Domain Name: Passive Holding

January 1, 2000

The UK High Court has ordered the assignment of a domain name to the owner of the corresponding trade mark, even though the domain name registrant was not using the name or seeking to sell it for a profit.

The registrant, GPM, registered in 1998, on the same day that the merger between Citicorp and Travelers Group, to form Citigroup, was announced.

Citigroup wrote to GPM seeking a transfer of the domain name. GPM failed to comply with Citigroup’s request for a transfer, so Citigroup began proceedings under the dispute resolution procedure offered by Nominet. However, those proceedings were suspended when GPM sued Citigroup for issuing ‘groundless threats’, under s 21 of the Trade Marks Act 1994, in its letter to GPM. Citigroup counterclaimed for trade mark infringement and passing off and sought summary judgment on the basis that GPM had no real prospect of defending the counterclaim.

The court granted Citigroup’s summary judgment application and ordered the domain name to be transferred to it, finding GPM liable for trade mark infringement and passing off. In doing so, the court followed the leading UK judgment on this issue, BT and others v One in a Million and others [1998] EWCA Civ 1272.

The decision is good news for trade mark owners because, unlike the defendants in One in a Million, GPM had not attempted to sell the disputed name for a profit. The court stressed that this was not required in order to show liability: the mere registration and maintenance in force of a domain name that leads people to believe that the owner is linked with another can make the domain name ‘an instrument of fraud’ and be passing off. The court placed emphasis on the circumstances surrounding GPM’s registration and ownership of the name. In particular, it noted that:

  • the timing of the registration showed an intention to obtain a potentially deceptive domain name that could cause harm to Citigroup; and

  • GPM had received thousands of misaddressed emails intended for Citigroup and, on one occasion, the managing director of GPM had considered using sensitive information in one of those e-mails to buy shares.

Among other things, the case is a useful reminder that:

  • trade mark owners should bear in mind the rules on ‘groundless threats’ when contacting domain name cybersquatters; and

  • merging entities must act quickly to obtain all domain names relating to the new group, before others do so.

Melonie Atraghji is a Professional Support Lawyer in the IP/IT practice of Freshfields Bruckhaus Deringer.