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Alexander Ramage Associates Trade Mark Attorneys


	Lectures given by Eric Ramage & Maggie Ramage

Lectures by Eric Ramage
-	Lecture to ITMA (March 2010)
-	Working with dots (March 2008)
-	Revocations and Restrictions (Sept. 2006)
-	Internet Issues (July 2006)
-	Overlap between trade marks and design rights (April 2005)

Lectures by Maggie Ramage
-	Lecture tour China/Japan (Oct. 2008)
-	Lecture to INTA Berlin (May 2008)
-	China and Japan Lecture (October 2006)

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INTERNET ISSUES

The role of Nominet’s Policy Advisory Board; the Internet Governance Forum;
and a rapid roundup of UK and EU ADR cases.

Nominet’s Policy Advisory Board
Text of a lecture by Eric Ramage to the Institute of Trade Mark Attorneys,
London, July, 2006

Nominet is a private, not-for-profit company that has members rather than shareholders. Any organisation with an interest in the Internet can become a member of Nominet by paying a subscription fee. Members have voting rights and can have access to reduced domain name registration and renewal fees.

The Policy Advisory Board (PAB) acts as a bridge between Nominet's Board and Nominet members. The PAB meets every two months to develop policies and rules for consideration by the Board.

The PAB was set up in March 1999 to develop proposals for policies and rules for consideration by Nominet's Board. It is intended to channel stakeholder feedback into the development of Nominet policy.

Members

The membership of the PAB is drawn from representatives of up to eight appointed organisations, eight elected Nominet members and two non-executive directors. The appointed members are currently drawn from the Confederation of British Industry, The Department of Trade and Industry, the All Parliamentary Internet Group the Cabinet Office the Information Commissioner's Office the Federation of Small Businesses and the Institute of Trademark Attorneys.

Meetings

The PAB holds closed meetings in central London on the second Wednesday of alternate months. Meeting reports are published on Nominet’s website and anyone wishing to put forward agenda items should email pab-suggest@nominet.org.uk with your suggestions.

Public Consultations

The PAB regularly undertakes public consultations during which all stakeholders are invited to submit their views on issues affecting the management of the UK Domain Name System. All such consultation responses are published on the Nominet web site and are considered by the PAB before we make a formal recommendation.

PAB Discussions

The PAB discusses a diverse range of policy issues.
To give a snap shot:

In April 2001 we received a report on the consultation carried out as part of the DRS review and discussed the Registrant Details to be held on file. We agreed that the new application template would be made available for use on a voluntary basis but would not be mandatory until the new Terms and Conditions for Registrants were introduced. We discussed membership fees.

In October 2003 we discussed the rules for the new “.me.uk “Second Level Domain (or SLD), Internationalised Domain Names and “Automaton abuse.” After discussing proposals for price changes on a variety of issues we resolved to request that the Council of Management only ask the PAB for decisions on price changes when required to do so by the Memorandum and Articles, and simply keep us informed in other circumstances.

In November 2005 we again discussed Internationalised Domain Names and set up a sub committee chaired by me to review and prepare a paper on a Nominet consultation relating to raising industry standards We then considered a paper on how to deal with Domain names registered to dissolved registrants, and discussed the World Summit on the Information Society (WSIS) held in Tunis that month. (Also called “The Tunis Summit”) This may be better known to you as the meeting at which attempts were made to wrest control of the Internet from US dominance.

The Internet Governance Forum

That Tunis meeting also resolved to ask the UN Secretary-General to convene, by the second quarter of 2006, a meeting of a new forum for multi-stakeholder policy dialogue - called the Internet Governance Forum (IGF).

The mandate of the Forum is to:


a.	Discuss public policy issues related to key elements of Internet governance
b.	Facilitate discourse between bodies regarding the Internet
c.	Interface with appropriate intergovernmental organizations and other institutions
d.	Facilitate the exchange of information and best practices,
e.	Strengthen and enhance the engagement of stakeholders in Internet governance mechanisms, particularly those from developing countries.
f.	Identify emerging issues,
g.	Contribute to capacity building for Internet governance in developing countries,
h.	Help to find solutions to the issues arising from the use and misuse of the Internet,
i.	Publish its proceedings.

The Internet Governance Forum, in its working and function, will be multilateral, multi-stakeholder, democratic and transparent. To that end, it should build on the existing structures of Internet governance; Have a lightweight and decentralized structure that would be subject to periodic review. Meet periodically, as required and may be held in parallel with major relevant UN conferences, inter alia, to use logistical support.

