Article.

Registration of a domain name incorporating a third party trade mark could amount to ‘passing off’

07/04/2016

At a glance

In a recent case, Yoyo.email Limited v Royal Bank of Scotland Group Plc and others [2015] EWHC 3509 (Ch), the High Court confirmed that the mere act of registering a domain name which incorporates a third party trade mark may amount to ‘passing off’ – the legal action where a trader ‘passes off’ its goods and services as those of another, or appears to claim that they are endorsed or connected in some way.

The decision will be welcomed by those seeking to protect goodwill in their brands, but it is also significant for the fact that the Court refused to overturn the decision of a domain name dispute panel.  This should go some way in helping to instil confidence in the outcomes of these procedures as a swift and certain means of challenging the abusive registration of domain names.

In detail

The Dispute

Yoyo.email had registered over 4,000 .email domain names, many of which incorporated big brand names.  These included Royal Bank of Scotland, NatWest Bank and Coutts &Co, who took umbrage at Yoyo.email’s use of their registered trade marks and complained to the ICANN’s Uniform Dispute Resolution Policy (URDP), established to help settle domain name disputes.

Yoyo.email lost this dispute in 2014, with the URDP panel forcing Yoyo.email to transfer ownership in rbsbank.email, rbs.email, natwest.email and coutts.email to the respective banks.  The URDP panel determined that the domain names in question were identical or similarly confusing to trade marks owned by the banks, that Yoyo.email had no genuine, legitimate or fair use of the web addresses, and had registered them in bad faith.  Yoyo.email challenged this decision by appealing to the High Court.

The Judgment

The High Court judgment confirmed that Yoyo.email had no right to any goodwill in the domain names and that the registration incorporating the banks’ trade marks amounted to a misrepresentation to the public.  As a result, Yoyo.email was found to be liable for ‘passing off’.

This decision is an important one for brand owners in the UK, who should gain some comfort from the fact that decisions made by panels under UDRP (or indeed, the Dispute Resolution Service Policy operated by Nominet in the UK) may be considered binding and are not capable of being challenged through the courts.

Sophia Costley
Liz Kilburn

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