Toth v Emirates
| Jurisdiction | England & Wales |
| Judge | Mr Justice Mann |
| Judgment Date | 07 March 2012 |
| Neutral Citation | [2012] EWHC 517 (Ch) |
| Docket Number | Case No: IHC/830/2011 |
| Court | Chancery Division |
| Date | 07 March 2012 |
and
[2012] EWHC 517 (Ch)
Mr Justice Mann
Case No: IHC/830/2011
IN THE HIGH COURT OF JUSTICE CHANCERY DIVISION
ON APPEAL FROM THE PATENTS COUNTY COURT
Royal Courts of Justice
Rolls Building, Fetter Lane, London, EC4A 1NL
Emma Himsworth (instructed by DLA Piper LLP) for the Applicant
Jonathan Turner (instructed by Hansel Hensen) for the Respondent
Philip Roberts (instructed by CMS Cameron McKenna LLP) for the Intervener
Hearing dates: 14 th & 15 th February 2012
Introduction
This is an appeal from a decision of HH Judge Birss QC sitting in the Patents County Court. The action before him concerned a dispute resolution procedure created by Nominet UK, a non-profit making organisation which registers national internet domain names such as those ending ".co.uk." The claimant, Mr Toth, registered the name "Emirates.co.uk" in 2002. The defendant ("Emirates") is the well-known airline, based in United Arab Emirates. In 2008 it initiated proceedings under Nominet's rules in which it complained about Mr Toth's registration and sought a transfer of the domain name to itself. That went for an expert determination under the rules, and the first expert determined the dispute in favour of Mr Toth. There is an appeal route, and the appeal panel reversed that decision and ordered Mr Toth to transfer the domain names to Emirates. Mr Toth then commenced proceedings in the Patents County Court seeking:
(a) a declaration that Emirates has made groundless threats of proceedings for trade mark infringement;
(b) a declaration that Mr Toth's use of his domain name does not infringe certain trade marks;
(c) a declaration that "the Domain Name is not an abusive registration in the hands of the Claimant within the meaning of the Nominet Policy properly construed; and"
(d) a declaration that the appeal panel decision was not properly reached because of certain questions of bias.
He also claims certain associated injunctions.
Emirates applied to strike out the claim on various bases and the matter came before HH Judge Birss QC on 13 th June 2011. He concentrated on the declarations in relation to abusive registration and the allegedly improper decision. He declined to strike out the first of those two claims, but struck out the second. Emirates appealed from the first of those two decisions, and Mr Toth cross-appealed on the second.
This judgment deals only with the first of those appeals. It was agreed that debate on the second could usefully await my decision on this part of the appeal.
Emirates originally sought to bring their appeal in the Court of Appeal. Permission was given by Jacob LJ. Nominet then sought to intervene, and directions were given about that by Lewison LJ. Shortly after that it was appreciated that an appeal should in fact have been to the High Court and not the Court of Appeal, and directions were given transferring it to this court. Thus the matter arrived before me with Mr Toth, Emirates and Nominet (as Intervener) all represented by counsel.
The issues on this part of the appeal centre around whether the relevant Nominet rules permit Mr Toth to have any form of re-hearing as to whether or not he committed an abusive registration within the meaning of those rules, or whether that question is to be determined only by the expert (and appeal panel). There are also questions about the court's discretion to grant a declaration.
The relevant rules
A person who seeks and obtains a domain name registration with Nominet enters into a contract with Nominet. The relevant terms and conditions of that contract are set out in a document, and the terms relevant to the present appeal are as follows:
"This contract includes the DRS policy, the DRS procedure and the rules. You can get copies of these from our website or from us. Other policies we refer to do not form part of this contract and may change at any time."
