Fremantle Media Ltd v McLlroy, Court of Appeal - Nominet UK Dispute Resolution Service, August 20, 2008, [2008] DRS 5711

Resolution Date:August 20, 2008
Issuing Organization:Nominet UK Dispute Resolution Service
Actores:Fremantle Media Ltd v McLlroy


Nominet UK Dispute Resolution Service

DRS Number 05711

Parties: Fremantle Media Limited v J Mcllroy

Decision of Independent Expert

  1. Parties

    Complainant: Fremantle Media Limited

    Country: UK

    Respondent: J Mcllroy

    Country: UK

  2. Domain Names

    This domain names are referred to below as the "Domain Names".

  3. Procedural Background

    A hardcopy of the Complaint was lodged with Nominet on 12 May 2008. Nominet validated the Complaint on the same date and notified the Respondent. In this correspondence Nominet informed the Respondent that it had 15 working days within which to lodge a Response to the Complaint. A hardcopy of the Response was submitted in time on 3 June 2008. This was in a non-standard format because it exceeded the word limit (of 2000 words) provided for by the Nominet Dispute Resolution Procedure (the Procedure). The Respondent was invited to resubmit its Response in the correct format by 6 June 2008 which it duly did. No Reply was served. The dispute not having been resolved in mediation, on 23 July 2008 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy (``the Policy'').

    Sallie Spilsbury, the undersigned (``the Expert'') has confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as Expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the Parties which might appear to call into question her independence and impartiality.

  4. Outstanding Formal/Procedural Issues

    The Expert was faced with a number of procedural issues.

    Both Parties in this matter sought to a greater or lesser extent to submit correspondence and other documentation outside of the Policy and Procedure. Clause 13a of the Procedure provides that the Expert is not obliged to consider any statements or documents from the Parties which she has not received according to the Policy (i.e. the Complaint, Response and any Reply). The Expert is mindful that the DRS Policy and Procedure was devised to offer an efficient and transparent method of resolving disputes in the .uk Top Level Domain. In order to achieve this objective it is important that parties to a dispute use the standard DRS process. Otherwise the complaints process will become unmanageable. In accordance with the Policy and Procedure the Expert is therefore making her decision based on the following documentation only:

    · Complaint

    · Response

    · Complainant's Response to the Expert's Request for a Further Statement under clause 13a of the Procedure

    · Respondent's Responses to the Complainant's Further Statement (dated 15 and 18 August 2008)

    Applications under 13b

    In addition to the submissions which were put forward outside of the DRS Procedure attempts were made to introduce non-standard submissions under clause 13b of the Procedure.

    On 28 July 2008 The Complainant sought permission to make a non-standard submission. Clause 13b of the Procedure provides as follows:

    Any communication with us [Nominet] intended to be passed to the Expert which is not part of the standard process.... Is a ``non-standard submission''. Any non-standard submission must contain as a separate, first paragraph, a brief explanation of why there is an exceptional need for the non-standard submission. We will pass this explanation to the Expert, and the remainder will only be passed to the Expert at his or her sole discretion. If there is no explanation, we may not pass on the document or information''.

    Before the Expert had considered this request the Respondent also sought to make a non-standard submission. This was brought to the attention of the Expert on 7 August 2008.

    As a preliminary to reaching her full decision the Expert had to decide whether to accept one of both of these non-standard submissions.

    The Complainant's Non Standard Submission

    The Complainant's explanatory paragraph reads as follows:

    Further to the submission of [the Complainant's] Complaint Form on 7 May 2008 and the Respondent's formal response of the 23 May 2008, we received from the Respondent a further letter, dated 11 June 2008. The Respondent's letter covers details and raises issues not previously dealt with by the Respondent in his formal response and to which we feel it only proper to respond in light of our decision to appoint an expert in this matter. Further, in light of further research conducted post receipt of the Respondent's letter we have acquired further evidence of passing off on the part of the Respondent. It is for these reasons that we seek the admission of a further statement and the annexes attached thereto under the ``exceptional need'' criteria outlined in s13.b of the Dispute Resolution Service Policy.

