Bina Cunningham on trade mark and domain name disputes. Bina Cunningham is a partner at Willoughby & Partners.

A UK-based IT company, Prince plc, has successfully obtained a High Court declaration that trade mark infringement proceedings which had been threatened by Prince Sports Groups were unjustified. It has also obtained an injunction against the continuation of such threats.

The decision is an eye-opener for trade mark owners, and for anyone interested in Network Solutions Inc's (the body that registers domain names) domain name dispute resolution policy.

Prince plc had traded under the name Prince since 1985. Its domain name (prince.com) was registered in 1995. Prince Sports' trade mark specifications were neither identical nor similar to the IT services carried out by Prince plc.

It is noteworthy that Prince Sports did not try to defend the s.21 Trade Marks Act application by alleging infringement. Instead it argued that it threatened US not UK proceedings.

The message is clear. Great care must be exercised when trade mark owners assert their rights. They need to specify the relevant jurisdiction and the nature of the claim to avoid a s.21 application succeeding.

The case also highlights the fact that the very process of registering domain names and resolving such disputes needs to be overhauled. NSI's policy takes no account of common law rights that a domain name registrant may have acquired. Instead, if a trade mark certificate is produced by the complainant, NSI will require the domain nameholder to produce a trade mark certificate or commence proceedings against the complainant to avoid the name being put on hold. The dispute policy does not pay heed to the fact that the trade mark registration may not cover the specific services and goods in relation to which the domain name is being used.

Trade mark registrations could therefore be irrelevant in resolving domain name disputes. They are merely an indicator of the legitimacy of the domain name registrant's rights. Other legitimate indicators such as common law rights should not, however, be ignored.

To minimise the scope for litigation, the law needs to embrace and harmonise the treatment of domain name registrations to give security to all concerned. Further worldwide debate is required to achieve this aim.