The High Court rejected Plentyoffish’s argument under section 5(4)(a) of the Trade Marks Act 1994, on the basis that Plentyoffish had no goodwill in the UK at the time when the application was made and had not shown that any UK residents had become members of its website. As it had no UK customers, the registration of the trade mark in the UK did not constitute passing off. There was a difference between having a reputation and acquiring goodwill. It may be that people in the UK knew of Plentyoffish because UK users had visited the site and so it had a reputation; however, goodwill required it to have customers, which was not the case here. Customers would mean that they actually received the goods or services (whether or not it was provided for free).

It may not be much consolation for the loser, but at least there are plenty more fish in the sea.

The ban might not make it through to the next round as other Member States of the EU have argued that the ban is in breach of EU competition law, and the law is set to be reviewed by the European Commission before it comes into force. Several trade bodies, including the European Gaming and Betting Association, have also criticised the law.

However, ICANN is building safeguards into the new system. It would cost US$185,000 to apply for a relevant suffix and the organisation would need to show that they have a genuine claim to that name. They would also need to prove that they meet high technical standards, with IT robustness and intellectual property protections for the brand. The application form would also involve about 50 questions to answer, with each question about 2-3 pages. It will not be easy, but domain name addresses will not look the same again in just a few months’ time as global brands start to change the look of the Internet landscape.

Based on the evidence before the judge, he was satisfied that this would meet the elements of passing off as follows: the claimant had obtained a reputation in the domain name ‘offshorelsm.com’, there had been a misrepresentation by the way the domain names had been used that could lead visitors to the site into thinking that the web sites were Lifestyle Management’s, and there was damage. In addition, it was argued that the actions could amount to reverse passing off as the copy web sites had content that was potentially untrue, which would damage Lifestyle Management’s reputation and credibility.

It must be emphasised that this was an interim ruling and not a full hearing, so this does not amount to a final decision on all the facts. However, the award that the court made is of interest. The High Court ordered an interim injunction against continued use of the domain names. For now, they should merely be used to be directed to a blank web page. As to whether or not the claims had substance and the domain names would be transferred to the ex-client, that would all depend on the outcome of the parties’ full arguments at the main trial.

Under a 2001 European Union Regulation called the Brussels I Regulation (which can be found here), a consumer can only be sued by a business supplier that ‘directs its activities in that consumer’s state’ in the consumer’s own domicile, but the consumer can choose whether to sue such a business in their own domicile or that of the business. The ECJ said that, for a business to be considered to be ‘directing its activities’ to one or more other ‘Member States’ (i.e. other countries within the EU), a number of factors should be considered by national courts. The factors include:

• the nature of the business (tourism would be an obvious pointer);
• use of phone numbers with international dialing codes displayed;
• use of ‘top level’ domain names such as .com or .eu or a top level domain name that is different to where the business is established;
• the currencies, languages and translations used on the site;
• referring to a country by name;
• money spent online to facilitate the placing of the business’s site in a way that is targeted to another country; and
• the mention of customers who live in other states.

For the full text of the ruling, click here.

As this case shows, anyone trading online with consumers may need to be prepared to fight legal battles in the courts of other countries. If they want to avoid that, they should seek appropriate legal advice.

The domain names in question are no longer accessible, and users are instead diverted to a webpage detailing that the domain name had been taken over by the government and listing the United States laws on copyright and counterfeit goods. It is believed that many of the websites are attempting to continue trading by moving to new domain names.

To see the full text of the proposal click here.

The OFT took action against the sites under the Consumer Protection from Unfair Trading Regulations 2008 for being misleading in their presentation as they had copied the EHIC brand, used an official sounding domain name and omitted important information by failing to show that they were not an official provider of EHICs. There was also a failure under the Electronic Commerce (EC Directive) Regulations 2002 to provide certain information in a form and manner which is easily, directly and permanently accessible.

Three of the companies have given formal written undertakings to the OFT to not engage again in deceptive practices, one company has folded and the other has had its domain name suspended by its domain name registrar.

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.’

Nominet’s action follows its suspension in December 2009 of 1,200 names in conjunction with police. The sites had advertised branded goods such as from Ugg, Tiffany and Links of London but delivered counterfeit goods or nothing at all. For more on that story, please click here: http://www.mablaw.com/?s=Nominet.

Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP and editor of www.Upload-IT.com, comments: ‘Whilst this action could usefully stop genuinely illegal sites, there are potential downsides. People’s web sites can be crucial to obtaining revenues, and if they are shut down even for a few hours, let alone a few days, a business could be brought to its knees. If a registrar is in dispute over something else with the web site owner and effectively suspends the web site owner’s web presence in order to apply some pressure, this could have drastic effects and no doubt lead to some major legal claims.’

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.