Another Beverly Hills Polo Club Appeal

UK Supreme Court

Author Christine Smith Licence CC BY-SA 4.0 Deed Source Wikimedia

 

Jane Lambert

In Beverly Hills Polo Club Litigation, I discussed the claim by Lifestyle Equities CV and Lifestyle Licensing BV ("Lifestyle") against Amazon UK Services Ltd and others over the sale of American sourced BEVERLY HILLS POLO CLUB merchandise in the UK that ended in the Supreme Court (see Lifestyle Equities CV and another v Amazon UK Services Ltd and others [2024] UKSC 8 6 Mar 2024).  Lifestyle returned to the Supreme Court recently in another dispute over that brand.  This time, the issue was whether the directors of a company that had infringed Lifestyle's BEVERLY HILLS POLO CLUB trade marks should be ordered to account for the profits that their company had gained from its infringement.  The issue is important because IP owners often sue not just the companies that infringe their rights but also the directors of those companies.  That is because the directors tend to have assets such as homes that can be sold or mortgaged to pay damages or accountable profits and costs to successful IP owners.

In this case, Lifestyle sued 16 defendants including Kashif Ahmed, Bashra Ahmed, Continental Shelf 128 Ltd ("Continental) and Hornby Street Ltd. ("Hornby Street") for trade mark infringement and passing off. Both Kashif and Bashra were directors of Hornby Street and Kashif was also a director of Continental. The action was tried by Mr Recorder Campbell QC (see Lifestyle Equities CV and another v Santa Monica Polo Club Ltd and others [2017] EWHC 3313 (Ch) 21 Dec 2017).  

He found that Kashif Ahmed had been the "ultimate decision-maker". He had managed the intellectual property portfolio for Continental and Hornby Street. He instructed Hornby Street's design director to oversee the design of a logo for the SANTA MONICA POLO CLUB brand. He selected the factory with which to place orders and agreed prices for the manufacture of polo shirts bearing the SANTA MONICA POLO CLUB logo. Bushra Ahmed had been head of sales for Hornby Street. Her role had been a very hands-on one managing the day-to-day running of this business with the help of a salesperson and a warehouse assistant. She had a showroom that stocked SANTA MONICA POLO CLUB goods. It was her decision to display those goods.  She also sold them to customers.  Mr Campbell found that both the companies and the Ahmeds had infringed Lifestyle's trade marks and passed off their goods as and for those of Lifestyle.

Actions for IP infringements usually take place in two phases.  First, the court determines whether the IP owner's rights have been infringed.  If they have, the owner can request an inquiry as to damages or an account of profits but not both. The purpose of the inquiry is to determine the injury, loss or damage that the IP owner has suffered as a result of the infringement and the amount of damages that will compensate him or her for that harm.  An account determines the profits that the infringer has gained from his or her wrongdoing and requires their surrender to the IP owner.  As it is not always obvious which remedy would benefit the IP owner more, the court can order an infringer to provide documents and information about his or her business to enable the owner to make an informed decision (see Island Records Ltd. v Tring International Plc and another [1995] 3 All ER 444).

Even though Continental and Hornby Street went into administration shortly after the first trial and were liquidated, Lifestyle opted for an account of profits.  The account was taken once again by Mr Campbell (see Lifestyle Equities CV and Another v Santa Monica Polo Club Ltd and others [2020] EWHC 688 (Ch) (23 Mar 2020)).  He assessed Hornby Street's accountable profits at £3,129,921. Lifestyle argued that that amount was recoverable from the Ahmeds.  Kashif resisted liability on the ground that he had no improper motive, he had acted on advice and had delegated the design of the logo to a professional design team.  Bushra also argued that she had acted without an improper motive or intention to infringe. The recorder ruled that none of those arguments was a defence in law.  However, he also held that the Ahmeds were liable to account only for the profits that they had personally received and not those that had accrued to Hornby Street.  He held that they should account for the proportion of their remuneration that resulted from the infringement which was £144,192 in Kashif's case and £57,007 in Bushra's. He also ordered Kashif to account for a £635,789 loan that he had received from the company.

Lifestyle appealed to the Court of Appeal against the decision that the Ahmeds were not liable to account for the profits made by Hornby Street. The Ahmeds appealed against the decisions that they were jointly and severally liable for the infringing acts of Hornby Street and that they had gained profits from the company's infringements for which they were liable to account to Lifestyle. The Court of Appeal upheld the recorder's judgment on most points but relieved Kashif Ahmed from liability to account for the loan and deducted the Ahmeds' income tax from the amount of accountable profits (see Lifestyle Equities C.V. and Another v Ahmed and Another [2021] EWCA Civ 675 (7 May 2021)).

The parties appealed to the Supreme Court pursuing the same arguments that they had advanced in the Court of Appeal.   The judgment of the Court was delivered by Lord Leggatt in Lifestyle Equities CV and another v Ahmed and Another [2024] UKSC 17 on 15 May 2024.  For those who are interested, I wrote a much fuller note on that judgment in Trade Marks: Lifestyle Equities v Ahmed on 2 June 2024 in NIPC Law.  The Supreme Court allowed the Ahmeds' appeals and dismissed Lifestyle's. 

