David Rose examines Internet domain name 'hijacking'. David Rose is an assistant solicitor at SJ Berwin & Co.

In an application for summary judgment by Marks & Spencer, Ladbrokes, Sainsburys, Virgin Enterprises, British Telecom and Cellnet, Deputy Judge Jonathan Sumption QC granted an injunction against One in a Million, its directors and their respective businesses from using or dealing in domain names owned by the defendants but identical to the trading names of the various plaintiffs. The judge also ordered that the defendants transfer the domain names in question to the plaintiffs.

The decision consolidates the approach in the Glaxo-Wellcome and Directline actions in which Justices Lightman and Laddie took the view that defendants who had registered famous names at Companies House had the intention of making 'illicit profit'.

Judge Sumption has gone further in the present case by clarifying the nature of the wrong committed by registrants. This has previously presented difficulty for judges seeking a juridical basis to underpin their sense of moral indignation because, in the absence of any general law of unfair competition, the courts have to overcome the problem that defendants are not using the offending name.

In Glaxo-Wellcome Judge Lightman said the defendants' actions amounted to 'an abuse of the system of registration of companies' names', and when Harrods applied for summary judgment against an Internet name dealer who had registered the name 'harrods.com', he ruled in favour of the store. Judge Lightman did not give reasons for his decision.

Judge Sumption has provided clarity by finding that the defendants' activities amounted to passing off because they had, by registering these names, created an 'instrument of deception' which, by virtue of its availability for sale, was calculated to infringe the plaintiffs' rights.

On the question of trade mark infringement, the judge held that the act of holding a domain name by a professional dealer for the purpose of making it more valuable and extracting money from the trade mark owner amounted to use in the course of trade.

He went on to look at whether such use amounted to infringement and whether proof of confusion is required to establish infringement where an identical trade mark is used on non-competing goods and services. The judge was able to side-step the issue by finding that there was a likelihood of confusion.

The defendants' were ordered to pay £65,000 costs. This ruling may spell the end to domain name hijacking (and, indeed, the hijacking of company names and telephone numbers).