1. Dispute Resolution
Dotable is not part of a dispute between a trademark owner and a Registrant. We cannot arbitrate between two disputing parties.
We are the biggest domain name registrant in the UK and we have an established policy on dealing successfully with domain name disputes. This page will tell you what you can and cannot do and how we will react to your various actions.
Current legal precedence has established that you CANNOT,
1. Take legal action against the internet / domain name provider
2. Take legal action against Nominet, CORE or Networks Solutions
3. Take legal action against suppliers or supplier’s suppliers
The following actions available to you fall into 3 categories. We can however only help you with abusive sites that are hosted physically on our servers. We are only trying to help you by explaining the various options and our advice should at no stage substitute your need for legal representation. We do however often receive formal threats from solicitors that misunderstand this new issue, but there is not and has been no successful prosecutions against us. Since we are the UK's biggest registrant we do however see it as our duty to provide you with some basic guidelines that will help you with your dispute.
2. Passing off
If you or your client feel that someone has registered a name with the intention of passing off on your trading names or marks, your only options is to take legal action against the owner of the domain name (not us). We cannot help you and you will receive no response if you wrongfully threaten us with legal action. It will only show us that you have misunderstood the issue and that you are not acting in the best interest of your client. We advise solicitors to take direct contact with the owner by email or other means first and try and establish if there is a real case or not. In most cases the best action is to offer the owners a small sum to cover their expenses to find another name and settle the case quickly. To prove a passing off case if difficult and can be a long drawn 2-3 year exercise and we cannot help you at all until you have a successful prosecution or injunction against the owner (not us). If you go to court and win the domain name, we will help you move the domain to another provider or we will offer you to host it with us. If you win a preliminary injunction not allowing the owner the use of the domain name. We will temporarily stop hosting the domain until the case is closed. If you are a solicitor and think that we will be scared about bogus or unsubstantiated passing off claims, we will call your bluff and we will know that you are not looking after the best interest of your client. We have already been successful in getting legal costs paid without having to counter sue and we will charge your firm for time spent and legal costs working on your case. Your firm will receive monthly invoices with the amount of hours spent at the rate of £250 an hour.
Having a .com does not automatically give you right to a .co.uk. To even try and claim a domain you must own a UK registered trademark and you must be trading under that name in the UK.
One of the best examples is nextcard.co.uk which was registered by a 17-year old student in England using our services. Nextcard.com is one of the biggest credit card companies in USA and tried to claim that we were passing off by offering internet services because our temporarily holding page was displayed and it contains links to internet services they might also want to offer or was offering. This was of course the usual legal nonsense with the intention of getting a free response, but it was without legal merit or even a remote chance of succeeding against us and resulted in them backing down when we called the solicitor's bluff. The student has now a greeting card site. The lesson learned is that you cannot do anything without a registered trademark dated before the domain and that you also have to be actively been trading under that name in the UK. The best solution is to agree a reasonable price with the legal owner. We simply ask you not to waste our time.
Taking legal action against Dotable is like taking legal action against Companies House for registering a company name.
Before you start claiming that Dotable is passing off because a customer used our services and have decided to point the domain to our free holding page, please read this excerpt from the 1-in-million case.
The mere creation of an 'instrument of deception', without either using it for deception or putting it into the hands of someone else to do so, is not passing off. There is no such tort as going equipped for passing off. It follows that the mere registration of a deceptive company name or a deceptive Internet domain name is not passing off.
3. Trademark violation
If you own a Registered trademark in classes 35, 38 and 42 dated before the domain name was registered you stand a much better chance of success. However, we stress that the domain name must match the trademark exactly and that all other cases will refer to passing off. In other words, your chances of success are almost impossible if for example you owned the trademark IBM (ibm.com) and wanted to dispute the domain name ibn.com or ibem.com. In any case you cannot involve us in the process, we are not the owner or have any powers to transfer ownership of a domain name. If you wrongfully involve us in the case, we will already know that you have no experience in the field and are not looking after the best interest of your client. Having a trademark does not guarantee rights to a domain name and unless you have a clear-cut case like "burgerking.com" you are facing an uphill battle. The One in a Million case is the legal precedence that established that you can successfully win a case against an owner of a domain name, not an Internet provider. Referring to this case while threatening us will at best show your inexperience.
