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Not in my domain!

Mar 12, 2012

A few days ago the English High Court handed down a decision which may have important implications for internet governance.  This was the decision of Mann J in Toth v Emirates [2012] EWHC 517.  

Michael Toth is what is sometimes called a domainer.  He had registered the domain name and Emirates airline had brought proceedings under the Nominet procedure claiming that the domain name was abusive.  

A single Nominet expert rejected that complaint, but on an appeal to a three person panel that decision was reversed and the panel ordered that the domain name be transferred to the airline.  

This is when things started to get interesting. Mr Toth brought proceedings against Emirates in the Patents County Court claiming that the court should re-hear the question of abusive registration that had now been decided twice by different Nominet experts.  

An application by Emirates to strike out that claim failed and this decision was appealed to the High Court. At that point Nominet intervened in the case broadly supporting Emirates’ position.  

The High Court judge held that the case should be struck out. Essentially, the reasoning was that the way that the Nominet domain name dispute rules were drafted and structured meant that the court did not have the power to intervene and re-hear the question of whether there was abusive registration.  

Now that has some important practical results. If a complainant is disgruntled, it does not mean that he has no recourse in the courts. For example, he may have a claim under trade mark law and if that succeeds the court may order the domain name to be transferred.  

But what is the disgruntled respondent who has lost his domain name to do?   Perhaps he may have a claim for "unlawful threats”. But a competent lawyer for a complainant should be able to draft his initial letter in such a way as to prevent such a claim.  And even his threats claim succeeds, it is difficult to understand why this would mean that the decision to transfer the domain name should not still stand.  

The outcome of this case was no doubt important to Emirates and Mr Toth.  But even if the decision had gone the other way, it is questionable whether it would have ultimately have been that significant for the ".co.uk" and ".org.uk" domain names that are governed by the Nominet procedure.   

If Nominet was of the view that ordinarily the courts should not overturn these sorts of decisions (and this blogger believes there are good policy arguments why they should not), then it was always open to them to amend their rules to prevent these types of “appeal”.  

So why could the decision be so important? The reason is that there are some similarities between the way in which the Nominet rules operate and those that apply to the UDRP.  It is the UDRP that governs “.com” domain names (as well as ".org", ".net" and various other top level domains) and ".com" domain names generally constitute far more international and far more important "internet real estate".  

Although it does not necessarily follow that the English courts would take the same approach as it did in the Emirates case with a “.com” domain, there are aspects of the reasoning in the Toth case that suggest that they might well do so.   This is where I declare a personal interest. As well as acting for parties bringing or defending domain name proceedings I act as an "expert" or "panelist"  in domain name disputes for WIPO, Nominet and CAC. To date I have decided over 200 cases, either alone or as part of a three person panel, and I am aware of at least two of these cases where proceedings were subsequently brought by a disgruntled respondent in a local court.  One was commenced in the United States and another in Canada.  In each case the previously victorious complainant did not put in an appearance (they were located in different countries and perhaps the cost was prohibitive) and the respondent obtained judgment in default.  

The question that has always puzzled me is what is the underlying “cause of action” that has justified that national court's intervention.  Of course, cases which are decided by default because a party does not appear are unlikely to lead to reasoned judgment. But even in other cases where both parties have put in an appearance there has been a marked absence of analysis of this point.  

A notable and not uncontroversial exception is the Canadian case of Tucows.Com Co. v. Lojas Renner S.A. (2011 ONCA 548). But whether it is right or wrong for national courts to intervene in these sorts of case, the simple fact is that even if English courts have been reluctant do so, other courts in other lands can and will.  And that then raises an important point of principle and policy as much as law.  

Is it really right that if a case is decided against a respondent in respect of a ".com" domain name which is international in scope, the question whether that respondent has any recourse in the courts at all might depend upon the mere accident of where he is located?  

If you are a domainer, isn't the obvious thing to do to base your operations or use registrars who reside in jurisdiction where you know the courts will accept your claims rather than others where they will not (regardless of whether you have any real connection with that jurisdiction)?  And if so, is it really healthy that it is the courts of these countries that will become the de facto courts of appeal in these sorts of cases imposing their judicial norms on the rest of the world?