The reference to "DRS policy" and "DRS procedure" are references to two documents which lie at the heart of this appeal, some of whose terms appear hereafter. Other provisions of the main contract are as follows:
"4. You have various responsibilities set out generally in this contract. You must also:…
4.2. Notify us at once about any court proceedings which involve the domain name…
7. By entering into this contract you promise that:…
7.4. by registering or using the domain name in any way, you will not infringe the intellectual property rights (for example, trade marks) of anyone else…
The dispute resolution service
14. You agree to be bound by:
14.1. the DRS Policy and DRS Procedure; and
14.2. if there is a dispute, the version of the DRS Policy and DRS Procedure (available on our website) which applies at the time that proceedings under the dispute resolution start, until the dispute is over.
…
17. We may (but do not have to) transfer, cancel, alter or amend the domain name, put it in a special status or prevent its renewal:…
17.5. to carry out the decision an expert has made under our dispute resolution service; or
17.6. if we receive a complete and valid court order which we or you (or both) must obey, or if not making the changes the court orders would be a contempt of court by us or you.
…
37. This contract is a legally binding document…These conditions together with the rules, DRS Policy and DRS Procedure, are the entire contract between you and us for the domain name, and replace all previous contracts, understandings and representations about this domain name, whether written or spoken."
Nominet has always offered a "first come, first served" approach to the allocation of domain names. It carries out no investigation as to the entitlement of any applicant to use the domain name. As case law testifies, disputes are capable of arising where, for example, use of a domain name by A seems to conflict with a trade mark owned by B. Those disputes can be tried in the courts in the normal way (under the court's jurisdiction in relation to trade marks, passing-off and other similar areas of law), but Nominet provides its own procedure for dealing particularly with complaints about domain names. That procedure is set out in a document called "Dispute Resolution Service Policy" ("DRS"), the relevant iteration of which is Version 3 propounded on 29 th July 2008. This is a core document in the present appeal and I must set out a number of its provisions.
Paragraph 1 contains definitions:
" 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;
Complainant means a third party who asserts to us the elements set out in paragraph 2 of this Policy and according to the Procedure…
Decision means the decision reached by an Expert and where applicable includes the summary decision and decision of an appeal panel;…
Expert means the expert we appoint under paragraph 8 of the Procedure…
Rights means rights enforceable by the Complainant, whether under English law or otherwise, and may include rights in descriptive terms which have acquired a secondary meaning."
The next paragraph deals with the "Dispute Resolution Service":
"2a. A Respondent must submit to proceedings under the DRS if a Complainant asserts to us, according to the Procedure, that:
i. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii. The Domain Name in the hands of the Respondent, is an Abusive Registration.
b. The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities…"
Paragraphs 3 and 4 indicate various facts and matters which are relevant to the existence or non-existence of an abusive registration. They are a long list. Paragraph 7 deals with the "Appointment of Expert and Summary Decision":
"7a. If the Respondent has submitted a response…we will notify the Parties that we will appoint an Expert when the Complainant has paid the applicable fees…The Expert will come to a written Decision."
Paragraph 10 is headed "Appeal, repeat complaints and availability of court proceedings" and contains a provision (paragraph 10d) heavily relied on by Mr Jonathan Turner, who appears for Mr Toth. The relevant parts read:
"10a. Either Party will have the right to appeal a Decision under paragraph 18 of the Procedure. The appeal panel will consider appeals on the basis of a full review of the matter and may review procedural matters.
…
d. The operation of the DRS will not prevent either the Complainant or the Respondent from submitting the dispute to a court of competent jurisdiction.
e. If a complaint has reached the Decision stage on a previous occasion it will not be reconsidered (but it may be appealed, see paragraph 10(a) and the Procedure paragraph 18) by an Expert. If the Expert finds that the complaint is a re-submission of an earlier complaint he or she shall reject the complaint without examining it.
…
g. A non-exhaustive list of examples which may be exceptional enough to justify a re-hearing under paragraph 10(f)(iii) include:
i. serious misconduct on the part of the Expert, a Party, witness or lawyer;
ii. false evidence having been offered to the Expert;
iii. the discovery of credible and material evidence which could not have been reasonably foreseen or known for the Complainant to have included it in the evidence in support of the earlier complaint;
iv. a breach of natural justice; and
v. the avoidance of an unconscionable result."
Paragraph 11 deals with the...
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