Your trademark must match the domain exactly
4. Abusive site
This is where we can help. We do not allow our services to be used for racial/sexual/political discrimination, pornography, harassment, spam/junk mail among others. This does not mean that we will act just because someone has put up a site that says certain things you do not like or if you have an unsubstantiated passing off claim and unless we determine that the site is outside what we allow we cannot help you. It has already been established that we cannot be seen as publishers of the content, since we have no control over what people put on their websites. You cannot take legal action for libel or slander against an internet provider that does not actively monitor people’s websites. An internet provider is not like a newspaper that can be found liable for what employed journalists publish. We only accept notice of abusive sites by recorded mail to our registered head office.
We do not allow pornography, junk mail, racial/sexual discrimination
5. Short words
Having a trademark like for example Tesco cannot guarantee that no one else uses this word inside a word and we cannot ban every single occasion unless the word is completely unique and cannot be misspelled. If we banned all domains that included the word Tesco, we would violate other people’s rights to domains like "competescore.com" or "deloittescotland.co.uk" and it is impossible for us to know every single word combination in the world for every single trademark and we have to deal with short names on a case by case basis. For example, someone registered tesco-direct.com which is a clear-cut violation and abuse of Tesco's rights and of course we assists in situations like this promptly.
6. Generic names
Almost any generic word has been registered as a trademark in one or more classes. For example, someone has registered the word "ENGLAND" as a trademark. This does not give rights to all domain names including the word ENGLAND nor does it give any rights to england.com or england.co.uk and falls under the what is known as concurrent use and trying to enforce such a mark would risk revocation by the Patent Office. Another example could be the word "EASY". Someone has registered this word as a trademark, but they have to accept concurrent use of everything including words like "EASYNET". You are able to get registered trademarks on generic words, but you cannot enforce a generic mark.
7. Who can transfer a domain name
Only the owner or domain name database. We cannot cancel/delete a domain name from the domain name databases. Only the databases like Nominet/CORE/NSI and the legal owner has the physical powers to do this. We also have no powers to transfer ownership. We cannot help. If you contact the databases directly, they will advise you the same as we do, which is to take contact with the owner or take legal action against the owner (not them or us).
8. Domain name resolution services - our view
Using the various domain name resolution services might sound like a good idea. However, our experience tells us that this is a long and costly affair just like taking the matter to court. The best approach is to contact the owner directly and see if you can work out a solution privately. The human touch will always remain and when you actually talk to someone directly things seems always to get settled quicker. If you start out with threatening letters you might not reach your goal as fast as if you try and negotiate a solution. If you still think that you can take legal action against Dotable / Nominet / CORE / NSI you have probably not learned anything from this document at all and we will respond with the following reply.
If you still ignore our advice and would like to commence actions against Dotable, please contact us first by courier to our registered address or dispute fax 020 7987 0424.
