Can Trade Mark Protection Respond to the International Threat of Cybersquatting?
James P Hutchinson
Brunel University
jph@jameshutchinson.com
The Winning Entry for the Lord Lloyd of Kilgerran Undergraduate Prize 2000, for the best undergraduate entry in information technology and law.
The Lord Lloyd of Kilgerran Prize is run by BILETA (British & Irish Law, Education & Technology Association). Further information about the prize is available on BILETA's web site .
This Prize Essay was published on 28 February 2001.
Citation: Hutchinson J, 'Can Trade Mark Protection Respond to the International Threat of Cybersquatting?', Winning Entry, Lord Lloyd of Kilgerran Undergraduate Prize 2000, 2001 (1) The Journal of Information, Law and Technology (JILT) <http://elj.warwick.ac.uk/jilt/01-1/hutchinson.html>. New citation as at 1/1/04: <http://www2.warwick.ac.uk/fac/soc/law/elj/jilt/2001_1/hutchinson/>.
1. Introduction
The Internet has revolutionised the computer and communications world unlike any earlier medium. It combines the capabilities of the computer, radio, telegraph and telephone. It provides the individual with the ability to gather and disseminate information with other users irrespective of their geographic location. In recent years, business has been swift to embrace this new technology, leading to inevitable legal conflicts.
From a foundation of just two computers in 1969, there are now an estimated 304.36 million Internet users worldwide, with 83.35 million of them in Europe alone[ 1 ]. This vast consumer base has helped to drive the demand for domain name registration.
The misappropriation of trade marks on the Internet is a mounting dilemma for trade mark owners. Cybersquatters purchase domain names that are recognisable trade marks, and then attempt to sell them back to the trade mark holder. This paper will examine how trade mark protection has coped with the introduction of the Internet, and the problems of trade mark piracy.
1.1 The Domain Name System
All files on the Internet, be they a web page or a sound file, have their own unique address called a Uniform Resource Locator (URL). This URL can be expressed in a user-friendly form such as 'blackacre.com'. Each domain name can be separated into two components: 'blackacre' is the Second Level Domain (SLD) and is registered by the organization that wishes to employ this specific address; and 'com' is the Top Level Domain (TLD) that is usually a geographic or non-geographic description.
2. Trade Mark Protection
2.1 The function of Trade Marks and Trade Mark Law
Trade mark protection performs a variety of economic purposes. The traditional justification for trade mark protection is that it allows the consumer to distinguish between competing products and services. This 'origin function' does not necessarily relate to the geographical origin of the goods or services, but its commercial origin. Many academics have been critical of this traditional view, as often a consumer does not know, or is not concerned, about a product's commercial origin. It has been suggested that marks symbolise qualities associated by the consumer to certain goods and services. This 'origin or guarantee' function, provides the consumer with information that the product will meet their requirements for quality or type of product. The third function of trade mark protection is the 'investment or advertising function'. Companies invest heavily in advertising and promoting their trade marks and that outlay deserves protection. An instance of this is an e-commerce company that invests massively in advertising and promotion while not expecting to breakeven for many years.
2.2 Passing Off
Passing off is the common law mechanism for protecting the goodwill between a business and its customer. In Reddaway v Banham [ 2 ], Lord Halsbury stated:
'nobody has any right to represent his goods as the goods of somebody else'[ 3 ].
Passing off seeks to protect the 'origin function' of the trade mark, so that the customer knows the commercial origin of the product. The protection lasts only as long as the business is operated, and it cannot be transferred to another trader unless the business is reassigned at the same time. Passing off is therefore restricted to injury during the course of trade. For example, in the case of Day v Brownrigg [ 4 ], the court rejected a house-owner's application for an injunction to restraint his neighbour from calling his house by the same name.
Lord Diplock identified five features that must be present in order to establish a valid cause of action for passing off in Erven Warnink v Townend (the 'Advocaat' case)[ 5 ]. These were:
1) ' a misrepresentation;
2) made by a trader in the course of trade;
3) to prospective customers of his or ultimate consumers of goods or services supplied by him;
4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence); and
5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so'[ 6 ].
It is important to note, that it is not sufficient that a member of the public is confused between the products of two companies; the plaintiff must be able to provide evidence that it is their goodwill that is being misappropriated.
In Reckitt & Colman v Borden [ 7 ](the 'Jif Lemon' case), the plaintiff sold lemon juice in yellow plastic lemon-shaped containers with 'Jif' embossed on the sides and neck. The defendants similar shape containers, bearing the mark 'ReaLemon' amounted to passing off. Lord Oliver believed that the average housewife could easily purchase the defendant's product, believing it to be 'Jif Lemon'. In his speech, Lord Oliver defined the three elements that a plaintiff must show in order to prove passing off:
'First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying 'get-up'... as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff... Thirdly, he must demonstrate that he suffers, or in a quia timet action, that he is likely to suffer damage ...'.
