It has been confirmed that the mere registration of a domain name may amount to passing off. The High Court also clarified that it did not have jurisdiction to hear appeals of uniform dispute resolution policy (UDRP) or Dispute Resolution Service (DRS) decisions.

A recent case in 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.

Yoyo.email v Royal Bank of Scotland Group

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

Yoyo.email then applied to the court for a declaration that it had been guilty of no wrongdoing. In a cross application, RBS requested that the court strike out the former registrant'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 of electronic mail services.

In relation to the claimant'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 claimant, nor 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 similarly 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.)

BT v One in a Million

The judge, Dight J, then turned to consider RBS' counterclaim for passing off, which involved an analysis of the leading case in this area of 'BT v One in a Million' from 1999.

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, none of the domain names were linked to active sites. One of the issues considered in this case was whether the mere registration and ownership of a domain name may constitute passing off. It was held that this was actionable, and this was followed in the recent Yoyo.email case with the judge ruling that Yoyo.email was liable for passing off.

Passing off at time of domain name registration

Dight J went further 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 publically 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 massively developed 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 Chancery Division
  • Parties: Yoyo.email limited and Royal Bank of Scotland Group Plc and Others
  • Citation: [2015] EWHC 3509 (Ch)
  • Date: 02/12/2015

Full decision: http://dycip.com/yoyovrbs

Case details at a glance

  • Jurisdiction: England and Wales
  • Decision level: High Court of Justice Chancery Division on appeal from the Patents County Court
  • Parties: Michael Toth and Emirates and Nominet
  • Citation: [2012] EWHC 517 (Ch)
  • Date: 07/03/12

Full decision: http://dycip.com/tothvemirates

Case details at a glance

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