UK Courts Step Aside on Issues of Abusive Domain Names for Nominet UK

The High Court in the UK recently rejected an appeal made by Michael Toth in regard to his loss of the domain name ‘emirates.co.uk’. Toth, who possessed an extensive portfolio of domains, such as ‘china.co.uk’ and ‘maldives.co.uk’ appealed to the high court stating that his registration of the domain ‘emirates.co.uk’ was not done abusively.

Emirates (the airline), having found that this domain had been bought out by Toth, petitioned the domain registrar “Nominet UK” to transfer the domain to them, citing that Toth’s registration of the domain was abusing Emirates’ right over its own trademark. Nominet’s DRS (Dispute Resolution System) panel decided in favour of Emirates, citing clearly that the registration took advantage of the goodwill attached to the name “Emirates” thereby being detrimental to Emirates’ rights as a company and trademark owner. Toth consequently took the matter to appeal in the High Court arguing, among other things, that the registration was not abusive.

The High Court, rather than trying to address the issue, concluded that doing so would be beyond its competence. While it acknowledged that Nominet’s procedures and policies do occasionally allow reference to a court for review of decisions, it cited that reviewing the board’s expert decisions was not one of the situations catered for. It transpired that the court could only be involved where a party had an action for passing-off, trademark infringement or a breach of contract claim against Nominet itself. Since Toth had accepted these terms and policies, there was no way to have them re-interpreted by involving the court.

As an issue loosely related to the appeal, the High Court also cited that the DRS procedure was an important matter to consider in itself. Its very existence sought to give disputing parties a solution which was faster and less costly. The court insisted that bringing the court into every issue would defy the objective of the mechanism and should therefore be avoided. This decision means that, at least insofar as Nominet UK is concerned, the court will seek to avoid involvement, save in limited circumstances. This is good news for trademark/brand owners who can rest assured that the DRS procedure remains a quick and inexpensive way to address domain name registrations that can dilute the owner’s trademark.

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