Brands: Internet developments - domain name success - the Marks & Spencer and others cases

Domain name success

Marks & Spencer, Sainsburys and British Telecom were among a number of household names which brought and won a landmark case against domain name "speculators". The defendants, a company called One In A Million Limited and their directors, had registered numerous domain names incorporating well known trade marks, such as marksandspencer.com, and then offered them for sale or threatened to do so unless they were paid substantial sums of money by the real owners of the names.

The Court granted injunctions, ordering the domain names to be assigned to their rightful owners and ordering the defendants to pay costs of £65,000. While the Court agreed that the mere registration without use of a domain name incorporating another's trade mark was not passing off in itself, there was a real threat of use and this was the basis for the relief granted.

The defendants argued that their aims were either to sell the domain name to the relevant trade mark owner or to retain the name in order to block its use by the trade mark owner, neither of which constituted passing off. These arguments were rejected on the grounds that the names were of no value otherwise than as a means of threatening unlawful acts. Further the plaintiffs succeeded in a separate claim for trade mark infringement under Section 10(3) of the Trade Marks Act which concerns marks with a reputation of which unfair advantage is taken.

It is now clear that the Courts will not tolerate the unscrupulous practice of "warehousing" domain names which incorporate trade marks belonging to others and the exploitation of trade mark owners by making financial demands for transfer of such domain names.

However, it is reported that the "One In A Million" case is under appeal.