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Mere registration of business name as a domain name by third party can be ‘passing off’

Businesses and other organisations should monitor the Internet for third party registrations of domain names that are identical or similar to their own trading, brand and other names, as they may be entitled to bring immediate ‘passing off’ actions against those third parties.

A company claimed that the registration of its name, and variants of it, as email domain names by a third party amounted to ‘passing off’. Passing off laws aim to prevent third parties using a name in relation to their goods or services which is the same as, or similar to another business’s name without its permission.

To win a passing off dispute a business has to show that:

  • Its name has a good reputation (ie there is ‘goodwill’ attached to it)
  • The name is associated with its business
  • There has been a misrepresentation by a third party (which need not be intentional), which leads, or is likely to lead the public to confuse the third party’s goods and services with those of the business
  • It has suffered damage because of the third party’s use of its name

The third party in this case argued that it had not used the domain names it had registered, for example, none were linked to an active website. Therefore it had been ‘guilty of no wrongdoing’.

The High Court disagreed: just registering and owning a domain name can amount to passing off, and it did so in this case. The third party’s business plan showing what it intended to do with the domain names was irrelevant because the act of registration, and the appearance of the domain name on the publicly accessible WHOIS register, in itself amounted to passing off.

Operative date

  • Now

Recommendation

  • Businesses should monitor the Internet for new registrations of domain names by third parties that are identical or similar to their own trading, brand and other names, as such registration may entitle them to bring immediate ‘passing off’ actions against those third parties.

Case ref: Yoyo.email Ltd and Royal Bank of Scotland Group Plc and Others [2015] EWHC 3509

3 May 2016

Jonathan Waters is the founder of Helix Law. Before qualifying as a Solicitor he worked in industry and in investment banking for over a decade. He was also the Partner in charge of Commercial Litigation, Employment Law and Property Litigation at Stephen Rimmer LLP. Jonathan has wide experience of helping and advising businesses to avoid or to deal with commercial disputes and in particular construction disputes.

This article is written to raise awareness of the issues it discusses and it may not be updated after it is first written, even if the law changes. It is not intended to be legal advice and cannot be relied on as such. Helix Law is not responsible or liable for any action taken or not taken as a result of  this article. If you think the matters set out affect you and you wish to apply them to your particular circumstances then we are happy to give you free initial telephone advice. 

Contact Helix Law on 01273 761 990 or email: [email protected]