9. Dotable's standard dispute response
REPLY TO _______________
SENT VIA FAX _______________
TODAYS DATE _____________
LETTER DATED ______________
10. Standard reply to domain name disputes
DOTABLE DOES NOT CENSOR, MONITOR OR HAVE DIRECT CONTROL OVER DOMAIN NAMES WHEN OUR CLIENT REGISTERED THIS DOMAIN NAME, THEY STATED THAT TO THEIR KNOWLEDGE, THE DOMAIN NAME DOES NOT VIOLATE TRADEMARKS OR OTHER STATUTES. IF YOU WANT TO DISPUTE THE OWNERSHIP OF THIS DOMAIN NAME, YOU SHOULD SEEK LEGAL ADVICE. UNDER THE DATA PROTECTION ACT 1984 WE CANNOT DISCLOSE INFORMATION ABOUT OUR CLIENTS WITHOUT BEING LEGALLY OBLIGED TO DO SO. UK DOMAIN NAMES HAVE NO REGISTRANT ADDRESS LISTED IN THE NOMINET DATABASE AND DOTABLE APPEARS AS THE ADMIN/TECH/BILLING CONTACT. WE WILL DISCLOSE THE REGISTRANT DETAILS IF A WRIT IS FILED WITH THE HIGH COURT AGAINST THE REGISTRANT ON OUR ADDRESS. WE SUGGEST THAT YOU CONTACT THE REGISTRANT FIRST BY SENDING SEVERAL EMAILS TO LINK AND TRY TO RESOLVE YOUR DISPUTE WITHOUT NOMINET/LEGAL ACTION. DOTABLE IS NOT PART OF THE DISPUTE AND WE CANNOT HELP YOU IN ANY OTHER WAY. WE WILL THEREFORE NOT PARTICIPATE IN ANY CORRESPONDENCE OTHER THAN THIS STANDARD REPLY, BUT WE WILL COMPLY WITH ANY COURT RULING. REGISTRANT DETAILS FOR US DOMAINS IS PUBLIC INFORMATION AND CAN BE LOOKED UP IN THE DATABASE.
Dotable is a low-cost volume domain name supplier registering thousands of domains every month for a wide range of clients from private users to FTSE-100 companies. The company specialises in credit card automation. Clients control their services using automatic online update and ordering systems.
11. Internet name provider can't be sued
Court says Network Solutions not liable for squatters
Update: 8:41 PM ET Oct 25, 1999
SAN FRANCISCO (AP) -- A company that registers Internet domain names can't be sued for approving the name of a "cybersquatter" that violates another firm's trademark, a federal appeals court ruled Monday.
Network Solutions Inc. (NSOL: news, msgs), the principal registrar of names ending in .com, doesn't control or monitor the millions of names it approves and is not legally responsible when the approval results in a trademark infringement, said the 9th U.S. Circuit Court of Appeals.
The ruling recognizes the need for speedy, high-volume registrations of domain names, said Ronald L. Johnston, lawyer for Network Solutions.
Unlike the government office that takes a year or more to review and approve trademarks, "Network Solutions doesn't review the names that people are trying to register," Johnston said. "This is critical to the growth of the commercial Internet."
This is the latest of several recent rulings on cybersquatters, who take advantage of first-come, first-served Internet domain registration by claiming prominent names in hopes of getting companies to pay large sums for them. The court, which oversees federal courts in California and eight other Western states, has generally rejected major companies' claims of broad legal rights to protect their trademarks.
Monday's case involved a suit by Lockheed Martin Corp., whose well-known Skunk Works laboratory in Palmdale designs aircraft for the government. Network Solutions, one of several companies that register domain names after screening for duplications, has registered a dozen names containing some variation of "skunk works," a phrase previously trademarked by Lockheed Martin.
Lockheed Martin, based in Bethesda, Md., sued Network Solutions in 1996 after getting no response to its request to cancel the registrations. The suit sought damages for trademark infringement and an order barring all such domain names except Lockheed's.
U.S. District Judge Dean Pregerson of Los Angeles dismissed the suit and was upheld by the appeals court in a 3-0 ruling.
Network Solutions exercises no more control over the domain names it registers than the U.S. Postal Services provides when it sends mail to a street address, said the opinion by Judge Stephen Trott. He said a company accused of taking part in trademark infringement is responsible only if it performed "direct control and monitoring" of the infringing action.
David Quinto, lawyer for Lockheed Martin, said Network Solutions was performing the same role as the trademark office and should be judged by the same rules.
"We're not asking NSI to screen every domain name, but once we come to NSI and tell them about an infringing domain name, NSI should be liable" for failing to act, he said.
Shares of Network Solutions rose 2 3/16 to close at 94 1/16 Monday.
12. Dispute procedures
Procedures for disputes are already in place, please go to these pages if you want to read more:
1. Network Solution Dispute Resolution
2. Nominet Dispute Resolution
3. UK - Patent Office