The High Court confirms that One in a Million is still good law, despite alleged developments in internet knowledge, and the High Court should not be used for appeals from domain name dispute panels (Yoyo.email Limited v Royal Bank of Scotland Group Plc and others [2015] EWHC 3509 (Ch)) 

Summary of Proceedings

Yoyo had registered the domain names rbsbank.email, rbs.email, natwest.email and coutts.email (the “Domain Names”). In the proceedings under the Internet Corporation for Assigned Names and Numbers (“ICANN”) Uniform Dispute Resolution Procedure (“UDRP”), the domain name dispute resolution panel (the “Panel”) had decided that (i) the Domain Names were identical or confusingly similar to well-known trade marks owned by Royal Bank of Scotland Plc, National Westminster Bank Plc and Coutts & Co (the “Defendants”) in the High Court action; (ii) Yoyo’s proposed use of them could not be regarded as bona fide, nor was the intended use legitimate or fair; and (iii) Yoyo had registered the Domain Names and intended them to be used in bad faith. 

Yoyo contended that the Panel’s decision was wrong and appealed, to the High Court, seeking declarations inter alia that Yoyo was entitled to the Domain Names, and the registration and use of the Domain Names was not in bad faith. The Defendants sought for Yoyo’s Claim to be struck out and/or for reverse summary judgment on Yoyo’s Claim, and for summary judgment on their Counterclaim for passing off and/or for the Defence to Counterclaim to be struck out. 

Issues

There were two key issues in the High Court proceedings:

  1. whether the teaching of One in a Million ([1999] FSR 1) is still good law; and 
  2. whether decisions under the ICANN UDRP are open to review by the High Court. 

Decision

On the first question, counsel for Yoyo that One in a Million turned on its own facts and therefore was of no assistance in determining the present case. In addition, it was argued that the internet (and people’s awareness of it) had developed considerably since the decision in One in a Million and the decision was no longer good law. Thirdly it was argued that the way Yoyo intended to make use of the Domain Names in the course of business eliminated the risk for confusion with the Defendants’ business and therefore did not amount to misrepresentation. 

Swiftly dealing with the first two points, Dight HHJ stated that One in a Million was binding on him and that he intended to follow it. The case had been decided on the core fact that registration (and the registration alone) of a distinctive domain name gives rise to a misrepresentation to members of the public that the registrant is connected or associated with the goodwill in the name, hence amounting to an actionable passing off. He therefore reached the same conclusion, and found that Yoyo’s registration of the Domain Names was an actionable passing off, regardless of Yoyo’s intended use for the Domain Names. 

Considering the third point briefly, Dight HHJ held that Yoyo’s proposals for dealing with any potential confusion only dealt with confusion of members of the website, and would not address the misrepresentation caused by the registration. On this basis, the judge held that Yoyo did not have a realistic prospect of successfully defending the Defendant’s Counterclaim. 

The decision on the second question surrounded the interpretation of a clause in the UDRP, which stated as follows: 

 “Availability of Court Proceedings. The mandatory administrative proceedings requirements set forth in Paragraph 4 shall not prevent you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded…”

Dight HHJ held that, on the proper construction of the clause, it did not give rise to a separate cause of action in favour of Yoyo, nor did it afford any jurisdiction to the High Court to act as an appeal or review body from the decision of the Panel. He also confirmed that there would be no material difference in seeking an appeal as from the Dispute Resolution Service Policy (the “DRS”) operated by Nominet in the UK than under the UDRP. 

The judge therefore proceeded to strike the claim out. 

Comment

The decision provides a useful lesson that the UK courts should not be used as an appeals court for domain dispute resolution already decision under the DRS or the UDRP. The judgment reinforces that the people appointed to the relevant panel are often experts in determining these kinds of cases and it generally would not be appropriate for the courts to make comment. It is also important for parties to remember that seeking declaratory relief from the court would also not change the rights in respect of the Domain Names, therefore meaning that there is no practical utility in granting the declarations. 

The judgment confirming that One in a Million is still good law is not particularly surprising given that it has been applied a number of times following the original decision to date. However, it may be worthwhile noting that the case has generally applied where the goodwill needed to establish a case in passing off has been admitted, or at least is relatively easy for the trade mark owner to establish as the company or institution is well-known, such as the banks here. It would be interesting to see whether the court would be prepared to hold that the registration alone would amount to a misrepresentation where the goodwill is not as well-established and the presumption that the defendant must have intended an association with the claimant is not quite so palatable to the court.