2.3 The Law of Registered Trade Marks
The registered trade mark system is based on the same objective as passing off, which is to protect against deceptiveness as to origin and consequently safeguard goodwill. Section 1(1) of the Trade Marks Act 1994 defines a trade mark as:
'any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings'[ 8 ].
In passing off infringement occurs when there is deceptiveness as to the origin of the goods however, under the law of registered trade marks, infringement only occurs when certain requirements have been met[ 9 ]. These requirements are primarily that the mark has been correctly registered, and that the defendant's use of the mark falls within the definition of infringement set out in section 10 of the Act. The registered trade mark system makes it easier for a company to enforce its trade mark, as with a registered trade mark, there is no need to prove that the mark is distinctive and when claiming infringement, it is not necessary to demonstrate the defendant's deceptiveness.
3. Domain Name Disputes
3.1 The Applicability of Passing Off to Domain Names
The registration of 'harrods.com' prompted the first case on domain names in the United Kingdom. In Harrods Ltd v UK Network Services Ltd [ 10 ], the domain name was registered to an individual with no connection to the renowned department store. Harrods had wanted to use this name to advertise both their company and their goods on the Internet. They issued proceedings against the registrant on the grounds of trade mark infringement and passing off. Summary judgement was granted by the court, and the registrant was ordered to hand the domain name over to Harrods. Mr Justice Lightman found that the registrant's potential use of the domain name constituted 'trade mark infringement and passing off'[ 11 ].
While Harrods Ltd v UK Network Services Ltd [ 12 ] was undoubtedly groundbreaking as far as initiating domain name dispute cases in the United Kingdom, it is was not entirely satisfactory. The court was clear in its view that registration of the domain name was a breach of section 10 of the Trade Marks Act 1994, nevertheless it left confusion in regard to the claim of passing off. Bainbridge[ 13 ] contends, 'it is arguable whether it is passing off'[ 14 ]. It is likely that the domain name was registered not for the purposes of misrepresenting goods, but rather to sell it to Harrods Ltd. It is unfortunate that the defendants failed to attend the court, and so this point was never fully analysed. Mr Justice Lightman's decision that it was passing off appears to be at odds with the precedent in the 'Advocaat' case. Mr Justice Lightman's decision is difficult to reconcile with Lord Diplock's second characteristic that the misrepresentation must be ' made by a trader in the course of trade [ 15 ].' The registrant had not created a website linked to the domain name, and had not attempted to sell the domain name to Harrods Ltd.
3.2 The 'First Come First Served' Principle
Nominet UK allocates domain names on a 'first come first served'[ 16 ]basis. Such a rule has led to difficulties where two companies are seeking the same domain name. In Pitman Training Ltd v Nominet UK [ 17 ], two companies of common origin came into conflict over the domain name 'pitman.co.uk'. Pitman Publishing, a division of Pearson originally applied to Nominet UK for ownership of the domain name but failed to make practical use of it. Due to an administrative error, the domain name was then re-allocated to the plaintiff. After complaints from the first registrant, the domain name was passed back to Pitman Publishing. The plaintiff then commenced proceedings against Pitman Publishing on the grounds of passing off, tortious interference with contract and abuse of process.
The court rejected all three claims. Pitman Training had maintained that by creating a website it had acquired goodwill that warranted protection from Pitman Publishing. Scott V-C rejected this claim on evidential grounds, as only two emails had been received in response to the website[ 18 ]. When the two businesses had been divided in 1995, the agreement had given the use of the 'Pitman' name in trade to Pitman Publishing. Pitman Publishing would therefore be the only company that could acquire goodwill from the use of the domain name, as its use by Pitman Training would be a breach of the 1995 agreement. Pitman Training's argument that there was a tortious interference with contract also failed, as Pitman Publishing had a legitimate commercial interest to protect. Pitman Publishing's threat to sue Nominet UK if the domain name was not reassigned to them was not an abuse of process. Scott V-C held that it was not an actionable abuse of process to threaten legal proceedings, as the motive behind such proceedings would have been to recover the domain name.
Inter company conflict can also arise on an international basis. In Prince PLC v Prince Sportswear Group Inc [ 19 ], two companies vied for the use of 'prince.com'. Prince PLC is an Information Technology service provider, based in Hammersmith[ 20 ]. For two years they had operated a website using the domain name 'prince.com'. Prince Sportswear of New Jersey wrote to the plaintiff, asserting that Prince PLC's use of the domain name 'prince.com' was an act of infringement, unfair competition and a dilution of its federal trade mark. The American company threatened legal action unless Prince PLC transferred the domain name to them and agreed not to use the name 'prince' in future.
