A clash over a domain name and alleged passing off has been dealt with in the High Court. In Wasabi Frog Ltd v Miss Boo Ltd and Gulfraz Mohammed [2009] EWHC 2767 (Ch) http://www.bailii.org/ew/cases/EWHC/Ch/2009/2767.html, Mr Justice Warren granted a protective injunction to the owners of the miss boohoo brand, an online supplier of women’s fashion clothing, in their complaint against a newly created rival supplier operating at www.missboo.co.uk.
The main case remained undetermined – the application dealt with in the judgment was one to restrain Miss Boo Ltd and Gulfraz Mohammed from trading under or by reference to the marks or domain names “Miss Boo”, “miss.boo.co.uk” or any of the applicant’s marks or domain names “boohoo”, “boohoo.com” and “boo”, or any marks or domain names colourably similar thereto. The applicant also sought an order requiring the defendants to disable their website at www.missboo.co.uk. Thus the initial issue mainly concerned the need for an injunctive remedy. Wasabi merely had to show a good arguable case (technically, indeed, just a triable issue), that damages alone would not prove an adequate remedy and succeed on the balance of convenience test.
Notwithstanding relatively lightweight evidence of confusion and his difficulty in putting himself in the place of a young girl living in the North of England, Mr Justice Warren favoured the applicant’s case.
Particular points of interest in the case include the reliance on Google Adwords, Google Analytics and Internet searches generally as evidence of confusion. It is also striking to observe that the defendant started online trading only around 1 September 2009 and judgment was given on the application on 1 November; that must explain why the much cheaper Nominet dispute resolution system was not used.
