The court said that the Bangladeshi airline’s name was so similar to the US airline name that consumers would ignore any difference between “airline” and “airways” and as the services were the same (despite the routes being different), Section 10(1) was breached. Section 10(1) says that it is an infringement of registered trade mark rights if the same mark is used in respect of same services. Section 10(2) deals with similar names or similar services but with a likelihood of customer confusion. Section 10(3) relates to taking unfair advantage of another strong brand for example use of a name in bad faith. As to passing off, the US’s goodwill was made out, and it was clear that the Bangladeshi company’s use of the name would mislead consumers and cause confusion. There was no realistic prospect of defending any of those four claims, let alone all of them, and so summary judgment was awarded.

Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP and editor of www.upload-IT.com, comments: ‘Cases like this bring to the fore how important it is to obtain domain names relating to your brand before cybersquatters do. Although there are useful procedures to obtain the transfer of domain names quickly as happened here, cybersquatters can do untold damage to your brand before you obtain the transfer. They may persuade you to pay significant sums of money for what should really be your brand, just for you to avoid the uncertainty of going to an arbitration service where you may not win, and to enable you to obtain a transfer quickly. In the meantime, to keep the pressure on you and to increase the price you may be willing to pay, they may link from sites containing the domain names to your competitors or to porn sites. Far better to have a brand protection strategy and register in advance all common spellings and mis-spellings of your brand and across all top-level domains such as ‘.com’, ‘eu’, ‘.biz’ and ‘.uk’. But as IHG saw here, there may be a huge number of possible domain names that may be based on your brand, so the task of definitively registering everything relevant may not be easy.’

The Internet Corporation for Assigned Names and Numbers, the body responsible for managing technical matters relating to the Internet’s domain name system, established a quick and cheap domain name dispute resolution arbitration service in 2000 for dealing with disputes over ‘.com’ domain names. The National Arbitration Forum is one of the bodies appointed by ICANN to hear the domain name disputes. To win a domain name from a registrant, the complainant must show that it has rights in a trade mark confusingly similar to the domain name, the domain name registrant had no rights in the name and registered and used it in bad faith.

In this particular case, Google failed to show that Google was confusingly similar to Groovle.  This is only the second time out of 65 domain name disputes that Google has lost.