The High Court in Yoyo.Email Ltd v Royal Bank of Scotland Group Plc & Ors has found that the mere registration (irrespective of use) of a domain name incorporating a trade mark may amount to passing off. Furthermore, the High Court held that it did not have the jurisdiction to hear appeals or act as a review body in relation to Uniform Dispute Resolution Policy (“UDRP”).
Facts
Yoyo.Email Ltd (“Yoyo”) registered several domain names including rbsbank.email, rbs.email, natwest.email and coutts.email (“Domain Names”). The registered owners of the trademarks “RBS”, “RBSBANK”, “NATWEST” and “COUTTS” considered its rights were being infringed by Yoyo’s registration of the Domain Names and therefore filed a complaint with the World Intellectual Property Organisation pursuant to the Internet Corporation for Assigned Names and Numbers UDRP. The panel ordered the Domain Names to be transferred to the registered owners, concluding that the Domain Names were identical or confusingly similar to the trademarks, that Yoyo’s proposed use of the Domain Names was not genuine, legitimate or fair and that Yoyo had registered the Domain Names in bad faith.
Yoyo appealed the panel’s decision in the High Court applying for a declaration that it had been guilty of no wrongdoing. The trade mark owners counter claimed for passing off and requested that Yoyo’s claim be struck out.
Decision
The High Court found Yoyo had no cause of action under the UDRP and that the UDRP did not afford any jurisdiction to the court to act as an appeal or review body of the panel’s decision. Furthermore, the court held that the mere registration of the Domain Names, irrespective of any intended use, represented to persons consulting the register that Yoyo was associated with the names registered and was thus the owner of the goodwill in those names. This may cause such a person to believe Yoyo to be connected or associated with the trade mark owners’ businesses. It therefore followed that Yoyo’s registration of the Domain Names amounted to passing off. Moreover, the passing off occurred at the point of registration and therefore there was no need to explore Yoyo’s proposed business model and intended use of the Domain Names.
Comment
The case reaffirms the principle established in the 1999 case British Telecommunications Plc v One in a Million Ltd and means brand owners have a clear, cost effective means of attacking abusive registrations. This will be welcomed by brand owners who continue to fight against cybersquatting in order to protect their brand. The case will also provide certainty for brand owners who have been successful with a domain name complaint, as it confirms that UDRP decisions are not capable of being challenged by the UK courts.
For further information on the impact of this case or any related matters please contact Tom Lingard, tom.lingard@stevens-bolton.com or another member of the Intellectual Property team at Stevens & Bolton LLP.
Tom Lingard