United Kingdom

[GB] Domain Names Dealing Banned

IRIS 1998-3:1/1

Stefaan Verhulst

PCMLP University of Oxford

The High Court in London has banned two men from dealing in Internet "domain names" in joint cases brought by Marks and Spencer plc, Ladbrokes plc, J Sainsbury plc, Virgin Enterprises plc, British Telecom plc and Telecom Securicor Cellular Radio Ltd. against One in A Million Ltd. In its judgement delivered on 28 November 1997 the High Court held that registration of domain names for the purpose of resale to owners of the trademarks is an action preparatory to trademark infringement. The two men and their businesses, One in a Million Ltd, Global Media Communications and Junic, registered names with recognised organisations and then offered them for sale to potential users much in the same way as company registration agents. The court was told that such names could only have four uses: to sell to the named company or organisation, which might be prepared to pay a high price to have it under its control; to sell to a third party, perhaps for the purpose of deceiving the public; to sell to someone with an interest in the name; or to leave the name unused and unsold, thus blocking its use by others - including those whose name or trademark it comprised. The court held this behaviour likely to produce passing off and trademark infringement and issued a final injunction aimed at preventing damage to the plaintiffs' trademarks and trade names. It also directed them to take steps to have the disputed names assigned to the complaining companies.