[H-GEN] Domain Name Grabbing! (fwd)
David Starkoff
dbs at humbug.org.au
Wed Dec 3 21:46:19 EST 1997
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This came in my email a couple of hours ago, and I thought the curiosity
of some members of HUMBUG may be piqued by this report.
FWIW, this decision is not binding on any Australian court (as well as any
appellate English court). However, the decision seems to be fairly sound,
and, I think that the English law which was argued in the case is similar
to the Australian law.
David.
(Did somebody mention Law?)
- --
dbs at humbug.org.au | http://student.uq.edu.au/~s343905/
``What sort of person would give up a salary of a jillion dollars a
year in a big firm to drive a rusted-out Ford Pinto and wear suits
made of old horse blankets?'' -- James D. Gordon, III.
- ---------- Forwarded message ----------
Date: Thu, 4 Dec 1997 11:54:49 +1100 (EST)
From: Nigel Hamilton <nige at socs.uts.EDU.AU>
To: computer-law at socs.uts.EDU.AU
Subject: [computer-law] Domain Name Grabbing!
The High Court in London has banned two men from
dealing in Internet "domain names" in a case brought by
five major UK companies. Domain names are the essential
Website or e-mail addresses.
The court heard that the men made a speciality of
registering names and then offering them for sale or
hire to potential users. The court ruled that the men
should be banned from infringing trademarks.
Richard Conway and Julian Nicholson were said to have
made a speciality of registering domains such as
"ladbrokes.com", "marksandspencer.com",
"spice-girls.net" and "buckinghampalace.org". All were
apparently registered without the consent of the owners
of the names.
The court was told the two men then tried to sell the
names for profit. Mr Conway wrote to Burger King
offering to sell them the name "burgerking.co.uk." for
=A325,000 plus VAT, otherwise it would be available for
sale to any other interested party.
The case was brought by five companies whose famous
names were under threat: British Telecom, Marks &
Spencer, Ladbrokes, J Sainsbury and Virgin Enterprises.
Deputy Judge Jonathan
Sumption QC said: "The
history of the defendants'
activities shows a deliberate
practice followed over a
substantial period of time of
registering domain names
which are chosen to
resemble the names and
marks of other people and
are plainly intended to
deceive. The threat of passing-off and trade mark
infringement, and the likelihood of confusion arising
from infringement of the mark, are made out beyond
argument."
He said the Internet had no central regulating authority
and was almost entirely governed by convention.
The two men and their businesses, One in a Million Ltd,
Global Media Communications and Junic, registered names
with recognised organisations such as Network Solutions
Inc of Virginia and Nominet UK, and then offered them
for sale to potential users much in the same way as
company registration agents.
The names offered by Global included
"macdonalds.co.uk", "sundaytimes.co.uk" and
"thetimes.co.uk". The court was told that such names
could only have four uses:
To sell to the named company or organisation, which
might be prepared to pay a high price to have it under
its control.
To sell to a third party, perhaps for the purpose of
deceiving the public.
To sell to someone with an interest in the name
Or to leave the name unused and unsold, thus
blocking its use by others - including those whose name
or trade mark it comprised.
The judge stressed that the mere registration of a name
was not, in itself, passing off or infringement of a
trademark, but the obvious threat was there and
injunctions should be granted to prevent it.
The judge said; "Any person who deliberately registers a
domain name on account of its similarity to the name,
brand name or trademark of an unconnected commercial
organisation must expect to find himself on the
receiving end of an injunction to restrain the threat of
passing-off, and the injunction will be in terms which
will make the name commercially useless to the dealer,"
he said.
He granted injunctions against the pair and their
businesses, and ordered them to pay =A365,000 legal
costs. He also directed them to take steps to have the
disputed names assigned to the complaining companies.
Speaking after the case, Mr Nicholson said he
considered the judge's decision a crucial one for the
future of the domain name registration system. "It can
only be a very important decision. Surveys have shown
that 41% of domain names included parts of other
people's trademarks. The judgment doesn't really address
that," he said.
Before the case was heard, Mr Nicholson had argued
that he and Mr Conway were conducting a business just as
a collector of rare postcards would. "If we had a rare
postcard and someone else said they wanted to buy it
from us, we would consider selling it to them," he said.
He said he was now unsure about the future of One in a
Million Ltd. "One in a Million Ltd has no assets, and
neither myself or Richard Conway have any significant
assets. It is unlikely that any claim for costs could be
met," he said.
Source:
http://www.news.bbc.co.uk/hi/english/sci/tech/newsid%5F35000/35458.stm
Nigel Hamilton
Barrister
Lecturer - Department of Information Systems
School of Mathematical and Computing Sciences
University of Technology, Sydney
ph 9514 1826
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