The decision of Deputy Judge John Randall QC in Radio Taxicabs (London) Ltd v Owner Drivers Radio Taxi Services Ltd (12 October 2001 (unreported)) provides a useful resumé of the law on domain names and passing off (what there is of it) and the law as it relates to passing off and the use of generic terms in business names.
The claimants, who traded as “Radio Taxicabs”, were not happy that one of their chief competitors held the domain name registration “radiotaxis.com”; moreover the competitors had over a period of two years installed an automatic direct link from the equivalent Web address to their principal Web address. This combination of domain name registration and automatic link constituted, the claimants hoped, actionable passing off. The claimants conceded that their case was not based on the notion that any use of the domain name by the defendants would inherently lead to passing off but that the particular use made of the domain was as an “instrument of fraud” entitling the claimants to a mandatory order that the defendants assign the name to the claimants. If you are familiar with the facts and decision in British Telecommunications v One in a Million [1999] FSR 1, you will soon appreciate that on the facts of the current case obtaining that order was never going to be easy.
The Facts
The parties were two of the four “Radio Circuits” which operate for licensed black cabs in London. The Circuits each provide their member subscribers’ black cabs with computer terminals incorporating radio receiving and transmitting equipment which enable them to receive jobs via a data despatch system. They also provide their members with facilities enabling them to accept payment by credit cards. Subscribers are charged an admission fee and then a periodic subscription. Circuits are therefore in competition for the recruitment of cabbies. Both parties were incorporated in the early 1950s since when each has catered to the same two distinct markets. The first of these Deputy High Court Judge John Randall QC referred to as the “trade”, part of which are the transport or account managers who place business with one or another of the Circuits on behalf of substantial trading and professional organisations in London. Obviously the Circuits compete keenly for this business. The second market to which the Circuits cater is “the general public”. The Circuits receive a cut of the surcharge on fares where customers pay by credit card. Other than that they receive no income from this market.
The Internet
The defendants were the first to realise the potential of the Internet as a tool to promote their business. They launched their Web site in April 1998 and this now includes a facility allowing persons wishing to open an account to submit an application online, as well as an online booking facility for selecting credit card account customers. To their Web site the defendants set up an automatic direct link from www.radiotaxis.com. This link was operational for about two years prior to its suspension at the time they received the letter before action in May 2000. At no time did the defendants attempt to register the domain name radiotaxis.co.uk on which the claimants subsequently ran their own Web site.
The Dispute
In e-mail correspondence the claimants accused the defendants of using their goodwill “to potentially get customers for your organisation”. The defendants replied that the term “radio taxis” was generic and, anyway, it was a .com registration which was worldwide and not .co.uk which was confined to the UK. The defendants ended their e-mail response as follows:
It is obvious I have something you want, but I don’t intend to give it away or sell it. However I could be persuaded for say 750 second-hand Motorola radios – over to you Geoffrey. Best wishes Brian.
Although not much is made of it in the judgment there was another significant automatic direct link to the defendants’ Web site in place. This time from www.radio-taxis.co.uk. This the defendants claimed was inadvertent.
Reputation
The judge applied the passing off mantra intoned by the House of Lords in the Jif Lemon case (Reckitt & Colman v Borden [1990] 1 WLR 491) – reputation, misrepresentation, damage. He was satisfied that the claimants had established a reputation in the name Radio Taxis within “the trade”. He was not convinced that this was the case for “the general public”. This distinction was crucial as the claimants had conceded that they could not sustain a claim as to risk of confusion within the trade. The claimants therefore had to show reputation with the public in general in order to proceed with any hope of success to arguments on the other elements of Jif Lemon.
