Toth v Emirates & Anor

A contractual dispute-resolution scheme may assign a question exclusively to an expert, leaving no scope for a court rehearing of that question. Provisions preserving court proceedings may concern underlying legal rights rather than permit a fresh determination of the scheme’s own question. A court’s declaratory jurisdiction cannot circumvent that allocation of functions. In a standard-form contract with numerous adherents, widely available internet material will not ordinarily form part of the shared factual background unless actually known or notorious.

Mr Toth registered “Emirates.co.uk”. Emirates invoked Nominet’s Dispute Resolution Service. An expert initially decided in Mr Toth’s favour, but an appeal panel reversed that decision and ordered transfer of the domain name to Emirates.

Mr Toth sought, among other relief, a declaration that the registration was not abusive under the Nominet policy. Emirates applied to strike out that claim. The Patents County Court refused. The central issue on appeal was whether the Nominet rules permitted a de novo court determination of abusive registration and whether a declaration could provide an alternative route.

1. Appeal allowed. The declaration claim was struck out. The Nominet Dispute Resolution Service and Procedure created a self-contained contractual mechanism under which abusive registration was for the appointed expert and, on appeal, the appeal panel.
2. The scheme created no free-standing cause of action based on abusive registration. The contractual process dealt with both determination and remedy. The court therefore had no basis for conducting a parallel or subsequent rehearing.
3. References to court proceedings concerned underlying legal rights, such as trade mark or passing-off rights, or the effect of proceedings once commenced. They did not confer a right to relitigate abusive registration. Paragraph 17c addressed the effect of proceedings; it did not authorise them.
4. The scheme’s purpose reinforced that construction. It was intended to provide a closely regulated, cheap and quick dispute-resolution procedure. A de novo court hearing would undermine that purpose.
5. The WIPO report, UDRP materials and foreign decisions did not form part of the relevant factual matrix. Internet availability did not make them shared knowledge. The general declaratory jurisdiction could not be used to achieve indirectly what the contract assigned exclusively to the expert process.

• High Court (Chancery Division) — [2012] EWHC 517 (Ch): appeal allowed and the declaration claim struck out.
• Patents County Court — HH Judge Birss QC refused to strike out the declaration claim.