Whose name is it anyway?

Sarah ahmed says that recent attempts to stamp out domain name trafficking could have serious consequences for some innocent Internet users. Sarah Ahmed is head of the commercial department at Anthony Gold Lerman & Muirhead. Trafficking in domain names, the latest menace to hit the Internet, has been brought to a screeching halt by Jonathan Sumption QC's decision to grant the plaintiffs summary judgment in British Telecommunications & ors v One in a Million & ors (1997).

The decision appears to put paid to the practice whereby someone registers a domain name for a well-known business and then offers to sell it to the business at a high premium.

But the ruling may also be used as a stick with which to beat anyone trading with a name which is protected by trade mark or in which there is substantial goodwill, even if the domain name has been registered in good faith.

I recently acted for a small business which had traded for more than 30 years under a name which happened to incorporate the trade marks of a well- known multinational corporation. The trade marks comprised the surname of the original owner of the business and this element of my client's name was registered as a domain name. My client's business provided different services from those in respect of which the multinational had registered its trade marks.

The multinational alleged that the registration of the domain name was a misappropriation of its reputation and goodwill, and amounted to passing off and an infringement of its trade marks.

A number of defences could have been raised on my client's behalf. In Prince v Prince Sports Group, the plaintiff successfully took the well-known US tennis racket manufacturer to court for threatening legal proceedings against it for breach of trade mark pursuant to s21 of the Trade Marks Act 1994.

This provision recognises the scope for trade mark owners to abuse the monopoly conferred by their trade mark. My client could have argued that by seeking to prevent its innocent use of the domain name, the multinational was abusing its trade mark to claim an excessive monopoly over services which were unconnected with its true trading interests.

Unfortunately, faced with the threat of costly litigation, my client agreed to relinquish the domain name.

The multinational's conduct highlights a menace recognised by Lord Woolf's reforms, namely the lack of equality between the wealthy and the under-resourced litigant. In keeping with his recommendation that going to court should be a last resort, Nominet UK, the provider of registration services for domain names with the "uk" suffix, has set out guidelines for the resolution of domain name disputes.

These provide for the investigation of the dispute and, if necessary, the referral of the decision to a panel of experts, with the further option of mediation in the event that the dispute is not settled quickly.

The notoriously high costs of litigating intellectual property disputes mean there is a danger that small businesses will lose out in the names game. It is to be hoped that alternative dispute resolution will be recognised as the best way to resolve such disputes.