The UN Secretary-General was encouraged to examine a range of options for the convening of the Forum, taking into consideration the proven competencies of all stakeholders in Internet governance and the need to ensure their full involvement, and should report to UN Member States periodically on the operation of the Forum.

Following on from this resolution, the UN Secretary General invited forty six people to join the IGF Advisory Group. One of those is Emily Taylor, Director of Legal Services of Nominet. The Advisory Group held its inaugural meeting in Geneva on 22nd and 23rd May 2006, and agreed recommendations for the agenda and programme as well as the structure and format of the first ever meeting of the IGF.

The inaugural meeting of the Internet Governance Forum will be held over four days from 30th October until 2nd November 2006 in Athens. The overall theme of the meeting will be “Internet Governance for Development”, and the Advisory Group has recommended that the programme follows the broad themes of Openness Security Diversity and Access.

The UK is one of only two countries in the world attempting to gain feedback from their stakeholder communities in advance of this meeting. Nominet organised a Parliamentary Event to launch the Internet Governance Forum at the House of Commons on 4th July. Significantly this was attended both by the current Minister the Rt Hon Margaret Hodge MP and by the previous Minister Alun Michael MP. Nominet will be working with the IGF on an event to be held in September and hopefully with the CBI on an event to be held late October.

The IGF is currently calling for contributions to the first meeting in Athens, and for workshop proposals. The deadline is 31st July 2006 to submit a proposal in a UN language other than English and 24th August 2006 for proposals submitted in English. The online workshop proposal form is available here http://www.intgovforum.org/workshops/instructions.php.

Papers will be prepared and translated into all UN languages and submitted to the meeting as official conference documents. I understand that all papers included in the package of official conference documents will be made available in English on the IGF website. Even if not included as part of the official course material, all papers submitted will be made available on the IGF web-site in their original language.

The expected outcome of the meeting will be the reports of the individual sessions and of the meeting as a whole. There will be no negotiated texts such as decisions or resolutions. However the Chairman may wish to make a summing up of the meeting and a full report will be submitted to the Secretary General of the United Nations and will be made available on the web-site. That, and all material used as input to the meeting will remain on record on the IGF web-site.

That is the end of the "commercial break"

I will now look at some recent ADR decisions in the UK. The overwhelming message coming across from all the decisions I have read is that cases are being lost for lack of preparation and lack of evidence.

According to paragraph 2 of the Dispute Resolution Service Policy for the Complainant to succeed it must prove on the balance of probabilities both of the two elements set out in paragraph 2.a of the Policy, namely that:-

(i) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

(ii) The Domain Name, in the hands of the Respondent, is an Abusive Registration.

These tests are not particularly high but they must be proved. I will try to illustrate my point by looking at a number of cases involving the same respondent, a Mr Robert Morrison of Malta.

The first case I shall look at is actually the fourth in the series, but it serves well to set the scene. This is DRS 3237 Telegraph Group Limited v. Robert Morrison

In it Telegraph Group Ltd sought to recover the domain telegraphbooks.co.uk from Mr Morrison.

The complaint is extremely brief and I have it in the handout.

"I confirm that Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights.
"I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration.
"The Complainant has rights in the Domain name because: It is registered at Companies House under the name Telegraph Books Limited and has been since 20/03/1986. It trades under the name Telegraph Books Limited and has done so since 20/03/1986. It has advertised using the name Telegraph Books since 20/03/1986 and spent about £10,000 on such advertisements, examples of which are exhibited at Exhibit (1). It provides a Book Shop service under the name Telegraph Books as evidenced by Exhibit (2)."

The Respondent did not file a response.

The Expert found on balance of probability that the Complainant did have rights in the name Telegraph Books but had not demonstrated that the Domain was an Abusive Registration.

To quote from the decision:

“However, while the Complainant provides some submissions on the question of Rights (a total of 85 words), it offers no submissions whatsoever on the question of Abusive Registration other than the standard submission inserted into the Complaint by Nominet's online system, namely "I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration."

Had the complainant done a little digging among the DRS decisions on Nominet’s website they might have found the case of Equazen UK Limited v Robert Morrison (DRS 2735) which Mr Morrison had also won by default.

In the Equazen case the Complainant claimed to have “held the trademark Equazen since [they] were formed in 1999” and to be “a going concern with a strong business in the health supplements industry”. The complaint comprised a statement of some 150 words unsupported by any evidence. Consequently the Expert said that there was no evidence that there was an Abusive Registration.

