The claimant sought summary judgment against the defendant for operating websites using domain names which included the claimant’s name and trade marks. Tesco had entered into agreements with a third party company who organised adverts for Tesco on other sites. Tesco approved the main sites which did not use the Tesco name, but the defendant added further names about which the complaints were now made.
Held: Though the sites merely referred the web visitors on to the Tesco site: ‘the use of internet domain names is itself a service offered to the public, whereby the entry of such a name in the address bar of the computer of an individual browsing the internet will take them to a website. In my view, by registering and making its ‘tesco’ related domain names available as pathways on the internet to Tesco websites with a view to generating income for itself in the form of commission, Elogicom did use in the course of trade a series of signs (those domain names) which were each similar to the trade marks registered by Tesco ‘ and
‘I do not think that . . . trading without Tesco’s consent on Tesco’s own goodwill and by reference to Tesco’s own trade marks in order to generate business for itself, and commission payments to it from Tesco, could be described in objective terms as an honest practice. ‘ The internet domain name dispute resolution service is an alternative way of dealing with the matter, and Tesco had no duty to use it. There was no doubt that the ction constituted passing off. The counterclaims also failed.
Judges:
Philip Sales
Citations:
[2006] EWHC 403 (Ch)
Links:
Statutes:
Jurisdiction:
England and Wales
Citing:
Cited – Marks and Spencer Plc, Ladbrokes Plc, J Sainsbury Plc, Virgin Enterprises Ltd, British Telecommunications Plc, Telecom Securior Cellular Radio Ltd v One In A Million and Others PatC 28-Nov-1997
The registration of internet domain names which would infringe trade marks and potentially facilitate passing off can be protected summarily by quia timet injunction. The defendants were dealers in domain names and the use of a trade mark in the . .
Cited – British Telecommunications Plc; Virgin Enterprises Ltd; J Sainsbury Plc; Marks and Spencer Plc and Ladbroke Group Plc v One In a Million Ltd and others CA 23-Jul-1998
Registration of a distinctive Internet domain name using registered trade marks and company names could be an infringement of a registered Trade Mark, and also passing off. It was proper to grant quia timet injunctions where necessary to stop . .
Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 01 July 2022; Ref: scu.238950