Prince PLC took Prince Sportswear to the High Court and sought relief under section 21 of the Trade Marks Act 1994. This provision concerns remedies for groundless threats of infringement proceedings. Section 21 (1) states:
'Where a person threatens another with proceedings for infringement of a registered trade mark... any person aggrieved may bring proceedings for relief under this section'[ 21 ].
Ruling in favour of Prince PLC, Mr Justice Neuberger warned businesses that they should be careful when alleging infringement, as:
'If he makes use of unjustified threats then he only has himself to blame if those proceedings initiated by the person being threatened result in relief being granted against him'[ 22 ].
After Prince Sportswear's defeat, they filed suit in the Federal District Court of New Jersey. Mr Justice Neuberger recognised that the defendant might seek a retrial in another jurisdiction and thus the international nature of domain names could lead to contradictory decisions:
'It is obviously quite possible for an English court to reach the conclusion that the principal letter, in so far as it constitutes a threat of infringement proceedings in relation to the defendant's UK-registered trade mark is an unjustified threat, and for a US court to reach the contrary conclusion so far as the defendant's US-registered trade marks are concerned'[ 23 ].
Prince Sportswear's action was consequently withdrawn, and Prince PLC continue to use the 'prince.com' domain name. Remarking on the case, Sally Tate the Joint Managing Director of Prince PLC, commented:
'In the real world we could have co-existed with Prince Sports Group in trademark classes 9 and 28 and Prince plc in class 41 for computer services. How could an IT business in the UK be confused with a tennis racket manufacturer in the US? Only in cyberspace'[ 24 ].
4. Domain Name Piracy: Cybersquatting
4.1 Cybersquatting in the United States
The act of cybersquatting occurs when someone, frequently a private individual, registers valuable trade marks as domain names for the objective of selling to the trade mark owner the entitlement to the domain name[ 25 ].
The most celebrated domain name case in the United States is Panavision v Toeppen [ 26 ]. The dispute involved an infamous cybersquatter, Mr Toeppen, who registered the trade marks Panavision and Panaflex as domain names, and then attempted to sell them to the Panavision corporation. Panavision argued that use of the domain names diluted their trade marks. Mr Toeppen claimed that his actions were not covered by trade mark dilution, as they were non-commercial. Senator Orrin G. Hatch, the Chairman of the Senate Judiciary Committee, maintained that regulation of trade mark dilution should not:
'prohibit or threaten noncommercial expression, such as parody, satire, editorial and other forms of expression that are not a part of a commercial transaction'[ 27 ].
In a momentous decision, the court held that by registering the domain name, and then offering it for sale, Toeppen was involved in a commercial transaction:
'Toeppen's use made a commercial use of the Panavision trademarks. It does not matter that he did or did not attach the marks to a product. Toeppen's commercial use was his attempt to sell the trademarks themselves'[ 28 ].
Toeppen's activities acted as a ' spoiler '[ 29 ]. The decision in Panavision v Toeppen showed the United States' courts willingness to apply intellectual property rights to the Internet. Toeppen's actions were designed to prevent Panavision from operating on the Internet under their own trade marks, unless they were willing to pay for the privilege.
In the recent case of Avery Dennison Corp v Sumpton [ 30 ], the American District Court faced a situation similar to that in Panavision v Toeppen [ 31 ]. In this dispute, the defendant had registered twelve thousand domain names[ 32 ]. The registrant licensed his domain names as email addresses, two of which included 'avery.net' and 'denninson.net'[ 33 ]. Avery Dennison Corporation issued proceedings on the grounds of trade mark infringement and trade mark dilution. The District Court found that purely registering the domain name fulfilled the requirement of commercial trading in the name[ 34 ]. Unlike previous cybersquatting cases, there were two complicating ' new wrinkles '[ 35 ], as the court christened them. Firstly, the defendants licensed their domain names as email addresses, which they claimed were not used in a trade mark function. Secondly, the domain names were selected because they were common surnames and not because they might be valuable trade marks. The court found that the trading of recognised trade marks was sufficient for trade mark dilution, even if the domain name was not sold but just licensed[ 36 ]. It also held that trade mark law applied equally to the Internet as elsewhere, bringing surnames under the same umbrella as trademarks. The court recognised that by including common surnames it would be preventing the registration of an individual's own name if there was a parallel trade mark[ 37 ]. Vergani contends that this decision highlights the increasing move towards the Internet as a commercial medium, and less as a means of communication[ 38 ].
