Waterfront Partner Decision prompts calls for UK review of Domain Name law

On 26 November 2017, The Telegraph on Sunday published an exposé of the activities of Wesley Perkins, described as “one of Britain’s most prolific cybersquatters”. His business involved registering domain names that businesses had inadvertently allowed to expire and then demanding payment from the previous owners. He has also been known to divert the domain name to pornographic material in the meantime.

According to the article, Mr Perkins had used the alias Al Perkins and fictitious company names “TrevMedia of Jersey” and “The Cloud corp of the Cayman Islands” to disguise his identity. Mr Perkins appears to have admitted that his business practices amounted to “extortion” but also claimed that what he was doing was “legal” and was “just business” .

The case study mentioned in The Telegraph on Sunday article to illustrate Mr Perkins’ activities is that of Little Acorns Fostering agency. Little Acorns allowed its domain name to expire in August 2017. Mr Perkins then registered the Domain Name and asked for £8,700 for its return. The case subsequently came before the World Intellectual Property Organisation.

Waterfront partner Matthew Harris was then asked by WIPO to give a decision on the merits of the case. Matthew is well known expert in Domain Name law and has decided over 350 domain name disputes to date.

In his decision dated 18 October 2017 (the full text of which is available here) Matthew gave a detailed description of Mr Perkins’ activities and ruled that the Domain Name should be transferred back to Little Acorns. At the end of his decision he commented as follows:

“ .. The Panel would also add that it is unfortunate that the business practices of Mr. Perkins appear to have carried on for the most part unchecked for many years, notwithstanding the multiple findings made against him in UDRP proceedings and the brazen nature of his conduct. Particularly, concerning is that Mr. Perkins seems intent on taking advantage of the fact that frequently it will make more commercial sense for a victim of his cybersquatting activities to pay him monies to retrieve the Domain Name than to incur the legal fees and the cost associated with proceedings under the Policy. It is a point he expressly made in inter-party correspondence referred to in the Michael Heald case, supra,and also appears to underlie his email to the Center (again set out above) in which he suggested the Complainant was “dumb” in having paid for a complaint when they could have “bought the [Domain Name] cheaper” from him.

.. Notwithstanding the fact that in general terms the Policy has operated extremely effectively since its introduction, that this can occur would appear to be inherent in a system where there are no direct adverse costs or consequences to a respondent of losing even multiple proceedings under that Policy and no matter how extreme a respondent’s behaviour.

… It may be that in such circumstances it is national law that should be called upon to provide a more robust remedy. It appears to the Panel that there is at least a real question as to whether Mr. Perkin’s actions in this case fall foul of the English law of passing off as applied to domain name cases in, inter alia, Yoyo.Email Ltd v Royal Bank of Scotland Group plc [2015] EWHC 3509. However, given that this question falls outside of the scope of the Policy or the remit of the Panel, the Panel will refrain from making any further comment in this respect.”

The Yoyo case referred to by Matthew confirmed that English civil law can provide a remedy against cybersquatting in some circumstances. But it would appear that Mr Perkins activities have prompted the question whether this type of cybersquatting should also be the subject of the criminal law. According to the Telegraph on Sunday, Damian Collins Conservative MP and chairman of the digital, culture and sport select commitee is now calling for an urgent review into whether British law is capable of protecting business from “the curse of the cybersquatter” and has suggested that it be made a criminal offence “to hijack the digital identity of people’s business in this way”.