A portfolio of Internet domain names is nowadays an essential part of the armoury of almost every major business. In one case which illustrated the point, a high street bank which owns about 1,200 of them inflicted a crushing legal defeat on a small company which trespassed on its intellectual property rights.
The company registered four domain names which featured words, or combinations of letters, which had been trade marked by the bank. The latter made a successful complaint to the World Intellectual Property Organisation (WIPO), which directed the transfer of the domain names to the bank. WIPO found that the company had registered the domain names and intended them to be used in bad faith.
The company sought a High Court declaration that WIPO’s decision was wrong and that it had been guilty of no wrongdoing. It argued that its intended use of the domain names was legitimate and involved no risk of confusing the bank’s clients. In striking out the claim, however, the Court noted that, even if it were to come to a different conclusion than WIPO, the latter’s decision would still stand. The declaratory relief sought would therefore have no practical utility.
The bank was granted summary judgment on its counterclaim in respect of passing off and infringement of its trade marks. The Court found that actionable passing off occurred at the moment when the domain names were registered and that the company had no realistic prospect of successfully defending the claim.