4.2 Cybersquatting in the United Kingdom
Courts outside the United States have also shown that they are willing to protect trade marks without evidence of actual use of the domain name. In Harrods Ltd v UK Network Services Ltd [ 39 ], the court took a flexible approach to passing off, and found that even though the defendant had not attempted to use the domain name he was still trading on the goodwill of Harrods Ltd.
This issue was revived in the landmark case of Marks & Spencer PLC v One in a Million Ltd (the 'One in a Million' case)[ 40 ]. The plaintiffs were well known companies, each possessing considerable goodwill. They brought five actions for summary judgement against the defendants who had all registered domain names in anticipation of selling them to the plaintiffs. These domain names included: 'j.sainsbury.com'; 'virgin.org'; 'ladbrokes.com'; 'bt.org'; 'cellnet.net'; and 'marksandspencer.co.uk'. Mr Jonathan Sumption QC, sitting as a Deputy High Court Judge could foresee only four uses for the domain names that the defendants had registered[ 41 ]. Firstly, the domain name may be sold to the organisation whose trade mark or name is being used. Secondly, the domain name may simply be retained by the defendants thereby preventing the company from registering its own name. Thirdly, it may be sold to a third party that is unconnected with the name so that he may attempt to sell it to the trade mark holder or use it for the purpose of deception. Finally, it may be transferred to someone with his own connection with the name, for instance: to an individual named Jonathan Sainsbury.
The defendants had not attempted to make use of their domain names, but following the case of Singer v Loog [ 42 ], it was held to be sufficient for passing off for a person to put an 'instrument of deception' into the hands of others. His Lordship stated that:
'The essence of the tort of passing-off is a misrepresentation to the public... liable to lead them to believe that the goods and services offered by the representor are those of the Plaintiff. However, the tort is also committed by those who put or authorise someone to put an 'instrument of deception' into the hands of others'[ 43 ].
We would expect from this declaration that no passing off could have been committed by the defendants, as there had been no misrepresentation to the public and they had not placed or authorised an instrument of deception into the hands of others. This point was recognised by His Lordship as:
'the mere creation of an 'an instrument of deception', without either using it for deception or putting it into the hands of someone else to do so, is not passing off'[ 44 ].
Nevertheless, he decided that the defendant's actions were adequate for a quia timet injunction, as they were intended to infringe the plaintiff's rights. A quia timet action is one by which a person:
'may obtain an injunction to prevent or restrain some threatened act being done which, if done, would cause him substantial damage, and for which money would be no adequate or sufficient remedy'[ 45 ].
His Lordship's decision to grant a quia timet injunction relied on two cases where such injunctions had been granted to restrain threatened rather than an actual tort: Direct Line Group Ltd v Direct Line Estate Agency [ 46 ] and Glaxo PLC v Glaxowellcome Ltd [ 47 ]. As in One in a Million , both of these cases revolved around companies that had been set up yet had not started to commercially trade. In Direct Line Group Ltd v Direct Line Estate Agency [ 48 ], Laddie found that companies under the names of Manchester U Ltd, Cantona French Brandy Ltd and Jean Paul Gautier Ltd, had been set up with the intention of operating on the plaintiffs' goodwill and it was likely that passing off would occur[ 49 ]. Laddie J granted an injunction to prevent that probable future passing off.
In the earlier case of Glaxo PLC v Glaxowellcome Ltd [ 50 ], the defendant had registered 'Glaxowellcome' as a company name when he realised that a merger was planned between Glaxo PLC and Wellcome PLC. The defendant wrote to the plaintiff demanding ten thousand pounds for the company name. Lightman J granted a quia timet injunction on the grounds of passing off, even though the defendant had not traded.
His Lordship in One in a Million believed it necessary to prevent the defendant from committing passing off in the future. He said:
'There is only one possible reason why anyone who was not part of the Marks & Spencer Plc group should wish to use such a domain address, and that is to pass himself off as part of that group or his products of as theirs'[ 51 ].
Taking the example of the 'marksandspencer.co.uk' domain name, he said that anyone who came across this site on the Internet would logically assume that it belonged to the plaintiff's, and consequently there was likelihood that the public would be deceived.
The case also considered the registered trade marks of the plaintiffs. Each of the companies had established a reputation in their mark, and under section 10(3) of the Trade Marks Act 1994, there was no requirement that the goods be similar. It was sufficient under section 10(3)(a) that the infringement mark was:
'identical with or similar to'[ 52 ]the registered trademark, and section 10(3)(b) that it 'is used in relation to goods or services which are not similar to those for which the trade mark is registered'[ 53 ].
While 'marksandspencer.co.uk' was not identical to the plaintiff's registered trade mark, it was definitely similar and use of the trade mark would be detrimental to the plaintiff's exclusivity.
