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15 February 2013
Although the dotcom boom is history, the ownership of a domain name is still critical for commercial and non-commercial entities. The discretion associated with the grant of a domain name to any individual resides with the various registrars located around the world. These are essentially commercial institutions, not government bodies. The relevant body in the UK is Nominet UK.
When a domain name registration falls into the wrong hands in the UK, Nominet, by its terms and conditions of application, requires a registrant to submit to its mediation procedure.
So is there a difference in approach between the courts and decisions handled by the Nominet dispute resolution procedure? Take the recent decision of Nominet's Appeal Panel in Hanna Barbera Productions v Graeme Hay, which concerned a domain name applicant's registration for 'scooby-doo.co.uk'. This had been filed with the intention of using the name as an address for a tribute site to the fictional cartoon character Scooby-Doo. The panel allowed Hanna Barbara to assert its rights to the Scooby-Doo domain name, but had this case come before the courts, Hanna Barbara would have probably not succeeded on title, irrespective of the merits of its case on the question of abusive registration.
Nominet's definition of an abusive registration includes one that was registered or acquired in a manner which, at the time of the registration or acquisition, took unfair advantage of, or was unfairly detrimental to, the complainant's rights. That does not marry up with the parallel basis for the recovery of a wrongfully filed trademark - namely bad faith - which currently requires dishonesty or something that falls short of it. So there appears to be fundamental differences in the approaches for resolving title disputes associated with registered trademarks when compared with what would appear to be their cyber cousins, domain name registrations. But according to the dispute resolution service, there is no further right of appeal. So where do disgruntled appellants go next? Is the avenue of judicial review open to them?
The question is whether the courts will take jurisdiction in judicial review over the decisions of commercial entities of the nature of Nominet. The principles are set out in the landmark DataFin case, which was concerned with the court's jurisdiction over the Panel on Takeovers and Mergers. The panel was extra-statutory. The court propounded a number of factors to answer the question of amenability to judicial review. Does it fulfil a role otherwise supplied by the Government? Are its processes "underpinned" by statute? Is it a monopoly or near monopoly? Has the person seeking to review the body agreed to be bound by the decision?
Where does Nominet sit within this spectrum? Acceptance into its scheme is dependent on the submission of a registration application and the relevant fee. Membership of the domain name dispute resolution service is compulsory. If a company wants to register a domain name in the UK, which is plainly important for many, if not all, businesses, then Nominet controls the market. The business of Nominet satisfies the first and third arms of the test identified above, but the Government would almost certainly regulate the activity as Nominet exercises extensive powers that amount to a monopoly or near monopoly.
The one factor against the courts taking jurisdiction is that anyone who wants to avail themself of Nominet's services does so by way of contract. So is this sufficient to deprive the court of jurisdiction and let Nominet off the judicial hook? A company has no alternative but to use Nominet's services. The website says: "Nominet is officially recognised as the .uk domain name registry by the internet industry, users and the UK Governmentâ€¦" The courts ought to take jurisdiction in this important area. Whether they will or not remains to be seen. If they do, then the usual judicial review grounds of illegality, irrationality and unfairness will apply.
Hay might have got a better deal with his Scooby-Doo domain name if judicial review was available to challenge decisions of the Dispute Resolution Appeal Panel.