UK: Whose Domain Is It Anyway? - A Report On The Recent One In A Million Domain Name

Last Updated: 23 January 1998
The recent case of Marks & Spencer Plc v One In A Million and others and the related cases brought by Ladbrokes, J Sainsbury Plc, Virgin Enterprises Ltd and BT has at last shed some useful light on the position of domain names and, in particular "domain name hi-jacking", at least in England. There have not yet been any significant reported cases in Scotland.

The case is probably the most significant case in England on domain names, following as it does the legal actions involving Harrods, Prince, and Pitman Training Ltd. Whilst all these actions have provided some assistance they have all been limited in some fashion. For example whilst Harrods was able to get an injunction to restrain the use of the domain name, which had been registered by a third party, the actual hearing was not attended by the defendant. Similarly, in the Pitman case the companies disputing the ownership of the domain name had both been trading for several years using the "Pitman" name and thus the case related principally to whether one company had developed, in only a few months, sufficient rights in the domain name (as opposed to their company name) to have a claim for passing off. This contrasts with the US where there have been a number of prominent cases relating to the ownership of and misuse of domain names involving companies such as McDonalds and Hasbro.

The case itself involved two companies (One In A Million and Global Media Communications) and their directors who had "speculatively" registered, through the bodies responsible for domain name allocations in the UK and US, a number of domain names which were either the same as or very similar to the names or brands of a number of extremely well known companies. The domain names they had registered had included,, and Except for one, none of the domain names were actually being used by the defendants as addresses for web sites. They had however been offered for sale or hire, for example via Global Media Communication's web site. Some of the domain names had also been offered for sale directly to the companies to which they appeared to relate.

Not surprisingly, the companies concerned brought legal proceedings, in each case alleging passing off and trade mark infringement. The recent hearing was of the companies' respective applications for summary judgement - which were successful.

Although the defendant raised some interesting arguments, the Judge hearing the case was quite categorical in deciding against them. For example, the defendants had suggested that there was nothing wrong in merely registering the domain names to stop the companies from doing so and that other parties (such as a, fictitious, John Sainsbury) might have perfectly legitimate reasons for wanting to purchase the domain names.

The judge was not impressed by these arguments. On the issue of passing off the Judge accepted that whilst the mere registration of the domain names was not passing off the Defendants had made it clear that there was a threat (whether it be express or implicit) that if the companies concerned did not buy the domain names they might well fall into the hands of those who would use them to the companies' detriment. Indeed the Judge said:

"Any person who deliberately registers a domain name on account of its similarity to the name, brand name or trade mark of an unconnected commercial organisation must expect to find himself on the receiving end of an injunction to restrain the threat of passing off.."

In relation to the claim of trade mark infringement the various companies had relied upon the argument that the defendants had (in each case) used an identical or similar trade mark to their respective registered trade marks, in respect of "dissimilar" goods or services to which their trade marks were registered, thereby taking unfair advantage of (or being detrimental) to the distinctive character of their registered trade marks, without due cause - this being an infringement of their trade marks under Section 10(3) Trade Marks Act 1994 ("TMA").

Although the Judge discussed, but did not (unfortunately) decide, some interesting points on the meaning of this particular section of the TMA he decided that the defendants had infringed the Plaintiffs' registered trade marks as the various domain names were either identical or similar to the relevant registered trade marks and that the defendants had clearly threatened to use the domain names to deceive (or to make them available so that they could be used in such a way).

Although these cases may be the subject of an appeal - as leave to appeal was granted in mid-December 1997 - they do provide some helpful guidance on domain names, at least as far as the commercial "hi-jacking" of domain names which are the same as or similar to well known brand names is concerned. It is likely that the cases, unless they are overturned on appeal, will act as a strong deterrent to any UK based companies thinking of following One In A Million's lead.

There are, however, a number of other domain name issues which have yet to be addressed in the UK, for example how the Courts will handle more evenly competing claims, such as where the companies concerned already trade using similar names but in different products or services. Traditionally many of these issues have been addressed, in trade mark law, through the use of different categories of goods and services and the strictly territorial protection provided by registered trade marks. These concepts do not easily translate into the internet world. As a result we can expect to see more litigation.

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This bulletin is correct to the best of our knowledge and belief. It is, however, written as a general guide; it is essential that relevant professional advice is sought before any specific action is taken. Garretts is a member of the international network of law firms associated with Arthur Andersen and is regulated by the Law Society in the conduct of investment business.

Garretts associate firm Dundas & Wilson acted for Shetland News in this significant piece of internet litigation. If you would like further information please contact us.

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