The defendants raised two defences to the claim of infringement of registered trade marks: they denied using the mark in the course of trade, and they asserted that it is implicit under section 10(3) that there should be the probability of confusion by the public. Concerning the latter defence, His Lordship was in doubt whether section 10(3) required the likelihood of confusion on the part of the public. Nonetheless, even if it did, the plaintiffs had adequately proven that the use of their trade marks as domain names was likely to confuse. In regard to the claim that the mark was not used in the course of trade, His Lordship followed the precedent set in British Sugar PLC v James Robertson & Sons Ltd [ 54 ] (the 'Treat' case). In this case, Jacob J interpreted section 10(3) as merely requiring the court to:
'see whether the sign registered as a trade mark is used in the course of trade and then to consider whether that use falls within one of the three defining subsections'[ 55 ].
The defendants in One in a Million had evidently used the trade mark in a business sense, and as a result, their defence failed. His Lordship went on to maintain that the name 'Marks and Spencer' could refer only to one company, but conceded that 'Virgin', 'Cellnet', 'Ladbroke', 'Sainsbury' or 'BT' could relate to entities other than the registered trade mark holders. Since the defendants had registered a host of domain names of famous trade marks, it was evidently their intent to deceive.
The reasoning in One in a Million has not been unanimously commended. Meyer-Rochow, a solicitor with Deacons Graham & James, described the judgement as having produced a ' just result ' though there:
'was in fact no evidence that the defendant intended to make us of the registered domain names in a way which would or could constitute passing off'[ 56 ].
Whyatt, a barrister in the chambers of Christopher Morcom QC, criticised the decision to grant an injunction for mere registration[ 57 ]. Whyatt argued that if Marks and Spencer had not agreed to purchase the domain name it was very unlikely any other company would procure it. The court had found that there was an implicit threat to sell the domain name to another company who would use it to deceive the public, but Whyatt maintained that such a company would be hard to find.
4.3 One in a Million: A Flexible Approach to Passing Off
The court recognised the importance of the issues raised in One in a Million , and granted leave to the defendant to appeal its judgement to the Court of Appeal[ 58 ]. The court had to decide whether mere registration and the offer for sale of domain names could amount to passing off and registered trade mark infringement under section 10(3) of the Trade Marks Act 1994. Aldous initially examined the historical development of passing off. He noted that the common law once granted remedies both for passing off and infringement of marks, but that this was eroded by the Trade Marks Acts of 1875 to 1938[ 59 ]. In spite of this, he believed that the boundaries of passing off were not set and that there was room for development. In examining Lord Diplock's five characteristics in Ervin Warnink v Townend [ 60 ], he said:
'I do not believe that he was thereby confining for ever the cause of action to every detail of such characteristics, as to do so would prevent the common law evolving to meet changes in methods of trade and communication as it had in the past'.
Aldous LJ's statement shows the willingness of the court to take a flexible approach to passing off, where the interpretation of the common law reacts to shifting circumstances. A company's reputation and goodwill could now been protected through passing off, even if the circumstances of the case did not fit precisely within Lord Diplock's five stage test.
The Court of Appeal examined previous decisions where individuals had obtained registration of a company name that resembled the trading name of another company. In Panhard et Levassor v Panhard Levassor Motor Company Ltd [ 61 ], the plaintiffs were a French motor manufacturer would had a good reputation in the United Kingdom. The defendants registered the company name, not to trade on the plaintiff's goodwill, but to prevent them from trading in this country. In this case, Farwell decided that the court should:
'interfere to protect a foreign trader who has a market in England . . . from having the benefit of his name annexed by a trader in England who assumes that name without any sort of justification'.
He found that by taking the plaintiff's name, they had dishonestly appropriated the goodwill of the plaintiffs. The use of the name by anyone apart from the plaintiff was an instrument of fraud. In the later Court of Appeal decision in Norwich Pharmacal Co v Customs and Excise Commissioners [ 62 ], Buckley believed it necessary to control the dissemination of an instrument of fraud:
'If a man has in his possession or control goods the dissemination of which, whether in the way of trade or, possibly, merely by way of gifts (see Upmann v Forester (1883) 24 Ch D 231) will infringe another's patent or trade mark, he becomes, as soon as he is aware of this fact, subject to a duty, an equitable duty, not to allow those goods to pass out of his possession or control at any rate in circumstances in which the proprietor of the patent or mark might be injured by infringement ensuing'[ 63 ].
After examining all the relevant cases, Aldous determined that the court had jurisdiction to issue an injunction, when the defendant is equipped with or is intending to equip another with an instrument of fraud. A domain name that will:
'by reason of its similarity to the name of another, inherently lead to passing-off is such an instrument'[ 64 ].
