Advice Needed Please - DRS Complaint

David · Jul 13, 2007

Hello - I need a little advice please.

First of all, many apologies for the long post. Is posting the info below risky? I don’t want to hinder my chances of keeping my domain. Anyway…

I registered a domain back in April with the intent of developing it into a comparison site. I have begun work on this and so far have had a few pages that have been live for approx 6-8 weeks – inc. the homepage.

However, I received a letter recently claiming i registered the domain abusively. This is not true - I have been an active affiliate marketer for several months now, and I would never act immorally with regards to the way I register domains or run my websites.

It is probably worthwhile noting that the complainant contacted me twice prior to me receiving the DRS complaint but I ignored them hoping it would go away. Will this effect any decisions made?

My domain is made up of 2 generic words - and so is the company who claim they have the rights to the domain. I am currently in the proceedings of registering as a ltd company but as of yet am not registered as a business/company.

The company claims in their arguments that they have traded as their registered name for a few years. I have a screenshot taken in June 2007 which shows on the companieshouse.gov website that they were not trading at the time I queried their database – their accounts were also overdue. HoOwever, they are now down as trading.

Some additional points:

I'm almost certain they don't own the trademark to this term. Afterall, Its not mentioned in their complaint.

Their website launched after mine.

They claim I am not developing the website – I am.

They claim It could be misleading – they have purchased a domain with a ‘–‘ instead – they have no brand awareness though.

They claim I never advertised as my domain name prior to reg. of it – Amazon didn’t advertise before they reg’d Amazon.com did they! Lol.

Please can you give me some advice on the above.

I would appreciate any links to examples of responses people have sent to Nominet and any general hints and tips.

Many thanks for reading this.

Kind regards.

Johnp · Jul 13, 2007

Hi

Been through the the 'DRS Mill' a couple of times in the last few months. Firstly get your facts together and make sure you send a response in within the limits set.

To prove an abusive registration the complainant has to prove 'passing off' or trademark infringment. If it is a little guy he can point to his trade name, amount he spent on advertising etc. on his name.

If you regged the name before the complainant was activley trading, have an active project and use for the name then, via the DRS process you can tell them to 'go away'. Where the grey area comes is if your project is in the same line of business as the complainant.

However whatever you sumbmit in the DRS response, if the complainant pays the £ 750.00 expert fee this will used as main main basis of your defense, so choose your words carefully.

Remember it cost the complainant absolutley nothing to submit a DRS complaint, it will cost you nothing (other than time) to respond. The mediation process will at least allow each party to understand if there is a possible meeting of minds on either the use of the name or perhaps the transfer for reasonable costs !

Don't be frightened of the DRS process, it comes with the territory of registering domain names.

Best Regards

JohnP

Beasty · Jul 13, 2007

My firm offers a free appraisal and also a fixed fee DRS service - so if you want the free appraisal please PM me with your email address.

grandin · Jul 13, 2007

No guarantee

There is no guarantee, the expert is not limited in anyway by the contract of registration. There are no restirctions on the expert, if he/she deems you abusive there is nothing you can do....a mere gamble.

Every registrant has signed an open contract with no fixed terms that he/she can abide by...you cannot opt out of the drs

Recent DRS expert comment 'In my judgment either the risk, or likelihood of confusion, or the intention to confuse are all sufficient to establish an Abusive Registration - the factors set out in paragraph 3 of the Policy are stated to be “non-exhaustive”.'

Nominet needs to update the written words of the Policy to reflect the judgement set out above by not doing so Nominet are knowingly misleading registrants.

Lee

David · Jul 16, 2007

Hi guys, thanks for all your replies - all much appreciated.

I will give this my best shot and let you know the outcome.

One of many things I have noted is that on the companies house website, the complainant is listed as 7499 - Non-trading company.

Hopefully this will help my case.

Wish me luck - I had great plans for this domains

retired_member12 · Jul 16, 2007

Not really, at least from a company point of view anyway. If the company's active but dormant, it's still a registered company, but don't presume that is a be all and end all.
Telephone Companies House and ask them if it has ever traded/submitted accounts. It may just be a name registering exercise.

FITMA · Jul 16, 2007

The fact that the company is dormant is relevant to you. The Complainant has to prove that they have rights in the name, that you do not, and that in your hands the domain will be abusive.

In law, registration of a company name does not provide rights in the name. Rights are acquired either by trade mark registration (but do not assume that a word you think is "generic" cannot registered) or by having used the name sufficiently extensively to have acquired the right to prevent others from trading under the same or similar name. Very simply put they should be able to show they have used the name to such an extent there is a real likelihood that people who know of them in this country will be confused into thinking there is a trade connection between them and you.

The following undefended cases show how a Complainant should not go about trying to establish a case to have rights in descriptive phrases:-

DRS 03999 sublimsport.co.uk
http://www.nic.uk/digitalAssets/10433_sublimsport.pdf

DRS 03658 spafinders.co.uk
http://www.nic.uk/digitalAssets/8146_spafinders.pdf

DRS 03657 spafinder.co.uk
http://www.nic.uk/digitalAssets/8147_spafinder.pdf

I recommend you do not rely too heavily on:-

DRS 04129 royalb-of-scotlandonline.co.uk http://www.nic.uk/digitalAssets/11425_royalb-of-scotlandonline.pdf

I think that is a bad legal decision, in that the Expert got it wrong; having decided that the RBS had rights in the name and that the domains were similar, in my opinion he had no legal option but to follow One-in-a million and find that the challenged domain was an "instrument of fraud", and therefore had to be transferred to the complainant. I say this because in law the fact that the domain in the RBS case is not identical to RBS's rights is not relevant, what is relevant is whether they are thought to be so similar that confusion is likely. if they are, then the later name is potentially an instrument of fraud, and there can be no defence to an appication to the courts. However, that is one reason it is not a good case for you to rely upon. Look at what they say, and if you cannot think of anything better to say, simply denying it is better than ignoring it. If they say something you think they cannot prove, challenge them to prove it. If you do, and if the Expert relies on their unsupported word, you certainly have grounds for an appeal.