Brand owner beats cybersquatter...again!

In this recent case the High Court has reinforced the seminal case of One in a Million and confirmed that a registrant may be liable for passing off by merely registering a domain name including a third party trade mark, regardless of the registrant's future plans for use of the domain name.

Background

This case involved Royal Bank of Scotland Group (RBS) and a business, Yoyo.email, which has registered approximately 4,000 domain names rooted at the .email domain. The domain names involved in the dispute included:

• rbsbank.email
• rbs.email
• natwest.email
• coutts.email

In August 2014, the World Intellectual Property Organisation (WIPO) held that the domain names Yoyo.email registered were identical or confusingly similar to trade marks owned by RBS, and that Yoyo.email's intended use of the domain names was not genuine, legitimate or fair and that the company had registered them in bad faith. Consequently, it was decided that the domain names should be transferred to RBS.

High Court proceedings

Disappointed with WIPO's decision, Yoyo.email applied to the court for a declaration that it had been "guilty of no wrongdoing" and was entitled to relief. In a cross application, RBS requested that the court strike out Yoyo.email's claim and counterclaimed for passing off. In turn, Yoyo.email sought to bring a further counterclaim for revocation of RBS' trade marks on grounds of non-use in respect of electronic mail services.

Decision

In relation to Yoyo.email's request for declaratory relief, the court held that the UDRP did not "afford any jurisdiction" to the High Court to "act as an appeal or review body" from the domain name dispute resolution panel's decision in August 2014. The judge held that clause 4k of the UDRP (which states that the parties are not barred from taking the matter to court after its conclusion) did not give rise to a separate cause of action in favour of the Yoyo.email, nor did it give the court any jurisdiction to act as an appeal or review body in relation to the UDRP decision.

This is in line with the previous case of Toth which held that the court did not have jurisdiction to hear appeals of DRS policy decisions. (By way of reminder, Nominet's DRS policy is applicable in relation to ".co.uk" domain names whilst WIPO's UDRP is relevant to various other gTLDs, such as ".email" in this case.)

The judge then turned to consider RBS' counterclaim for passing off, which involved an analysis of the leading case in this area BT v One in a Million from 1999. Readers will recall that in the One in a Million case, the defendants had registered a large number of domain names which included the names or trade marks of various well-known brands without their consent, and none of the domain names were linked to active sites. One of the issues under consideration was whether the mere registration and ownership of a domain name may constitute passing off. It was held that this was actionable. This decision has been followed here with the judge ruling that Yoyo.email was liable for passing off.

The judge went on to say that he did not need to consider Yoyo.email's business plan as to what they proposed to do with the domain names, as the act of passing off had occurred at the time of registration. By appearing on the publicly available WHOIS register, there was a misrepresentation that a registrant was associated with the goodwill in the name.

In short

With the continued growth in available gTLDs, this area of law remains a hot topic and an area which must be closely monitored by brand owners.

This decision will be welcomed by brand owners in the continued fight against cybersquatting. Whilst the world of the Internet has grown exponentially in the last decade or so since the 1998 decision, it is comforting that the leading case of One in a Million remains good law.

Case details at a glance

Jurisdiction: England and Wales
Decision level: High Court of Justice
Parties: Michael Toth and Emirates & Nominet
Citation: [2012] EWHC 517 (Ch)
Date: 07 March 2012
Full decision: http://dycip.com/tothvemirates

Jurisdiction: England and Wales
Decision level: High Court of Justice
Parties: Yoyo.email Ltd and Royal Bank of Scotland Group Plc and Others
Citation: [2015] EWHC 3509 (Ch)
Date: 02/12/2015
Full decision: http://dycip.com/yoyovrbs

Parties: British Telecommunications Plc and One in a Million Limited
Citation: [1999] 1 WLR 903