The defendants in One in a Million had committed passing off, as anyone visiting one of their websites would assume that they were associated with the established businesses. In explaining the basis of its decision to dismiss the appeal, the court summarised:
'The trade names were well-known 'household names'... The motive of the appellants was to use that goodwill and threaten to sell it to another who might use it for passing-off to obtain money from the respondents. The value of the names lay in the threat that they would be used in a fraudulent way... The registrations were instruments of fraud and injunctive relief was appropriate...'.
The Court of Appeal judgement in One in a Million reinforced the rights of trade mark holders. Domain name pirates, who are motivated to use the goodwill of others, and threaten to sell the domain name, can now face an injunction and be compelled to reassign the disputed name. Unfortunately, the judgement failed to comment on the applicability of passing off to a cybersquatter who does not threaten to sell the name. Meyer-Rochow, writing in the European Intellectual Property Review, considered that the judgement might in fact assist the cybersquatter[ 65 ]. He argued that it would now be wise for cybersquatters to state in their negotiations with potential buyers and in their company's memorandum of association, that:
'their sole purpose is to sell the domain name to the party most likely to be associated by consumers as being associated with that domain name, and that they do not intend to sell the domain name to any party whose use of the domain name may give rise to passing off being committed'.
Such a statement may not categorically free the cybersquatter from liability, but would act as an obstacle to a plaintiff claiming passing off.
5. Conclusion
In the traditional sense, passing off does not provide a remedy against those who hijack domain names. However, the courts have been flexible with their interpretation of passing off, so that it now covers those who threaten to sell a domain name to others. The decision in One in a Million is a useful tool for trade mark holders, as it can be used to prevent a cybersquatter from maintaining ownership over a domain name on the basis that there may be a future passing off. This opening of a 'new branch' of passing off shows us how the courts have responded to the threat of cybersquatting. They have taken an accepted principle, passing off, and extended its remit so as to provide an equitable and pragmatic solution to the problems caused by cybersquatting.
Footnotes
1 . NUA Internet Surveys, '1999 - An Overview' (2000) < http://www.nua.ie/surveys/how_many_online/index.html >.
2 . Reddaway v Banham [1896] AC 199.
3 . Reddaway v Banham [1896] AC 199, 204.
4 . Day v Brownrigg (1878) 10 Ch D 294.
5 . Ervin Warnink v Townend [1979] A.C. 731.
6 . Ibid ., 93.
7 . Reckitt & Colman v Borden [1990] R.P.C. 340, H.L.
8 . Trade Marks Act 1994, s. 1(1)
9 . Jaffey, 'Merchandising and the Law of Trade Marks' (1998) 3 I.P.Q. 243.
10 . Harrods Ltd v UK Network Services Ltd (1997) E.I.P.R. D-106.
11 . Ibid .
12 . Ibid .
13 . Bainbridge, Intellectual Property (London: Financial Times Management, 4th ed, 1999).
14 . Ibid ., p 631.
15 . Ervin Warnink v Townend [1979] A.C. 731.
16 . Gordon-Pullar, 'Domain name registration, regulation and assignment' (1997) 2(4) Communications Law 130.
17 . Pitman Training Ltd and PTC Oxford Ltd v Nominet UK Ltd and Pearson Professional Ltd (t/a Pitman Publishing) [1997] F.S.R. 797.
18 . Masons Solicitors, 'The Law of the Internet: Protection of Domain Names' (1997) < http://www.icclaw.com/devs/uk/it/ukit_008.htm >.
19 . Prince PLC v Prince Sportswear Group Inc (1997) unreported, Ch. D., Neuberger J.
20 . Tate, 'The Domain Name Iceberg and Avoidable Collisions' (1997) 8(5) Computers and Law < http://www.scl.org >.
21 . Trade Marks Act 1994, s. 21(1).
22 . Prince PLC v Prince Sportswear Group Inc (1997) unreported, Ch. D., Neuberger J.
23 . Lea, 'Developments in the treatment of domain name disputes (1997) 2(6) Communications Law 216.
24 . Tate, 'The Domain Name Iceberg and Avoidable Collisions' (1997) 8(5) Computers and Law < http://www.scl.org >.
25 . Vergani, 'Electronic Commerce and Trade Marks in the United States: Domain names, Trade Marks and the 'Use in Commerce Requirement' on the Internet' (1999) 21(9) E.I.P.R. 450.
26 . Panavision International LP v Toeppen 141 F. 3d 1316 (9th Cir. 1998).
27 . Vergani, 'Electronic Commerce and Trade Marks in the United States: Domain names, Trade Marks and the 'Use in Commerce Requirement' on the Internet' (1999) 21(9) E.I.P.R. 450.