The Court held that the Ahmeds had not infringed Lifestyle's trade marks because neither of them had personally used a sign that infringed those marks or done any of the acts that fell within s.10 of the Trade Marks Act 1994 or art 9 of the EU Trade Mark Regulation.  Lord Leggatt considered whether the Ahmeds might have been liable as accessories.  Accessory liability was a common law concept that operated alongside trade mark law and required knowledge of wrongdoing and tortious intent. There were sufficient differences between Lifestyle's trade marks and the signs used by Hornby Street for there to be argument and honest difference of opinion about the extent of the similarity and whether it gave rise to a likelihood of confusion or otherwise resulted in infringement. The recorder had made findings about the Ahmeds' knowledge that fell well short of a finding that they had the knowledge required for accessory liability. It followed that the courts below had been wrong to hold that the Ahmeds were jointly liable with Hornby Street for the infringements of Lifestyle's trade marks committed by Hornby Street. 

Having exonerated the Ahmeds from liability as primary tortfeasors and as accessories, it followed that they had ceased to be liable to account to Lifestyle for anything.  However, the Supreme Court agreed with the Court of Appeal that the only profits for which a person should be ordered to account were those that he or she had received and not those that had been received by anybody else. A person ordered to account for someone else's profits would not be giving up a gain but paying a penalty or fine which would be tantamount to an award of punitive damages.  Even if the Ahmeds had been liable as accessories there was no basis for requiring them to account for a portion of their salaries or, in Kashif's case, the loan.

There was a great deal more to Lord Leggatt's judgment than was strictly necessary for the disposal of appeals.  It appears that the Ahmeds had argued that company directors and possibly other agents are exempt from liability for the wrongs of their companies in certain circumstances.  Lord Leggatt analysed their argument and the cases cited in support and found no such rule. His lordship also analysed the development of accessory liability tracing one limb to Lumley v Gye (1853) 2 E & B 216; 118 ER 749 and the other to The Koursk [1924] P 140.  His dicta is likely to be cited in agency, company and employment law cases as well as intellectual property disputes.

Ever since the Supreme Court's judgment in Fish & Fish Ltd v Sea Shepherd UK [2015] AC 1229, [2015] UKSC 10, [2015] 2 All ER (Comm) 867, [2015] 4 All ER 247, [2015] 1 Lloyd's Rep 593, [2015 ] WLR(D) 102, [2015] 1 AC 1229, [2015] 2 WLR 694 it had become almost routine for claimants in intellectual property claims to join directors of small private limited companies as defendants to infringement suits on the basis that they were "controlling minds" or had participated in a common design.  Following Lifestyle Equities, it will be necessary to prove knowledge or intent on the part of company directors.

Anyone wishing to discuss this article may call me on 020 7404 5252 during UK office hours or send me a message through my contact page at any other time.

Beverly Hills Polo Club Litigation

Author Roger Schultz Licence CC BY-SA2.0 Deed Source Wikimedia Commons

  

Jane Lambert

Sometimes the same brand is owned by different businesses in different countries.  That did not matter much in the days before the Internet because the only consumers who were likely to come across the same brand in different hands would have been travellers,  Nobody minded if a tourist purchased goods marketed under a familiar label that were cheaper, better or simply not available at home while on holiday and brought them home. The only time there might have been a problem would have been if a trader imported large quantities of branded goods from overseas and attempted to resell them here. He or she would have risked an action for trade mark infringement from the owner of the brand in the United Kingdom. 

All that changed with the Internet because it created a worldwide marketplace for goods and services.  Trade marks protect brands within the country or territory for which they are registered.  They cannot prevent the use of the registered mark beyond that country or territory's shores.  There is in theory nothing to stop a consumer in the United Kingdom from selecting branded goods from a foreign website, paying and taking delivery of them abroad and arranging for a carrier to transport them home.  The consumer is not infringing any trade marks because he is not using the marks in the course of trade,  Nor is the retailer because the sale takes place abroad.  Yet such transactions would render trade marks useless in electronic commerce if they were allowed to continue.

The Court of Justice of the European Union has developed two doctrines to regulate such transactions:

• One is to treat targeting of consumers in a particular market as an infringement of the trademarks that have been registered in that market; and 
• The other is to the rule in Blomqvist's case (Case C-98/13 Martin Blomqvist v Rolex SA [2014] EUECJ C-98/13, [2014] Bus LR 356, [2014] WLR(D) 47, ECLI:EU: C:2014:55, [2014] ECDR 10, [2014] ETMR 25, EU: C:2014:55) in which the Court held that the mere entry of a counterfeit watch into Danish territory entitled customs officers and the IP owner to impound it,

The concept of targeting is better developed than the rule in Blomqvist's case but the UK Supreme Court has referred to only a handful of European and English cases in support of that doctrine.

