Passing off and domain names

Dilution is an issue that will require resolution. Meanwhile, new ways of impinging upon trader’s reputation continue to develop. The latest application of passing off to a similar situation comes from the adoption of well known names as domain names (addresses) for the internet by unauthorized individuals.

Source: Catherine Colston & Kirsty Middleton, Modern Intellectual Property Law, Second Edition, Cavendish publishing, 2004

In Harrods vs. UK Network Services Ltd [1997] EIPR D-106, individuals registered the domain names ‘ladbroke.com’, ‘ourprice.com’, ‘cadbury.com’ and ‘harrods.com’. After securing suspension of the registration, the plaintiff succeeded in an undefended passing off action, despite the fact that the name, once suspended, could not be used and, therefore, posed no threat of damage to the plaintiff’s goodwill.

A similar result was achieved in Glaxo plc vs. Glaxowellcome Ltd [1996] FSR 388. This case did not involve a domain name, but the creation of an ‘off-the-shelf’ company bearing the name Glaxowellcome Ltd by the defendant just as Glaxo plc took over Wellcome plc, creating Glaxo-Wellcome plc. The defendant offered to sell the new company to the plaintiffs for the 100 times the normal price. Lightman J granted an injunction, despite the defendant’s undertaking not to trade under the ‘Glaxowellcome’ name. Had he done so, and Lightman J did not find the defendant a credible witness, the necessary element of damage to goodwill would still have been nebulous as it is hard to see what damage could have been done to the plaintiff pharmaceutical multinational enterprise.