Marks and Spencer PLC v Craig Cottrell and others
The Defendant had copied the Claimant’s website and inserted the material on other websites with confusingly similar names. Customers would therefore think they were dealing with the Claimant but in fact were on the Defendant’s contrived website, where they were encouraged to give credit card details. At that point, the contrived website would appear to crash, leaving the Defendant with the credit card details and able to commit frauds.
Judgment was entered against the Defendant on 3 November 2000. Various orders had been made against the Defendant and the Claimant alleged 13 breaches of the orders. These breaches included orders requiring the Defendant to provide information as to the operation of the contrived website, the whereabouts of various people, copy documentation and copies of website pages and similar such details and information.
The Defendant did not appear, was not represented and his whereabouts were not known.
The Defendant had acted in flagrant breach of court orders and appeared to set them at naught. It was a case of continuing conduct in breach of a court order. The Defendant was exploiting domain names, infringing the Claimant’s intellectual property rights so as to perpetrate frauds on the public and seriously putting at risk the Claimant’s goodwill.
After “anxious consideration”, the right course was to order that the Defendant should be arrested and sent to prison for 12 months. During that time, he could apply to the Court to purge his contempt.
A further order was made for the transfer to the Claimant of all domain names held by the Defendant in the Claimant’s name or any colourable imitation of them, in particular any colourable imitation of them or form of them which might constitute infringement of copyright or trade mark or other interference with property rights. The Master was authorised to execute the transfer in the name of the Defendant.
The judge added as follows:
“I am told that one of the problems that exist today for companies like Marks & Spencer faced with persons of the like of Mr Cottrell is that orders such as those that have been made in this case prohibiting an individual from using a particular domain name can be evaded by adopting a minuscule variation upon it. The domain name providers will comply with a court order prohibiting the use of a particular name but because all questions of registrations and domain name and monitoring are computer driven, no scope at the moment is available to prevent colourable imitations of the names though they are prohibited from being used. I do not think that it can or should be assumed by domain name providers, that they have no responsibility to monitor whether court orders prohibiting use, not merely of particular names, but of colourable imitations are being broken by registration made with the names which fall foul of the prohibition. That is not a matter I need go into now but it does seem to me far from clear that they can abdicate responsibility in respect of the names which they permit to be registered on their sites. But that is a matter which requires very careful consideration on another occasion.”
The Defendant had in total 11 domain names registered in his name which were contrived variations or expressions of the name Marks & Spencer, including “www.marksandspencers.com” and “www.marksandpencer.com”. It is these minuscule variations of the legitimate site (“www.marksandspencer.com”) which led Lightman J. to his somewhat exasperated statement towards the end of his judgment.
Although Lightman J. resisted giving judgment on this particular matter, he made it very clear that he considered domain name providers to have a responsibility to monitor the registration of domain names and consider whether any court orders are being breached by the registrations.
The practicalities of such an obligation are problematic. For example, Nominet, which is the registry for all domain names ending in “.uk” has over 2 million registered domain names and receives thousands of applications each month. These applications are processed, as the judge acknowledged, by a computer. Thus the exercise of checking each registration against the terms of any Court orders is unrealistic. Further, Nominet is a non-profit organisation (although a legal defence fund has been established) and does not hold the power to transfer domain names to other individuals without the registrant’s permission or Court order.
Lightman J.’s comments are akin to suggesting that domain names providers should make judgments as to whether the registration or use of the domain name infringes the rights of third parties. It is submitted that that is too far an extension of domain name providers’ powers and would, no doubt, lead to an increased number of Court proceedings as to whether a certain domain name might be registered to particular undertakings.
Nevertheless, the problem is a real one, and one which is difficult to control as there are any number of “colourful imitations” that may be applied to names and marks protected by IPRs. Further, there is no consultation procedure adopted for domain name registrations, therefore, companies such as Marks & Spencer are obliged to perform searches for registrations similar to their name at regular intervals and follow up action against any believed tortfeasor.
