HomeInsightsStill One In a Million after nearly 20 years

Article by

Yoyo.email Limited v Royal Bank of Scotland Group PLC and Ors [2015] EWHC 3509 (Ch)

Introduction

The High Court has struck out an action brought under clause 4(k) of the UDRP (Uniform Domain Name Dispute Resolution Policy) for declarations that a decision of a panel appointed by WIPO (the World Intellectual Property Organisation, one of the bodies authorised to appoint panels to determine UDRP disputes), which ordered the transfer of certain domain names from the claimant to the defendants, was wrong. At the same time, the court granted summary judgment on a counterclaim by the defendants that the registration of those domain names was passing off.

Background

The claimant, yoyo.email Limited, an English company, had registered a number of domain names: rbsbank.email, rbs.email, natwest.email and coutts.email.  The defendants, all members of the Royal Bank of Scotland banking group established in the UK, filed a complaint under the UDRP at WIPO seeking transfer of the domain names.  The panel appointed by WIPO upheld the complaint and ordered the transfer of the domain names.  Clause 4(k) of  the UDRP, states the following:

Availability of Court Proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded.…

Following a successful UDRP complaint, there is a period of 10 business days after which the registrar will transfer (or cancel if that is the outcome) the domain names in question unless it receives notice of legal proceedings having been commenced by the unsuccessful respondent in a court of competent jurisdiction.

The claimant in this case, yoyo.email Ltd (“Yoyo”) relied on this clause to bring an action for declaratory relief, seeking declarations from the court that facts which the panel had found in favour of the defendants (“RBS”) were, in fact, the opposite.  The meaning and scope of this clause was one of the issues resolved in this case: did this clause essentially appoint the court as an appellate body?  Or convey jurisdiction to hear any complaints the respondent wishes to raise about the panel?  If not, what does it do?

In response to this claim, RBS brought a counterclaim for passing off and registered trade mark infringement.  RBS applied to court to have the claim struck out and for summary judgment to be granted on the counterclaim.  The application was heard by His Honour Judge Dight in the High Court (Chancery Division).

What does clause 4(k) do?

The effect of clause 4(k) of the UDRP had been the subject of a prior decision of the High Court in Patel v Allos Therapeutics [2008] ETMR 75.  An equivalent provision in the DRS (dispute resolution system) run by Nominet for <.UK> country code domain names had also been the subject of a prior decision of the High Court, in Toth v Emirates [2012] FSR 26.  Those cases had determined that the provision did not give the court an appellate function, but merely preserved the right for parties to bring action for such causes of action as may subsist, which may be related to the domain names.

In considering what this clause might be about, the Judge in Patel had given an example of an unsuccessful UDRP complainant bringing an action for passing off or trade mark infringement, which might relate to the domain name in issue.  However, if the UDRP complaint had been successful, it was not up to the complaint to then establish infringement: it would be for the unsuccessful respondent to identify some cause of action upon which to base a case.  The judge noted that an unsuccessful respondent “therefore faces considerable difficulty in identifying a cause of action upon which the Panel’s decision can be challenged”.

In Toth, the Judge had determined that the effect of the DRS was to appoint an expert to resolve the specific dispute and the equivalent clause regarding jurisdiction did not permit or create jurisdiction for parallel court proceedings on the point, and that the clause provided no basis for granting declarations on matters which had been assigned to the expert under the policy (and the court saw no practical utility in granting such declarations, since all parties were bound by the terms of the policy).

HHJ Dight had no hesitation in following Patel and in applying Toth,by analogy, to this case.  The Judge held that clause 4(k) of the UDRP did not give rise to a separate cause of action for the claimant, nor did it afford jurisdiction to the court to act as an appellate or review body.  The claimant had sought to argue that the UDRP should be construed under Arizonan law, and argued the UDRP should be construed by reference to traveaux prearatoires, and that the question should be at least explored at trial.  The Judge held that there was not a sufficiently close link between any traveaux and the final wording of clause 4(k) for the traveaux to be relevant.  Accordingly, the Judge struck out the claim for declaratory relief.

The counterclaim: application of One in a Million

The seminal case of BT v One In A Million [1999] FSR 1 is the leading authority in English law on the question of whether registration of a domain name may amount to passing off.  In that case, the defendants had registered a number of domain names for or featuring famous brands, such as BT, Marks and Spencer, and Virgin.  The brand owners brought actions for passing off.  The judge at first instance had granted summary judgment and the defendants had appealed. Aldous LJ gave the leading judgment in the Court of Appeal and decided two important points of principle relied on by the defendants in their application for summary judgment on the counterclaim in this case.

The first point was that the mere registration of a domain name could be passing off, because the registration of the domain names makes a false representation that the registrant of the domain name is associated or connected with the brand owner.  Aldous LJ gave the example of an internet user conducting a WHOIS search for marksanspencer.co.uk and seeing the details of the registrant – a substantial number of persons would conclude that the registrant must be connected to or associated with Marks and Spencer PLC.

The second point was the creating and registering domain names of or featuring a brand created an “instrument of fraud”, on the basis that any realistic use of the domain names would result in passing off.

The defendants relied on this judgment.  The claimant sought to distinguish the case by saying that understanding of the internet has moved on since the 1990s and on the basis that the facts of the present case were different.  The claimant’s evidence in the application was that it intended to use the domain names in issue as part of an email system, in which it intended to feature disclaimers that its services were not connected with any of the brand owners in question.

HHJ Dight decided that he did not need to decide (and indeed he did not accept) whether use of the internet had changed since the 1990s.  Following the reasoning of HHJ Hacon in Vertical Leisure Limite v Poleplus Limited [2014] EWHC 2077 (IPEC), he held that One in a Millionestablished principles of law by which he was bound.  The Judge held that the registration of the domain names was passing off, under the first principle established by Aldous LJ, and so did not need to decide the second point.  The Judge granted summary judgment on the counterclaim accordingly.

Comment

In filing an UDRP complaint, the complainant is required to submit to the jurisdiction of either the place in which the registrar has its office or the place where the registrant is based: this judgment gives useful guidance on the effect of that submission, at least in terms of how an English court will treat any subsequent action.  The outcome is particularly useful for complainants but does not give unsuccessful respondents much hope for bringing action in the English courts after a decision to uphold a complaint has been made.

The court’s endorsement of the principles in One in a Million is useful reminder, following on the back of Vertical Leisure, that the case is very much still regarded as ‘good law’ despite being some years old.  Unless this case, or any subsequent case, is taken to the Court of Appeal or further to the Supreme Court, Aldous LJ’s reasoning in One in a Million will remain the seminal domain name case for a good while yet.