Would Nominet cancel a domain registration in these circumstances?

[TechnoBear]

I have a client who runs a business - say, the London Bus Station. The business has been on that site, using that name, for over 100 years, but lay derelict for about a decade, until my client bought it and started to rebuild it a couple of years ago. Ten miles away, the Brixton Bus Station (for example) has been trading on-line, using it's own name as its domain name since 1998. When they hear that the London Bus Station has been bought and will be re-opened, they also register thelondonbusstation.co.uk, and re-direct it to their main domain. While that seems less than friendly, as I understand it they are quite entitled to do so - domains are registered on a first-come, first-serve basis. The London Bus company then registers the .com version of the domain for their own site.

My client has just been advised "by somebody in IT", that he can ask Nominet to cancel the registration of the .co.uk domain to the other party, on the basis that the two businesses are the same and so close together that customers are likely to be misled. While I agree with that argument, (and believe it's probably the reason the other party registered the domain), I wouldn't have thought Nominet would get involved in the dispute. Does anybody know if there is any truth in this? I can't find anything on the Nominet site to back it up.

[ralph.m]

Seems the client does have a leg to stand on, so to speak:

http://www.adlexsolicitors.co.uk/domain-dispute/uk.htm

http://www.nic.uk/disputes/
http://www.nominet.org.uk/disputes/drs/

In Australia, to get a .com.au address, you must have a registered business name and the domain name is *supposed* to relate reasonably to your business name. I'm sure this could be contested in Australia, but the links above suggest to me that it's the same deal in the UK.

[masm50]

Does The London Bus Company have a registered trademark? If so then getting the domain from Nominet would be relatively easy.

[TechnoBear]

@ralph.m: Thanks for those links; they're really helpful - brilliant. I looked at Nominet yesterday and couldn't find anything relevant. I guess I must have been needing my dinner.

@masm50: I don't know for sure, but I doubt it. We don't go in much for that legal stuff round here.

It's one of those cases where the building has been around so long, it's a local landmark. Everybody in "London" - and a great many visitors to the area - know the building as "The London Bus Station" and even if the new owners had decided to change it to "The Chelsea Bus Station" or "Buckingham Palace Coach Park", nobody would have used the new name. That case is easy to prove, so hopefully that will count in my client's favour, even without a trademark.

Thanks for the help.

[othellotech]

so hopefully that will count in my client's favour, even without a trademark.

Without a trademark there is no case, you'll just be wasting the fees to try.
On what grounds are you thinking it's an "abusive" registration - Brixton is in London, so it's not a case of "passing off" and it's not like the concept of "internet" and "domains" is so new that your client shouldn't have though of those thinsg 2 years ago when they started the refit ...

Anyway:
[whois.nic.uk]
No match for "londonbusstation.co.uk".

[TechnoBear]

Anyway:
[whois.nic.uk]
No match for "londonbusstation.co.uk".

Er..no. Ever heard of changing the names to protect the innocent/guilty?

[revsorg]

What ralph.m said. Read everything you can about Nominet DRS, particularly on the Nominet website. It's most helpful to read as many DRS decisions as possible because this gives you a good idea of whether your case might succeed.

Several years ago I successfully defended a DRS complaint - it didn't get very far because the complainant was guilty of wishful thinking - they clearly hadn't researched DRS enough or they would never have started their complaint.

One observation that I've found very helpful regarding Nominet and domain names - timing is of the essence, so make sure you have a really clear idea of the timeline of events and evidence to support this.

Finally, regarding ralph.m's comments about Australian domain registration, the UK system isn't like that, you don't need to register a domain name that is similar to an existing business name. You can register whatever you like, but if someone feels that it infringes on their trademark or copyright then clearly that would be a problem.

[masm50]

I'm not that familiar with Nominet DRS, but if "The London Bus Station" has a name they have been using for years and have a reputation, and the Brixton Bus Station were attempting to confuse people by buying the domain - then you may have rights in "passing off" under UK tort law - something I would imagine Nominet policies to follow.

Passing of cases revolve around whether you can prove that you have built up the reputation and recognition with the name/brand, and your competitor is trying to take business away from people by confusing them as to their affiliation/involvement with that name/brand. It's a little like trademark protection, but you don't have to have registered anything.

Having a quick browse of the Nominet DRS, I would say it sounds like you have a case because "Brixton Bus Station" does appear to have made an "abuse registration" - ie. registered a name you had a claim to to the detriment of your business, and taking advantage of your brand name. The timing of registration would also be useful information here.

I am not a lawyer, but did do a postgrad in it... I'm not saying you will definitely win by any means - just that your claim appears to have at least some merit.

[TechnoBear]

Thanks for all the replies. I've read all the links ralph gave me, and it seems pretty clear my client has an excellent chance of winning this.

("Brixton Bus Station" has been bragging that he registered the domain to prevent my client doing so, and while we'll never be able to prove that, he might have an equally hard time proving he registered it for any other reason. Let's hope so - I detest bullies.)

[ralph.m]

"Brixton Bus Station" has been bragging that he registered the domain to prevent my client doing so, and while we'll never be able to prove that ...

Aw, is it in writing? I guess not. Maybe get someone undercover with a hidden microphone to get them to boast and record it! That would be funny. Or perhaps hack their phones. I hear that's popular in the UK right now.

[TechnoBear]

Great suggestions, ralph, but I think we might try something a little more legal first.

Our current idea is to write to the guy and ask him (politely) to tranfer the domain. Naturally, we wouldn't wish him to be out of pocket, so we are willing to pay the cost of his registration and the Nominet transfer fee. We're sure he won't agree, but hopefully he'll reply with something incriminating. Of course, he might astound us and just hand over the domain...

At any rate, if we do have to take it to Nominet, we have plenty of other evidence in our favour.

[ralph.m]

Do let us know how it goes. This is like waiting for the next series of a TV show.

[TechnoBear]

Glad you're enthralled. I'll keep you posted.