Nominet, the organisation that manages the '.uk' top-level domain, has refused to order the transfer of the domain name 'opticalexpressruinedmylife.co.uk' to the owners of Optical Express DCM (Optical Holdings) Limited, finding that the domain name was not an abusive registration, since its purpose was the genuine criticism of Optical Express. This decision differs from an earlier Nominet decision concerning Ryanair criticism website 'ihateryanair.co.uk' as to the degree to which a registrant's commercial gain can taint an otherwise good-faith registration.
Nominet offers a dispute resolution service for '.uk' domain names. If mediation of the dispute fails, it is referred to an independent expert for determination.
Sasha Rodoy is a private individual. She suffered problems following laser eye surgery performed by Optimax, a competitor of DCM, and pursued legal action against it. Consequently, she registered the domain name 'optimaxruinedmylife.co.uk' and set up a website inviting other Optimax patients who had suffered post-surgery problems to contact her.
Rodoy also received complaints from patients of DCM following surgery at Optical Express clinics and was urged to set up a companion site under the domain name 'opticalexpressruinedmylife.co.uk', which she registered on April 19 2012.
Consequently, DCM filed a complaint with Nominet alleging that the domain was an abusive registration for the following reasons:
- The domain implied that DCM's services were not of appropriate standards.
- The purpose of the domain was to damage and disrupt DCM's business.
- Rodoy was seeking to leverage benefits from DCM.
- Rodoy was taking unfair advantage of the OPTICAL EXPRESS name and registered trademark.
- Non-English-speaking users would be unable to differentiate between the domain and the Optical Express domain registered and operated by DCM.
- At the time that the complaint was filed, the domain reverted to a holding page, giving the impression that it was for sale.
- The domain breached DCM's IP rights and Nominet's terms of registration.
Pursuant to the Nominet dispute resolution service policy, a domain name is considered an abusive registration if it is used in a manner that takes unfair advantage of or is unfairly detrimental to a complainant's rights. A non-exhaustive list of factors that may be relevant in assessing whether a domain name is an abusive registration is also set out in the policy.
One such factor is the degree to which the commercial motives of a registrant can undermine the purported purpose of the domain name and website. For example, the expert in Nominet's 'ihateryanair.co.uk' decision (DRS 08527) said that:
"criticism websites are essential in a democratic society, but if they draw in users using a domain name containing a company's brand then they must be wholly devoted to honest criticism and open discussion and not potentially tainted by commercial concerns."
In that decision, it was determined that the £322 of advertising revenue generated through 'ihateryanair.co.uk' was sufficient to taint the registration and for it to be considered an abusive registration.
The expert in the DCM decision took a different view, holding that where the commercial concerns in respect of the use of a domain name are de minimis and clearly incidental, it is not always unfair for a critic to obtain some income (eg, general advertising or donations) to maintain its website.
Having considered the relevant factors, the expert determined that the domain name was not an abusive registration. He found that the expression 'X is unfair' is likely to be perceived by an ordinary reader as an expression of personal opinion and emotional hyperbole, and that people are entitled to differences of opinion; therefore, the domain name was not intrinsically unfair. Further, no organisation – however high its standards – can avoid adversely affecting someone, and Rodoy had legitimate reason to champion the cause of patients adversely affected by laser eye surgery performed by DCM. As to the allegations that Rodoy had commercial motives, the expert found no evidence to support this. The evidence showed that the only benefits that Rodoy sought to exploit from DCM (and successfully obtained) were on behalf of adversely affected patients, and the expert decided that the use of criticism to achieve such benefits would hardly qualify as unfair.
This decision is a useful exploration of the factors that Nominet will consider when assessing abusive registrations for criticism websites incorporating a complainant's trademark in the domain name. As the expert summarised, a registration will not be abusive if:
"the Domain Name itself makes it abundantly clear that there is no connection between the Domain Name and the trade mark holder and leaves internet users in no doubt as to what type of content to expect when accessing the corresponding website…[and where] the Domain Name does not exactly match the Complainant's trade mark and neither is it likely to cause any confusion in the minds of internet users."
However, in light of this expert's approach conflicting with that of the expert in the 'ihateryanair.co.uk' decision, there is some uncertainty going forward as to whether Nominet will view de minimis commercial interests as tainting otherwise bona fide registrations.
For further information on this topic please contact Paul Joseph or Henry Priestley at RPC by telephone (+44 20 3060 6000), fax (+44 20 3060 7000) or email ([email protected] or [email protected].
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