Out-Law News | 11 Dec 2015 | 12:05 pm | 3 min. read
Intellectual property law specialist Rebecca Mitton of Pinsent Masons, the law firm behind Out-Law.com, said the High Court's judgment is important as it means decisions taken in accordance with the Uniform Dispute Resolution Policy (UDRP) can be considered binding with no right of appeal to UK courts.
The High Court was ruling in a case involving Royal Bank of Scotland Group (RBS) and a business, Yoyo.email, which has registered approximately 4,000 domain names rooted at the .email domain. Pinsent Masons acted for RBS in the case.
In August 2014 RBS won a dispute with Yoyo.email over four domain names the company had registered earlier that year before a domain name dispute resolution panel. Yoyo.email had registered rbsbank.email, rbs.email, natwest.email and coutts.email in its name but was forced to transfer ownership of those web addresses to RBS by the panel after considering the case in accordance with the UDRP, which was developed by the World Intellectual Property Organisations (WIPO) to help organisations settle disputes over registered domain names.
The panel had determined that the domain names Yoyo.email registered were identical or similarly confusing to trade marks owned by RBS, that Yoyo.email's intended use of the web addresses was not genuine, legitimate or fair and that the company had registered them in bad faith.
Yoyo.email challenged those findings before the High Court arguing, among other things, that RBS should be required to transfer ownership of the domain names back to it and that it should be allowed to use them in the context of providing email services to its customers.
However, in a ruling seen by Out-Law.com, His Honour Judge Dight said that there was no "cause of action" that Yoyo.email could cite under the UDRP to justify its arguments being considered and that the policy also did not "afford any jurisdiction" to the High Court to "act as an appeal or review body" from the domain name dispute resolution panel's decision in August 2014.
The judge also ruled that Yoyo.email was liable for passing off by registering the four domain names featuring RBS trade marks in its own name.
In the UK if you can prove that there is 'goodwill' in a business asset, then this goodwill is protectable. Goodwill is essentially the value in creating a recognised business reputation.
If another trader 'passes off' their services as being yours and appears to claim that their services are yours or that you are in some way connected or have endorsed the services, then you can take action. You can claim damages or seek an injunction to prevent that use, so long as you can show that you have or are likely to suffer damage as a result of the use.
"It seems to me that the mere registration of the domain names, which are distinctive names, makes a representation to persons who consult the register that the registrant is connected or associated with the names registered and thus the owner of the goodwill in the names and would believe that the registered owners were connected or associated with the owner of the goodwill in the domain name they had registered," His Honour Judge Dight said.
Yoyo.email had claimed that it would take steps to ensure that it did not imply endorsement of its use of the domain names by RBS if it won the transfer of ownership of those domain names back before the High Court.
However, the judge said Yoyo.email "has no right to the goodwill attaching to those [domain] names whether or not the public were made aware that the representations made in respect of them were made by [Yoyo.email] or some other person".
Mitton said: "The High Court’s decision in this case is significant for the many thousands of brand owners who have found their brands registered as .email domains by Yoyo.email. The judge had no hesitation in confirming that the principle established by BT v One in Million in 1999 remains good law, meaning that brand owners who find their trade marks hijacked by third party domainers have a clear, swift and cost effective means of attacking such registrations through the courts."
"It is also significant in setting a clear precedent that decisions made by UDRP panels through the WIPO procedure are not capable of being challenged through the courts. This provides certainty for brand owners who have achieved a positive result in such proceedings, safe in the knowledge that the decision is not open to review or appeal through the courts," she said.