any part affected is dissatisfied with Nominet UK's decision under the Dispute Resolution Service, Nominet UK will at that party's request, refer the matter to an independent expert for a written recommendation that Nominet should confirm or revoke its decision. If you wish to discuss such a request, please contact ….. by 5pm on 3 October 2001.