The judge acknowledged that there was certainly no evidence which caused him to believe that the claimants were known to the general public under any name other than that in which it asserted a reputation, i.e. Radio Taxis. However, in his view, it did not necessarily follow, as the claimants contended, that it would be surprising if the court were to arrive at the position that the claimants had established no reputation with the general public under any particular name. The point was that the burden of proving reputation with the general public lay with the claimants, particularly as the name in question was an entirely descriptive one. The claimants were in large part a trade organisation and, save for the limited class of established account holders as to whom it was accepted that there was no real risk of confusion, it was not inherently surprising, in the judge’s view, that the claimants proved no reputation with the general public under any particular name.
Intention to Deceive
The judge also held that the claimants had failed to prove an intention to deceive on the defendants’ part. In One in a Million, Aldous LJ spelt out the relevance of a finding that the defendants’ actions were motivated by an intention to deceive, and hence an intention to appropriate the benefit of the claimants’ goodwill. The judge took this as clear authority that the defendants’ intention in registering the domain name and setting up the automatic link was central to the claimants’ case. Without it the claim based on categorising the domain name as an “instrument of fraud” and the consequent claim for a mandatory injunction could not succeed.
Fatally for the claimants, the judge found that there was no such intention. He accepted the defendants’ evidence that they were not seeking to divert business intended for the claimants to them. The judge was impressed by one particular observation made by the defendants, which was that in their view an American visitor to the UK in need of a taxi at Heathrow would simply walk to the taxi rank rather than book one over the Internet. The judge thought that this was not only redolent of common sense and realism as to the limitations of the value of the World Wide Web to radio taxi companies as a means of gaining business, but also a useful reflection of how the defendants might benefit from promoting themselves over the World Wide Web.
The judge also considered it a “striking fact” that the defendants had made no attempt to register radiotaxis.co.uk. He thought it most unlikely that this was attributable to oversight and commented that if the defendants’ motives in registering radiotaxis.com had been as alleged by the claimants he could see no reason why the defendants would not have sought also to register radiotaxis.co.uk at the same time. The judge credited the defendants with realising that they would be “sailing close to the wind” with the .com registration and that registering radiotaxis.co.uk “might be that crucial few degrees closer to the wind.” The judge was satisfied that the defendants’ motives included a desire not to risk a justifiable complaint from the claimants. The domain name was not, in his view, an instrument of fraud.
Confusion
Nor did the judge think that there was any confusion on the part of the general public caused by the combination of the registration of the domain name and the automatic direct link. In the judge’s view it was another striking feature of the case that, despite the operation of the link for a period of about two years prior to its suspension, the huge number of potential visitors to the defendants’ Web site, and the large number of hits, the claimants had not adduced evidence of even one instance of actual confusion having occurred.
There certainly was an implied representation in the fact that a person accessing www.radiotaxis.com was directed to the defendants’ Web site. However, in the judge’s view, that representation was no more than that the defendants were a business which operated a radio taxi service. There was neither evidence that a relevant misrepresentation had been made, nor anything establishing a likelihood that any relevant misrepresentation would be made. If that appeared hard on the claimants, the judge suggested it should be borne in mind that they had chosen to adopt an entirely descriptive term as their trading name and in so doing had taken the risk of having greater difficulty in protecting the exclusivity of that name should they need to (see Office Cleaning Services v Westminster Window and General Cleaners [1946] 63 RPC 39). By failing to establish reasonably probable deception, the claimants equally failed to establish damage.
Conclusion
The claimants’ case failed on all counts and strictly speaking the judge did not have to consider all the elements of passing off, the claimants having failed to establish the necessary reputation with the general public whilst conceding that confusion within the trade where they did enjoy a reputation was not arguable.
Additionally, the claimants’ chances of obtaining a mandatory injunction were remote. The facts here were very different from those in One in a Million. In that case the defendants’ activities showed a deliberate strategy over a substantial period of time of registering domain names chosen to resemble the names and marks of other people. The intention to deceive was obvious as were the threat of passing off and the likelihood of confusion arising from that strategy. The domain names in that case were quite clearly instruments of fraud.
Rico Calleja is an Associate in the London Office of McDermott, Will & Emery
