Judge bans Internet name dealers

 

The wrangle over Internet "domain names" - the essential part of Web site and email addresses (see Computimes, September 1st) - has ended up in the English courts. Two cheeky dealers in domain names, registered under the titles of trading giants such as Sainsbury and Virgin have been banned by the High Court from infringing trademarks and "passing-off".

Richard Conway and Julian Nicholson made a speciality of registering domains like ladbrokes.com, marksandspencer.com, spice-girls.net and even buckinghampalace.org - without the consent of the owners of the names, and then offering them for sale or hire to potential users.

Conway wrote to Burger King offering to sell it the name burgerking.co.uk for £25,000 plus VAT, otherwise it would be available for sale to any other interested party.

In a case brought by five companies whose names were under threat - BT, Marks & Spencer, Ladbrokes, Sainsbury and Virgin - Deputy Judge Jonathan Sumption QC granted injunctions against the pair and their businesses, and ordered them to pay £65,000 legal costs. He also directed them to take steps to have the disputed names assigned to the complaining companies.

The judge said: "The history of the defendants' activities shows a deliberate practice followed over a substantial period of time of registering domain names which are chosen to resemble the names and marks of other people and are plainly intended to deceive.

"The threat of passing-off and trade mark infringement, and the likelihood of confusion arising from infringement of the mark, are made out beyond argument."

The two men and their businesses - One in a Million Ltd, Global Media Communications and Junic - registered names with recognised organisations such as Network Solutions Inc of Virginia and Nominet UK, and then offered them for sale to potential users much in the same way as company registration agents.

The names offered by Global included macdonalds.co.uk, sundaytimes.co.uk and thetimes.co.uk.

The court was told such names could only have four uses:

To sell to the named company or organisation, which might be prepared to pay a high price to have it under its control.

To sell to a third party, perhaps for the purpose of deceiving the public.

To sell to someone with an interest in the name, such as a solicitor called John Sainsbury or the Government of the British Virgin Islands.

Or to leave the name unused and unsold, thus blocking its use by others - including those whose name or trade mark it comprised.

The judge stressed that the mere registration of a name was not, in itself, passing-off or infringement of a trade mark. But the obvious threat was there and injunctions should be granted to prevent it.

"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, and the injunction will be in terms which will make the name commercially useless to the dealer," he said.

After the case, Nicholson said he considered the judge's decision a crucial one for the future of the domain registration system. "It can only be a very important decision. Surveys have shown that 41 per cent of domain names included parts of other people's trademarks. The judgment doesn't really address that."

Before the case was heard, Nicholson had argued that he and Mr Conway were conducting a business just as a collector of rare postcards would. "If we had a rare postcard and someone else said they wanted to buy it from us, we would consider selling it to them," he said.

Now he says he is unsure about the future of One in a Million Ltd, which has no assets. "It is unlikely that any claim for costs could be met."

Conway, who lives in London, said later that he and Nicholson, both 23, were looking into the possibility of an appeal. The whole thing was "just a bit of fun, really", he said, it had caused no-one any real harm.