Yoyo.Email Ltd v Royal Bank of Scotland Group Plc & Ors [2015] EWHC 3509 (Ch) the Royal Bank of Scotland and others succeeded in establishing before the High Court that the mere registration of various domain names incorporating their trade marks amounted to passing off. In addition, the former domain name registrant’s application to court for a declaration that it had been guilty of no wrongdoing (following RBS’ successful domain name complaint) was struck out. The court held that ICANN’s UDRP domain name scheme did not give rise to a separate cause of action for the former registrant, nor did it give the court any jurisdiction to act as an appeal or review body in relation to the UDRP decision.
The facts of the case
The claimant, Yoyo.Email Limited (Yoyo), registered the domain names, rbsbank.email, rbs.email, natwest.email, coutts.email for itself through an Internet service provider. Royal Bank of Scotland and others (the registered proprietors of the trade marks ‘RBS’, ‘RBSBANK’, ‘NATWEST’ and ‘COUTTS’) filed a complaint under ICANN’s Uniform Dispute Resolution Policy (‘UDRP’). The dispute resolution panel concluded that: (1) the Domain Names were identical or confusingly similar to the banks’ registered trade marks; (2) Yoyo’s proposed use of them could not be regarded as bona fide, nor was the intended use of them legitimate or fair; and (3) Yoyo had registered the Domain Names and intended to use them in bad faith. The Panel therefore ordered that the Domain Names be transferred to the banks.
Yoyo subsequently commenced proceedings in the High Court for declaratory relief to the effect that it had been guilty of no wrongdoing. The banks counterclaimed for passing off and infringement of their trade marks. They submitted that Yoyo had no real prospect of successfully defending the passing-off claim.
In order to establish passing off, a claimant must: (1) establish 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’ (eg a brand name or a trade description, or the individual features of labelling or packaging) such that the get-up is recognised by the public as distinctive specifically of the claimant’s goods or services; (2) 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 claimant; and (3) demonstrate that he suffers or is likely to suffer damage by reason of the defendant’s misrepresentation.
The banks submitted that placing the Domain Names on the register led, by itself, to passing off because it made a representation to those reviewing the register that Yoyo was connected or associated with the Defendants, which of itself caused damage . They relied on the earlier decision in BT v One in a Million [1998] EWCA Civ 1272 which established this principle of law. They claimed this gave rise to a cause of action which could not be defeated on the grounds advanced by Yoyo. Yoyo argued that One in a Million related to a state of affairs existing many years ago and that the Internet has moved on considerably since then.
The court’s decision
The court applied the principle in One in a Million, which it confirmed was still good law, and held that the mere registration of the Domain Names by Yoyo amounted to passing off. It decided there was no need to explore Yoyo’s proposed business model and intended use of the Domain Names or the use of the Internet made by the public today because the actionable passing off occurred at the point of registration of the Domain Name (the essential factual elements behind the One in a Million decision have not altered). Therefore, Yoyo had no realistic prospect of defending the counterclaim for passing off and the banks were entitled to summary judgment.
This left Yoyo’s claim that it did not register and had not used/was not using the Domain Names in bad faith. In support of this cause of action it relied on clause 4k (‘Availability of Court Proceedings’) of the UDRP which governed the complaint between it and the Defendants. Clause 4k of the UDRP states:
‘The mandatory administrative proceeding 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…’.
However, the court struck out this claim for a declaration and gave the following main reasons for the decision:
1. on a proper construction of the UDRP, clause 4k did not give rise to a separate cause of action in favour of Yoyo nor did it afford any jurisdiction to the court to act as an appeal or review body from the decision of the Panel; and
2. there was no practical utility in granting declaratory relief because the UDRP scheme under which the Panel had adopted its decision has dealt with the issue between the parties and therefore any declaration made by the court could not alter the findings of the Panel.
Comment
Brand owners will be pleased with this decision. It affirms earlier case law that the very act of placing a domain name on a register which incorporates a third-party mark, irrespective of any intended use, is sufficient to give rise to a misrepresentation for the purposes of a passing-off claim. A passing-off claim in these circumstances should therefore be relatively straightforward and inexpensive for a brand owner to bring. The case also confirms that the court will not interfere with a UDRP decision – it cannot act as an appellate body in relation to such decisions. This provides certainty for brand owners who have been successful with a domain name complaint, and reinforces the value of the UDRP system as an independent and efficient method of dealing with abusive domain name registrations.
The decision is a useful reminder for brand owners that they have two effective routes for enforcing their trade mark rights against those behind damaging and unauthorised domain names. Which route to choose will depend on the objectives of the brand owner in each case. A domain name complaint provides a quick means of tackling an abusive registration. However, if successful it will only neutralise the domain name itself and will not deal with any other acts of infringement by the domain name registrant which may be causing significant damage to the brand owner (possibly even more than the domain name). A trade mark infringement and/or passing off claim will take far longer to get to trial and will be significantly more expensive than a domain name complaint. However, it can deal with all acts of infringement (which would include an unauthorised domain name registration) and enables the claimant to seek a wide range of remedies, the key ones being a permanent injunction and damages.
Vicky Butterworth is an Intellectual Property Solicitor at Marks & Clerk Solicitors LLP