    Having considered the matter the Expert has decided that the Complainant has not demonstrated an ``exceptional need'' for the non-standard submission. This is for the following reasons:

    · The letter of 11 June 2008 to which the Complainant refers is not part of the formal submissions in this matter. For the reasons set out above the Expert is taking no account of documentation provided outside of the DRS Procedure. It follows that it is unnecessary for the Complainant to make a response to the points made by the Respondent in his letter.

    · To the extent that the additional evidence of passing off does not arise from the letter of 11 June 2008, then it is submitted a number of weeks out of time for any Reply and not far short of 3 months after the original Complaint. The explanation is that further research has been carried out by the Complainant. If parties were routinely permitted to add to their submissions in order to strengthen them the efficiency of the DRS service would be severely jeopardised. The Procedure calls for the parties to show ``exceptional reasons'' for further submissions and in the view of the Expert these should generally take the form of a matter that could not be reasonably foreseen by the parties (e.g. a significant change of use of a disputed domain name by the Respondent). This does not appear to be the case here.

    · The Complaint document already includes a reference to passing off and the Expert is accordingly already on notice that this is an issue that she must consider when making her decision.

    The Respondent's non-standard submission

    The Respondent's explanatory paragraph reads as follows:

    Further to the submission of Fremantle's (the claimant) Dispute Resolution Service Complaint Form on the 7th May 2008 and the Claimant's S13.b Explanatory paragraph response of the 28th July 2008. The Claimant covers raises issues not previously dealt with and I feel I should be given the opportunity to reply to the Expert. While it is not my responsibility to prove anything as I've been instructed by Nominet it is Fremantle who have do this, I believe I have already proven our rights to the name on many levels, not least being ``totally-transparent'' that the site is in no way associated with this show, clearly shown on the footer of ``every page'' on the site. The alleged further evidence of suggested passing-off is untrue and in part libellous. It is for these reasons that I seek the admission of a further statement, while unlike the Claimant I do not believe there is an ``exceptional need'' or a case to be answered. I would however like the opportunity, should the expert believe it has to go that far, to answer points raised in the Claimant's full submission document, criteria outlined at S13.b of the Dispute Resolution Service Policy, which I regard as further evidence of a cynical attempt to discredit me. I contest this is a blatant case of ``reverse domain name high-jacking'' and an attempt to gain a valuable domain that they knew was registered and in development where they have no rights.

    In reality this is not a substantive request to make a non-standard submission. It is made in anticipation of the Expert allowing the Complainant's 13b request. This has not been allowed and therefore the pre-emptive request by the Respondent is irrelevant.

    On 11 August 2008 the Expert sought clarification of a number of facts that were referred to briefly in the Complaint document but which required amplification. The Expert's request was made pursuant to paragraph 13a of the Procedure and was in the following terms;

    ``The Expert requests a Further Statement from the Complainant providing information on the matters set out below (all of which arise from the Complaint document).

  5. Please supply a brief description of the GOT TALENT format (in particular as it relates to BRITAIN'S GOT TALENT).

  6. On what date did NBC announce America's Got Talent (paragraph 11 of the Complaint)?

  7. What is the relationship between the Complainant and Simco Limited (paragraph 10 of the Complaint)?

  8. Please substantiate the assertion that the format rights and the goodwill in the GOT TALENT format belong to the Complainant (note this query relates to title only. No further statements are requested concerning the existence of goodwill).

    The Complainant is requested to supply the above information within 3 working days of receipt of this request.

    Thereafter the Respondent shall have 3 working days to respond to the information provided (should the Respondent wish to make a response).

    The Parties should note that information provided pursuant to this Request must be limited to the precise issues identified by the Expert. Superfluous information or submissions will be disregarded by the Expert.''

    Both Parties responded within the designated timeframe. Where relevant the Parties' submissions are recorded in section 5 of this decision. The Expert has disregarded superfluous submissions that do not directly relate to her specific requests.

  9. The Facts

    The Complainant

    The GOT TALENT format

    The Complainant is the joint owner of the GOT TALENT...

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