Litigation Recent Decisions 9/12/97

Injunctions against dealers in Internet domain names

Marks & Spencer v (1) One in a Million (2) Richard Conway (3) Julian Nicholson (4) Global Media Communications (5) Junic; Ladbrokes v same; J Sainsbury v same; Virgin Enterprises v same; British Telecommunications & Telecom Securicor Cellular Radio v same (1997)

Court: Ch D (Jonathan Sumption QC) 28/11/97

The court was considering applications for summary judgment in five actions, in each of which the plaintiff was a well-known business enterprise possessing substantial goodwill and valuable registered trade marks, most of which incorporate their name. The first, fourth and fifth defendants were dealers in Internet domain names, who registered names with organisations whose purpose was to allocate domain names. The second and third defendants were owners of the companies. The dealers had made a speciality of registering Internet domain names comprising the names or trade marks of well-known commercial or other enterprises without the consent of those enterprises. The domain names did not relate to active Web sites but were to be sold (either to the enterprise whose name or trade mark had been used, or to third parties, whether for illicit or innocent purposes) or retained to block the use of that name by others, including those whose name or trade mark it comprised. The plaintiffs alleged passing off and infringement of their trade marks.