Tuesday, 12 August 2008

Draconian increases proposed in copyright penalties

There are several criminal offences in the copyright world, dating back to the time when piracy as we understand the term nowadays started to become a significant problem, in the early 80s. The Copyright, Designs and Patents Act 1988 has had its collection of offences added to with subsequent amendments. Now the list comprises:
  • s.107 – criminal liability for making or dealing with infringing articles etc;
  • s.198 – criminal liability for making, dealing with or using illicit recordings;
  • s.296ZB – devices and services designed to circumvent technological measures;
  • s.297 – offence of fraudulently receiving programmes;
  • s.297A – Unauthorised decoders.
Gowers recommended that the penalties for online and other activities be brought into line, which meant increasing the penalties for online infringements. The fines would only apply to commercial-scale activities. There would be a single maximum penalty on summary conviction of £50,000 for all the offences under the Act, although the consultation paper explores several different ways to implement this. At present, the statutory maximum fine is a mere £5,000, which is generally considered to be an inadequate deterrent where large illegal profits can be made.

Swifter UK trade mark applications

When the then newly-renamed (though it still hasn't really been renames) UK Intellectual Property Office responded to the Gowers Review's recommendation about speeding up trade mark applications by allowing applicants to pay a premium and have their applications examined in 10 days, many practitioners failed to see the point. All that would do was get you to the fixed three-month opposition period a little sooner than would otherwise be the case.

Now the Trade Marks Rules 2008 (see also the guidance notes from the IPO, which appear to have been written by someone who doesn't understand about sentences) have addressed that point. The opposition period will be reduced to two months from 1 October (for applications filed after that date, presumably) so the process of applying for a trade mark will become significantly faster, and paying the premium for quick examination makes more sense. The IPO reckons that 90 per cent of applications are unopposed anyway, and even for those that are three months is an long time: but just in case, a would-be opponent will be able to request an extra month, free of charge, if it can't make up its mind whether to oppose or not. This should also give the UK IPO an edge when competing for business with OHIM.

There are other changes too, but having taken a month from when the Rules were laid before Parliament to report this much I think I had better deal with the rest later.

Monday, 11 August 2008

Some differences between the UDRP and Nominet’s dispute resolution policy

Domain name dispute resolution policies set out to do the same thing, and it would be reasonable to expect that they would achieve this in the same way. The Uniform Domain Name Dispute Resolution Policy, approved by ICANN on 24 October 1999, applies to a number of generic top-level domains (including, most importantly, com) and some of the CC top level domains. It does not include the .uk TLD, and Nominet, the registry for .uk domain names, has its own DRP – and there are differences between the two.

The purpose of this posting is to look at the circumstances that can give rise to a complaint under these two systems. If I ever have a good reason, I will look at differences in the procedures and perhaps compare other dispute resolution policies.

Under the UDRP, a complainant may assert that a domain name is "identical or confusingly similar" to a trade mark or service mark in which the complainant has rights. (Note that the distinction between trade marks and service marks was abolished in UK trade mark law in 1994, and both species of mark are now called simply trade marks.) It doesn't matter where the trade mark is registered, or indeed whether it is registered at all (if the law of the country concerned recognises unregistered trade marks). "Confusingly similar" is an expression known to US trade marks law, but in the UK we speak of "a likelihood of confusion". This is not the place to consider whether there is a difference …

Nominet's policy asks whether "the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name". Interestingly, this approaches the matter from the other direction, though that is unlikely to make a substantive difference to the way it works. That capitalised word "Rights" is defined to mean "rights enforceable by the Complainant, whether under English law or otherwise, and may include rights in descriptive terms which have acquired a secondary meaning." It therefore embraces common law rights as well as registered trade marks – indeed, it reads as if the drafter has taken great care to ensure that common law rights are included.

The UDRP then addresses the rights the registrant of the domain name might have in it. A complaint will be entertained if the registrant has no rights or legitimate interests in respect of the domain name, and the domain name has been registered and is being used in bad faith. Rights and legitimate interests in a name might well arise only after a period of use, so provided that the use itself cannot be impugned the registrant has an opportunity to create for itself a right or legitimate interest in the domain name.

