The "One in a Million" case, British Telecommunications plc and others -v- One in a Million Ltd, decided by the English Court of Appeal at the end of the nineties tolling the death knell for web-site name pirates, thievery, inter alia, is still interesting to analyse under IT Law.
The facts of the case were that one in a Million (the appellants) were dealers in Internet domain names, specialising in registering names identical or similar to the names of well-known companies without their consent. Domain names including Marks & Spencer, Sainsbury’s, Virgin, British Telecommunications and Ladbroke Group were registered by the appellants who wrote to the various companies whose name or mark featured in particular domain names, offering them for sale.
The Court of Appeal dismissed the appeal upon the grounds that "the domain names were registered to take advantage of the distinctive character and reputation of the marks. That is unfair and detrimental".
As the judgement of the Court of Appeal carries considerable weight, it is worth setting out, at some length their findings.
As an example of passing off, the judge considered the Marks & Spencer name. Anybody seeing or hearing the name connects it with the business of Marks & Spencer plc. So, if a person taps on his keyboard the domain name marksandspencer.co.uk, and sees the name One in a Million Ltd, it could clearly create a false representation constituting the common law tort passing of off.
Nevertheless, the appellants argued that mere registration did not amount to passing off and that M & S had not established any damage or likelihood of damage. The judges refuted such arguments by explaining that the registration of the domain name including the words "Marks & Spencer" was an "erosion" of the exclusive goodwill in the name which damages or is likely to damage M & S.
The judges came to a similar conclusion, for slightly different reasons, in respect of all the other companies involved (Virgin, BT, Sainsbury’s and Ladbrokes).
Concerning the trade mark infringement, the main issues here, are the definition of a trademark and its legal consequences. The Court based its arguments on various provision of the Trade Marks Act 1994:
- Section 1 defines a trade mark as "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings";
- Section 9(1) states "the proprietor of a registered trade mark has exclusive rights in the trade which are infringed by use of the trade mark in the United Kingdom without his consent". The acts amounting to infringement, if done without the consent of the proprietor, are (section 10(3)):
"A person infringes a registered trade mark if he uses, in the course of trade, a sign which:
- is identical with or similar to the trade mark, and
- is used in relation to goods or services which are not similar to those for which the trade mark is registered
where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the trade mark."
The Court held that, this section does not require the use of a trademark. The mere sale of a domain name, which is confusingly similar to a registered trademark, represents an infringement.
This decision has consequences for the innocent as well. Ideally trademark searches should be carried out prior to registration of a domain name.
Finally, referring to the passing off and the trademark infringement, the Court of Appeal confirmed the injunction originally granted by the High Court.
This case shows that, contrary to what its critics claim, the Internet is a regulated medium. It is also a good illustration of the willingness of the British courts to protect the fame of well-known corporate names from unscrupulous businessmen.