To quote from the Expert decision,

"At the very least, a Complainant should explain why it believes the Respondent has registered the Domain Name and/or what use has been made of the Domain Name by the Respondent. Second, a Complainant would be expected to explain why such registration/use constitutes an Abusive Registration under the Dispute Resolution Policy."

Nominet provides comprehensive guidance notes on its website for prospective complainants. These do not form part of the Policy and Procedure, but they seek to provide a helpful and non-technical explanation of how a complaint should be prepared. The guidance notes contain certain key observations and recommendations, for example:- "In our experience the two main reasons why complainants fail in the DRS is... They have not read the DRS Policy or the DRS Procedure or this help... They do not provide any evidence to back up what they say.

A later paragraph contains the stern warning:-

"...State the reasons why you consider the registration of the disputed domain names to be Abusive, in particular you should view paragraph 3 of the DRS Policy..."

In the two cases involving Mr Morrison that preceded the Telegraph case he had actually come off second best.

In DRS 3021 Lintran v Robert Morrison the Complaint (which was submitted by an authorised representative) runs to some 370 words. For reasons discussed later, I cannot describe it as a “model” set of pleadings but it gave reasons and evidence why the Complainant had rights in the name and why they thought the domain constituted an abusive registration.

Remember, the Complainant has to prove on the balance of probabilities: firstly, that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and, secondly that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Rights are defined in the Policy as including, but not limited to, rights enforceable under English law. This is usually demonstrated by reference to a trade mark registration or evidence of active trading using the name or mark in question. The threshold for establishing rights is not particularly high.

The Respondent did not file a Response and therefore had not challenged the Complainant’s assertion that it had Rights in the trading name Lintran. On the evidence supplied, and in the absence of any challenge on the point, the Expert held that the Complainant had a business benefiting from a protectable goodwill, and therefore had Rights in respect of the name Lintran.
An Abusive Registration is defined in paragraph 1 of the Policy to mean a Domain Name which either:

(i) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; or

(ii) Has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

A non-exhaustive list of factors which may be evidence of an Abusive Registration is set out in paragraph 3a of the Policy. I will not repeat them here. A Complaint can succeed without the need to prove any of those factors. However, it is necessary to prove that the definition of Abusive Registration, as set out in paragraph 1 of the Policy, has been satisfied.

There is also a list of non-exhaustive factors which may be evidence that the Domain Name is not an Abusive Registration at paragraph 4 of the Policy. However, there was no Response to the Complaint, so that was not an issue.

The Complainant had said:-
(1) The Domain Name is identical to its trading name.
(2) There is no connection with the Respondent (which the expert took to mean that the Respondent’s activities were not authorised by the Complainant) and
(3) The Respondent failed to respond to an e-mail regarding ownership of the Domain Name, (BUT no copy of that e-mail was filed in evidence)
(4) The Domain Name had been used in such a way that it had already confused people into thinking that it was controlled by the Complainant (Lintran).
(5) The Domain Name diverted to a web site at “sedoparking.com” - which may already be familiar with some of you and
(6) Was advertising competing products.

The Complainant did not expressly refer to any of the factors listed in paragraph 3 of the Policy but whilst the question of confusion could have been relevant no evidence of actual confusion had been filed. However, the decision turned upon whether the Complainant had shown, on the balance of probabilities, that the Domain Name had been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

I have already said that the Domain Name directed internet users to the website at www.sedoparking.com. There, the user was presented with a webpage headed “Lintran.co.uk” and underneath that heading, the statement

“For Lintran try these sponsored links”.

There were links to 10 different websites, some of which appeared to offer products that were in competition with the Complainant’s products. There was also a link to the Sedo website (at www.sedo.com) which states that Sedo is the leading marketplace for buying and selling domain names and websites.

As Sedo makes clear, in its FAQ section, the registrant of a domain name can earn money by parking a domain name with Sedo. Advertisers sponsor the links that appear on the web to which the domain name points. Every time one of the links is clicked by a user, the domain owner earns money.

In the absence of an explanation from the Respondent, the Expert thought that the Respondent parked the domain name with a view to commercial gain. The registration of a domain name that is identical to the trading name of the Complainant (which is protectable in law) and the use of that domain name with a view to commercial gain through a domain name parking service takes unfair advantage of or was unfairly detrimental to the Complainant’s Rights. The Expert therefore found, on the balance of probabilities, that the Domain Name, in the hands of the Respondent, was an Abusive Registration, and directed that it be transferred to the Complainant.