Nominet applies only a single-stage test at this stage, asking whether the registration is, in the hands of the registrant, an Abusive Registration. The definitions clause provides us with:

Abusive Registration means 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 has taken unfair advantage of or has been unfairly detrimental to the Complainant's Rights …

That is a rather different test from that applied under the UDRP, although it does seem to cover very similar ground. There is no express "good faith" criterion, however, which suggests that the Nominet policy is more friendly to trade mark owners. The language of these paragraphs owes a great deal to provisions of the Trade Marks Act 1994 (and therefore in turn to the EC Directive on the approximation of trade mark law): unfair advantage and detriment (though without the qualifying "unfair") are touchstones for dilution of trade mark rights.

That is not the end of the story. Both documents then proceed to discuss the evidence that might support a claim. In the case of the UDRP, of course, this is concerned with evidence of registration and use in bad faith (there being no real need for detail about rights and legitimate interests", while Nominet are concerned with what will support a claim that a registration is abusive. Setting them out side by side is instructive …




b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

3. Evidence of Abusive Registration

a. A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:


i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:


(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

A. for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;


(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

B. as a blocking registration against a name or mark in which the Complainant has Rights; or


(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

C. for the purpose of unfairly disrupting the business of the Complainant;


(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

ii. Circumstances indicating that the Respondent is using or threatening to use the Domain Name in a way which has confused or is likely to confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;


iii. The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;


iv. It is independently verified that the Respondent has given false contact details to us; or


v. The Domain Name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

A. has been using the Domain Name registration exclusively; and

B. paid for the registration and/or renewal of the Domain Name registration.


b. Failure on the Respondent's part to use the Domain Name for the purposes of email or a web site is not in itself evidence that the Domain Name is an Abusive Registration.


c. There shall be a presumption of Abusive Registration if the Complainant proves that the Respondent has been found to have made an Abusive Registration in three (3) or more DRS cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraphs 4(a)(iv) and 4 (c)).

The numbers in the left-hand column are for convenience only. Although the lists are constructed rather differently, there are striking (and one presumably intentional) similarities between them.

The paragraphs in row 1 both make clear that these are non-exhaustive lists. Row 2 introduces three paragraphs in the Nominet policy, the equivalents to which in the UDRP are not treated in quite the same way.

Rows 3, 4, 5 and 6 contain closely-matching pairs of provisions: there is little if any difference between the two policies.

The provisions in rows 7 to 9 are not reflected in the UDRP.

Both policies then set out some exceptions or defences. Again, it is instructive to set them out side-by-side:




c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint.

4. How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration


When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

a. A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is as follows:


(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

i. Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has:


A. used or made demonstrable preparations to use the Domain Name or a domain name which is similar to the Domain Name in connection with a genuine offering of goods or services;


(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

B. been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;


(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

C. made legitimate non-commercial or fair use of the Domain Name; or


ii. The Domain Name is generic or descriptive and the Respondent is making fair use of it;


iii. In relation to paragraph 3(a)(v); that the Respondent's holding of the Domain Name is consistent with an express term of a written agreement entered into by the Parties; or


iv. In relation to paragraphs 3(a)(iii) and/or 3(c); that the Domain Name is not part of a wider pattern or series of registrations because the Domain Name is of a significantly different type or character to the other domain names registered by the Respondent.


b. Fair use may include sites operated solely in tribute to or in criticism of a person or business.


c. If paragraph 3(c) applies, to succeed the Respondent must rebut the presumption by proving in the Response that the registration of the Domain Name is not an Abusive Registration.


d. Trading in domain names for profit, and holding a large portfolio of domain names, are of themselves lawful activities. The Expert will review each case on its merits.


e. Sale of traffic (i.e. connecting domain names to parking pages and earning click-per-view revenue) is not of itself objectionable under the Policy. However, the Expert will take into account:


i. the nature of the Domain Name;
ii. the nature of the advertising links on any parking page associated with the Domain Name; and
iii. that the use of the Domain Name is ultimately the Respondent's responsibility.

It seems that there are three pretty similar defences (rows 3 to 6), one unique to Nominet (row 7) and a few which relate to the matters evidencing abusive registration which appear in the Nominet policy but not the UDRP.


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