28 . Panavision International LP v Toeppen 141 F. 3d 1316 (9 th Cir. 1998).
29 . Vergani, 'Electronic Commerce and Trade Marks in the United States: Domain names, Trade Marks and the 'Use in Commerce Requirement' on the Internet' (1999) 21(9) E.I.P.R. 450.
30 . Avery Dennison Corp v Sumpton 999 F. Supp 1337 (C.D. Cal. 1998).
31 . Panavision International LP v Toeppen 141 F. 3d 1316 (9 th Cir. 1998).
32 . Avery Dennison Corp v Sumpton 999 F. Supp 1337 (C.D. Cal. 1998), at 1338.
33 . Licensing Internet users domain names as email addresses is increasingly fashionable. For example, if we assume that a visitor to the defendant's site was named John Smith, he could license the email address: jsmith@avery.net.
34 . Vergani, 'Electronic Commerce and Trade Marks in the United States: Domain names, Trade Marks and the 'Use in Commerce Requirement' on the Internet' (1999) 21(9) E.I.P.R. 453.
35 . Avery Dennison Corp v Sumpton 999 F. Supp 1337 (C.D. Cal. 1998), at 1338.
36 . Avery Dennison Corp v Sumpton 999 F. Supp 1337 (C.D. Cal. 1998), at 1339.
37 . A man called Mr. McDonald could therefore be infringing the McDonald's Corporation's trademarks by registering his own name.
38 . Vergani, 'Electronic Commerce and Trade Marks in the United States: Domain names, Trade Marks and the 'Use in Commerce Requirement' on the Internet' (1999) 21(9) E.I.P.R. 454.
39 . Harrods Ltd v UK Network Services Ltd (1997) E.I.P.R. D-106
40 . Marks & Spencer PLC and Others v One in a Million Ltd and Others [1998] F.S.R. 265, The Times , December 2, 1997.
41 . 'Internet Names Judgement' [1998] 3(1) Communications Law 27.
42 . Singer v Loog (1880) 18 Ch D 395.
43 . Meyer-Rochow, 'The Application of Passing Off as a Remedy Against Domain Name Piracy' (1998) 20(11) E.I.P.R. 407.
44 . Meyer-Rochow, 'The Application of Passing Off as a Remedy Against Domain Name Piracy' (1998) 20(11) E.I.P.R. 407.
45 . Bone and Rutherford (eds), Osborn's Concise Law Dictionary (London: Sweet & Maxwell, 8 th ed, 1993) p 275.
46 . Direct Line Group Ltd v Direct Line Estate Agency [1997] F.S.R. 374.
47 . Glaxo PLC v Glaxowellcome Ltd [1996] F.S.R. 388.
48 . Direct Line Group Ltd v Direct Line Estate Agency [1997] F.S.R. 374.
49 . Bainbridge, Intellectual Property (London: Financial Times Management, 4 th ed, 1999) p 632.
50 . Glaxo PLC v Glaxowellcome Ltd [1996] F.S.R. 388.
51 . Marks & Spencer PLC and Others v One in a Million Ltd and Others [1998] F.S.R. 265, The Times , December 2, 1997, at 8.
52 . Trade Mark Act 1994, s.10(3)(a).
53 . Trade Mark Act 1994, s.10(3)(b).
54 . British Sugar PLC v James Robertson & Sons Ltd [1996] RPC 281.
55 . Cornish, Cases and Materials on Intellectual Property (London: Sweet & Maxwell, 2 nd ed, 1996) p 500.
56 . Meyer-Rochow, 'The Application of Passing Off as a Remedy Against Domain Name Piracy' (1998) 20(11) E.I.P.R. 407.
57 . Whyatt, ' Domain Names: Cyber Squatters Take Care' (1997) 8(5) Computers and Law .
58 . Marks & Spencer PLC and Others v One in a Million Ltd and Others , The Times , July 29, 1998.
59 . 'British Telecom plc and others v One in a Million Ltd and others' (1998) 3(6) Communications Law 227.
60 . Ervin Warnink v Townend [1979] A.C. 731.
61 . Panhard et Levassor v Panhard Levassor Motor Company Ltd (1901) 2 Ch 513.
62 . Norwich Pharmacal Co v Customs and Excise Commissioners [1974] AC 133.
63 . Ibid., at 145.
64 . Marks & Spencer PLC and Others v One in a Million Ltd and Others , The Times , July 29, 1998.
65 . Meyer-Rochow, 'The Application of Passing Off as a Remedy Against Domain Name Piracy' (1998) 20(11) E.I.P.R. 408.
References
List of Cases
Avery Dennison Corp v Sumpton 999 F. Supp 1337 (C.D. Cal. 1998).