In Guilbert UK Holdings Limited v Robert Morrison (DRS 02775) Mr Morrison had registered guilbertonline.co.uk and again had been using the domain name to point to a website which featured various links to other websites that offered goods in competition with the Complainant. The Respondent did not file a Response in that case, and as in LINTRAN, the Expert took the view that, in using the domain name as the address of a website that offers links to other sites offering goods that are directly in competition with the Complainant, the Respondent was knowingly using the domain name for a purpose that unfairly disrupted the Complainant’s business and that had been the Respondent’s primary purpose and intention when registering the domain name.

In DRS 3474 Grant and Cutler Limited v Robert Morrison, Mr Morrison features for the last time and yet again the Complainant failed to take on board the lessons of history.

The Complaint reproduced here consists of only 85 words and says nothing of why the registration is abusive.

“I confirm that Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights.
I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration.
Established in 1936, Grant & Cutler is a worldwide name in foreign-language bookselling. We have registered, and use, grantandcutler.com but have been unable to obtain the disputed domain name. The registrant of the disputed domain name is using it to host sites which are in commercial competition with us.”

The first two sentences are standard parts of the Complaint which a Complainant is obliged to complete. The Complainant’s entire case is based on the next paragraph. No evidence was filed by the Complainant to substantiate its Complaint, despite the clear recommendation contained in Nominet’s website that a Complainant should

(1) Explain the nature of the right relied upon;
(2) Explain the grounds giving rise to the Complaint; and
(3) file evidence to corroborate (1) and (2).

The Expert’s decision is three pages long.

Remember no evidence was filed by the Complainant to substantiate what rights it relies upon. However, it is Nominet’s standard practice in respect of corporate entities to send the Expert an extract from Companies House, which showed that a limited company known as Grant and Cutler Limited existed. It was only on that basis that the Expert was prepared to find that the Complainant actually had rights in the name and this was with considerable misgivings given the clear guidance set out on Nominet’s website as to the desirability of adducing evidence of ownership of the rights in issue.

The Complainant’s submissions and evidence were wholly inadequate to enable the Expert to determine whether the Domain Name was an abusive registration.

DRS No.3260 MR. MARK GODDEN -V- CARTRONICS may be described as unusual in that it does not involve Mr Morrison, and in that the Respondent actually did file a response.

The Complainant said
(i) It had registered several UK trade marks corresponding to the word CARTRONICS.
(ii) It had tried to contact the Respondent, but had only been able to contact Netbenefit, which refused to supply contact details for the Respondent.
(iii) It was being disadvantaged as a result of the Domain Name cartronics.co.uk not being within its control.

The Respondent said
(i) It bought the Domain Name some time ago because it matched its company name.
(ii) Its company was set up in June 1993.
(iii) The Domain Name was purchased with the intention of setting up a website under that name, although the Respondent has not yet had the opportunity to do so.
(iv) Domain Names are purchased on a “first come, first served” basis

Both the Complaint and the Response were described as “unhelpfully short and vague”

The Complainant’s filed certificates of registration for the UK trade marks CARTRONICS and CARTRONICS.CO.UK. but did not explain why the Domain Name, is an Abusive Registration

No assertions were made as to why the Respondent’s conduct was Abusive. The Complaint merely referred to the difficulties experienced in trying to contact the Respondent, and in particular, the apparent refusal by Netbenefit to provide the Respondent’s contact details.

The Respondent claimed that he purchased the Domain Name because it matched the name of his company, which he started in June 1993. The Respondent’s details did not accord with the limited company address details provided by Nominet nor did the directors’ details provided by Nominet include the Respondent.

No information was provided by the Respondent in relation to the nature of its business, or its ownership of goodwill (if any) in the name CARTRONICS.

The question of whether an Expert should conduct enquiries in order to test either the Complaint or the Response has been considered in many earlier decisions. In Chivas Brothers Limited -v- David William Plenderleith (DRS 292) the Expert was prepared to carry out additional searches to clarify a particular issue. The main reason for doing so was that the Complaint was otherwise fully and properly prepared. The Expert also noted that the searches would take no more than a few minutes to undertake.

Conversely, the Expert in HIT Entertainment -v- Tom Loosemore (DRS 1544) was not prepared to carry out searches that might improve the Complainant’s position because the Complaint itself was defective.

Here the Expert concluded that it was appropriate to conduct a single limited search. Although, the Complaint was not properly prepared, neither was the Response. Moreover, the search enabled a correct decision to be made.

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