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By Ali Qassim
Dec. 22 — Brand owners should be encouraged by the U.K. High Court's recent ruling upholding a domain name arbitration decision, according to attorneys interviewed by Bloomberg BNA.
The England and Wales High Court of Justice ruled that U.K.-based Yoyo.email had no “cause of action” to appeal a 2014 Uniform Domain Name Dispute Resolution Policy decision finding that Yoyo.email was liable for passing off four domain names owned by the Royal Bank of Scotland plc (Yoyo.email Ltd. v. Royal Bank of Scotland PLC, 2015 EWHC 3509, EWHC, No: HC-2015-000379, 12/2/15).
The high court's decision shows that English courts “are likely to take a robust stance in cases in which a domain name has been intentionally registered because it incorporates the trademark of another person,” Matthew Harris, a partner at Waterfront Solicitors LLP in London told Bloomberg BNA Dec. 21.
Michael Forrester, a senior associate at Brandsmiths S.L. Ltd. in London, said Dec. 21 that the judgment is “a further reinforcement for brand owners that the English Courts will continue to protect its registered and unregistered marks from questionable use in domain names.”
The high court followed an English Court of Appeal decision from 1999 in which Internet domain name dealer One in a Million lost its appeal of an earlier order to relinquish Internet domain names containing the trademarks of major U.K. brand names (2 ECLR 1274, 12/10/97).
In that ruling, Judge William Aldous applied the law of “passing off” to domain names for the first time in an English appellate court. The English Court of Appeal held that placing another party’s distinctive name on the register of domain names can constitute actionable misrepresentation.
In Yoyo's recent attempts to overturn the UDRP's decision for the domain names RBSbank.email, rbs.email, natwest.email and coutts.email, the company “attempted to suggest that the approach in One in a Million was now out of date, given technical advances in the Internet and increased sophistication of the public since 1999,” Forrester said.
Judge Marc Dight dismissed Yoyo's claims Dec. 2, finding that the “essential factual elements behind Aldous LJ's decision have not altered, namely the registration of a distinctive domain name on a register which may be accessed by the public.”
The high court also rejected the argument that relevant law had meaningfully changed since One in a Million was decided.
“The decision in One in a Million has been settled law for a relatively lengthy period in the fast-moving world of the Internet, and further approval of the concepts in that case should give particular security to rights holders and their advisors,” Forrester said.
In its ruling, the high court also declared that the UDRP does not provide a standalone cause of action, nor jurisdiction for the court to act as appellate bodies in which to challenge UDRP outcomes.
The decision followed the reasoning of a 2012 High Court ruling involving Michael Toth, the registrant of the Emirates.co.uk domain name, he said.
The 2012 ruling stated that a .uk domain name registrant who was unsuccessful in dispute resolution proceedings at .uk registry Nominet, can't avoid transferring a domain name by seeking a declaratory judgment that the registration isn't abusive (17 ECLR 575, 3/28/12)(07 WCRR 33, 4/15/12).
According to Harris, the Toth case “involved Nominet's DRS but the principles enunciated in that case mean that it was always highly likely that the English courts would reach a similar conclusion in UDRP cases.”
Most brand owners have preferred UDRP and Uniform Rapid Suspension System arbitrations to English court proceedings because of the near universal success rates in such arbitrations. However, Harris said, brand owners should not assume that URDP or URS proceedings will always be the correct legal strategy.
“In many cases it may be safer and easier, at least where the defendant is located in the UK, simply to commence proceedings in the English courts,” Harris said.
Harris warned that British companies initiating URS or UDRP proceedings must submit to jurisdiction where the registrar or registrant of the domain name is located. For example, UK-based Playinnovation Ltd. recently found itself in court in Arizona even though it was litigating against fellow UK firm Yoyo.email (19 ECLR 1546, 12/10/14).
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