British Sugar PLC v James Robertson & Sons Ltd [1996] RPC 281 .
Day v Brownrigg (1878) 10 Ch D 294.
Direct Line Group Ltd v Direct Line Estate Agency [1997] F.S.R. 374.
Ervin Warnink v Townend [1979] A.C. 731.
Glaxo PLC v Glaxowellcome Ltd [1996] F.S.R. 388.
Harrods Ltd v UK Network Services Ltd (1997) E.I.P.R. D-106 .
Intermatic Inc v Toeppen 947 F. Supp 1227 (N.D. III. 1996).
Marks & Spencer PLC and Others v One in a Million Ltd and Others [1998] F.S.R. 265, The Times , December 2, 1997.
Marks & Spencer PLC and Others v One in a Million Ltd and Others , The Times , July 29, 1998.
Panavision International LP v Toeppen 141 F. 3d 1316 (9 th Cir. 1998).
Panhard et Levassor v Panhard Levassor Motor Company Ltd (1901) 2 Ch 513.
Pitman Training Ltd and PTC Oxford Ltd v Nominet UK Ltd and Pearson Professional Ltd (t/a Pitman Publishing) [1997] F.S.R. 797.
Prince PLC v Prince Sportswear Group Inc (1997) unreported, Ch. D, Neuberger J.
Reckitt & Colman v Borden [1990] R.P.C. 340, H.L.
Reddaway v Banham [1896] AC 199.
Singer v Loog (1880) 18 Ch D 395.
List of Statutes
1994 Trade Marks Act.
Bibliography
Books
Bainbridge, Cases & Materials n Intellectual Property (London: Financial Times, 2 nd ed, 1999).
Bainbridge, Intellectual Property (London: Financial Times, 4 th ed, 1999).
Bone and Rutherford (eds), Osborn's Concise Law Dictionary (London: Sweet & Maxwell, 8 th ed, 1993).
Calow, Lee and Williams (eds), Multimedia: Contracts, Rights and Licensing (London: FT Law & Tax, 1996).
Christie and Gare (eds), Statutes on Intellectual Property (London: Blackstone Press, 3 rd ed, 1997).
Cornish, Cases and Materials on Intellectual Property (London: Sweet & Maxwell, 2 nd ed, 1996).
Cornish, Intellectual Property (London: Sweet & Maxwell, 3 rd ed, 1996).
Edwards and Waelde (eds), Law & the Internet: Regulating Cyberspace (Oxford: Hart Publishing, 1997).
Articles
BBC News Online, 'Scotland entering new domain' (1 May, 2000) < http://news2.thls.bbc.co.uk/hi/english/uk/scotland/newsid%5F732000/732199.stm >.
'British Telecom plc and others v One in a Million Ltd and others' (1998) 3(6) Communications Law 227.
Cerf, 'How the Internet Came to Be' (1993) < http://www.bell-labs.com/user/zhwang/vcerf.html >.
Cobbetts Solicitors, 'Management of Internet Names and Addresses' (1998) 10(3) Computers & Law 29.
Eastham, 'Lord of All Your Domains: Dr Willie Black of Nominet' (1999) 10(3) Computers & Law 25.
Gordon-Pullar, 'Domain name registration, regulation and assignment' (1997) 2(4) Communications Law 130.
Jaffey, 'Merchandising and the Law of Trade Marks' (1998) 3 I.P.Q. 243.
'Internet Names Judgement' [1998] 3(1) Communications Law 27.
Lea, 'Developments in the treatment of domain name disputes (1997) 2(6) Communications Law 216.
Masons Solicitors, 'The Law of the Internet: Protection of Domain Names' (1997) < http://www.icclaw.com/devs/uk/it/ukit_008.htm >.
Meyer-Rochow, 'The Application of Passing Off as a Remedy Against Domain Name Piracy' (1998) 20(11) E.I.P.R. 407.
Nominet UK 'Registration Statistics for .uk Domain Names' < http://www.nominet.org.uk/news/stats/stats.1999.html >.
NUA Internet Surveys, '1999 - An Overview' (2000) < http://www.nua.ie/surveys/how_many_online/index.html >.
Vergani, 'Electronic Commerce and Trade Marks in the United States: Domain names, Trade Marks and the 'Use in Commerce Requirement' on the Internet' (1999) 21(9) E.I.P.R. 450.
Waelde, 'Domain names and trade marks: What's in a name?' in Edwards and Waelde (eds), Law and the Internet: Regulating Cyberspace (Oxford: Hart Publishing, 1997).
Whyatt, ' Domain Names: Cyber Squatters Take Care' (1997) 8(5) Computers and Law.
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