Chapter 14 Answer guidance to end of chapter questions

1. Bettr Ltd. (an online gambling site) has always operated from the domains Bettr.com and Bettr.co.uk but they have just become aware of two new websites Bettrbetting.com and Bettrwager.co.uk. The global board is concerned that the owners of these sites may harm their business by damaging their goodwill with existing and potential customers and want advice on what to do next. An investigation has revealed that Bettrbetting.com has been registered with registry GoMammy.com by an Italian gambling service Giochi Sportivi SpA. They intend to use it to run an online casino gambling service similar to Bettr’s. An individual named Peter Bettrwäger has registered Bettrwager.co.uk with the UK registry, 2&2.co.uk. The site currently resolves only to a 2&2 holding page saying the site is awaiting development. There is no other information available on Mr. Bettrwäger’s intentions for Bettrwager.co.uk.

The board have asked for your advice on what actions, if any, they should institute against either or both these domain name registrations. The board is also considering registering the domain ‘.bettr’ under the ICANN New gTLD process so they could offer sites such as slots.bettr, poker.bettr, blackjack.bettr, and roulette.bettr. They want to know what procedure they need to follow.

Write your advice to the board on all these issues.

To answer this question I would expect the student to discuss in order:

  1. The relevant alternative dispute resolution (ADR) procedures for .co.uk and .com domains. These being the respectively the Nominet Dispute Resolution Service (DRS) and the Uniform Dispute Resolution Procedure (UDRP). 
  2. Taking first the Bettrbetting.com site I would expect students to discuss the procedure for raising a claim under the UDRP and to discuss the relevant requirements for an abusive registration – that the domain name is identical or misleadingly similar to a trade or service mark in which the complainant has rights; and (i) the holder of the domain name has no rights or legitimate interests in respect of the domain name; and (ii) the domain name has been registered and is used in bad faith.
  3. Applying these requirements students should discuss whether the Bettrbetting.com domain would be likely to be held to be an abusive registration by discussing para.4 of the UDRP Policy, including the defences in para.4(c) to determine whether a UDRP claims would be likely to be successful.
  4. Then taking Bettrwager.co.uk a similar exercise should be carried out with respect to the DRS. They should examine the DRS rules on abusive registration under Para.3 of the Policy and examine whether Mr. Bettrwäger would have any defences under Para.4.
  5. Finally students should discuss the procedure and costs involved in obtaining a new gTLD.

2. Do you believe the ICANN/Nominet UDRP procedures provide an equitable system for resolving domain name disputes? How could they be improved?

To answer this question I would expect the student to discuss in order:

  1. Explain how the ICANN UDRP operates. Attention should be paid to the mandatory nature of the process, the provision of decisions by ICANN accredited dispute resolution providers, the definition of an ‘abusive registration’ and the procedure for making a claim.
  2.  Explain how the Nominet DRS operates highlighting the differences between this system and the ICANN UDRP. Focus should be on the in-house decision making process, mandatory mediation process, the definition of an ‘abusive registration’ and the internal appeals process.
  3. Students should engage the critiques made by Milton Mueller in his book Ruling the Root, Micheal Froomkin in his paper Wrong Turn in Cyberspace: Using ICANN to Route around the APA and the Constitution and Andrew Murray in his paper Regulation and Rights in Networked Space. Do they suggest a procedure which is unfair and/or iniquitous.
  4. Could ICANN learn from Nominet? Would it be better to bring the decision making process in-house? Should ICANN allow an appeals system? Was the High Court right to find in Toth v Emirates that there was no role for the Court to review decisions of the Nominet DRS? Some decisions may be used to illustrate what may be seen as poor decision making such as Ryanair Ltd v Coulston.

3. Some have suggested the new gTLDs lead to excessive costs as defensive or precautionary measures are taken by brand identities. Are the new gTLDs a positive or retrograde step in your view?

To answer this question I would expect the student to discuss in order:

  1. What the new gTLDs are and how they came about including a detailed discussion of the tendering and registration system. In partocular the pre-screening and objection stages should be explained and discussed.
  2. Particularly the legal rights objection process (open to TM holders) should be discussed and outlined.
  3. The operation of the trademark clearing house should also be outlined and explained.
  4. For second level disputes the Uniform Rapid Suspension system and the Trademark Post-Delegation Dispute Resolution Procedure (Trademark PDDRP) whould be explained and discussed.
  5. Based on the prior discussion the student should address the question of whether the new gTLDs are a positive or retrograde step in your view.
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