The issue arose in Lifestyle Equities CV and another v Amazon UK Services Ltd and others [2021] FSR 19, [2021] EWHC 118 (Ch).   The word mark BEVERLY HILLS POLO CLUB and the equestrian logo shown below are held by different entities in Europe and the United States:

Clothing and luxury goods intended for the American market are marketed on Amazon's US website.  From time to time consumers in the UK have purchased trade marked items from that site and arranged for them to be transported to their homes.  

Lifestyle Equities CV and Lifestyle Licensing BV ("Lifestyle") sued Amazon.com Inc. for trade mark infringement alleging that Amazon's US site had targeted British consumers.  The action was tried by Mr Justice Michael Green who dismissed the claim for the following reasons:

"(i) the USA website advised incoming consumers from the UK about the availability of the UK website, (ii) that this would for UK consumers produce lower delivery times and prices than the USA website, (iii) that there were statistically very few sales of the US branded goods to the UK, and (iv) that Lifestyle's purpose in bringing the claim was not so much to prevent sales to the UK but to prevent UK consumers who strayed onto the USA website learning of the low prices of the US branded goods, thereby downgrading the value of the marks."

He also distinguished Blomqvist on the basis that the sale had been made in Denmark or the watch was intended for onward sale.

Lifestyle appealed to the Court of Appeal which found that  Mr Justice Michael Green had erred in several respects.  It carried out its own assessment of the facts and found that Amazon had targeted British consumers and had therefore infringed art 9 of the EU Trade Mark Regulation and s,.10 (1) of the Trade Marks Act 1994,  It granted an injunction and an inquiry as to damages to Lifestyle (see Lifestyle Equities CV and another v Amazon UK Services Ltd and others [2023] 1 All ER 905, [2022] EWCA Civ 552, [2023] Bus LR 1010, [2022] WLR(D) 199, [2023] 1 All ER (Comm) 189, [2022] FSR 20).

Amazon appealed to the Supreme Court which handed down judgment on 6 March 2024 (Lifestyle Equities CV and another v Amazon UK Services Ltd and others [2024] UKSC 8).  The Supreme Court carried out its own multifactorial assessment which led it to conclude that there had been targeting of British consumers and consequential trade mark infringement.  The Court of Appeal had erred as had Mr Justice Michael Green but as the Court of Appeal had reached the right decision the Supreme Court did not disturb its injunction or order for an inquiry as to damages.  Having found that Amazon had infringed Lifestyle's trade marks by targeting consumers it was unnecessary for the Supreme Court to make a finding on the rule in Blonqvist's case and the justices declined to do so.

Because of the numbers who use Amazon this judgment could have important and far-reaching consequences.  For those who want to learn more about this case, I have written a more detailed article in NIPC Law entitled Trade Marks: Lifestyle Equities v Amazon.  That article links to the judgments of the Supreme Court, Court of Appeal and Mr Justice Michael Green and other materials on the Supreme Court's website.  I am also willing to discuss this case with anyone who calls me on +44 (0)20 7404 5252 during normal business hours or sends me a message through my contact page,

UDRP: Responding to a Complaint

Author CyberGhostface Licence Out of copyright Source Wikimedia Commons

  

Jane Lambert

Over the last few days, I have been writing about the Uniform Domain Name Dispute Resolution Policy ("UDRP"),  The UDRP is an alternative dispute resolution procedure for resolving disputes between brand owners and domain name holders over the right to register a domain name,  As I said in The Terms that are incorporated into every Agreement to register a Domain Name on 30 Oct 2022, it works because an agreement to refer such disputes to the UDRP is incorporated into every agreement for the registration of a generic top-level domain name.

On 2 Nov 2022, I discussed how a brand owner can claim the transfer or cancellation of the registration of a domain name that is identical or confusingly similar to its trade mark or trade name in  Complaints under the UDRP.  In the last paragraph of that article, I promised to discuss how a domain name holder should respond to such a complaint in my next post.   As it happens, I discussed that topic in Defending your Domain Name in the UDRP which appeared in NIPC Law on 28 Nov 2015.

Even though that article is nearly 7 years old it is still relevant.  It requires updating in only two respects.  The first is that WIPO Overview 2.0 which I mentioned in the "Essential Reading" paragraph has now been superseded by WIPO Overview 3.0.   The second is that it is very difficult to challenge the decision of a UDRP panellist in the English courts (see Yoyo.email Ltd v Royal Bank of Scotland Group Plc and others [2015] EWHC 3509 (Ch) (2 Dec 2015) and  Ross v Playboy Enterprises International, Inc [2016] EWHC 1379 (IPEC) (13 June 2016)).

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page.

Complaints under the UDRP

Author WIPO Licence CC BY-SA 4.0 Source Wikimedia Commons

 

Jane Lambert

On Sunday I discussed the Uniform Domain Name Dispute Resolution Policy ("UDRP") in The Terms that are incorporated into every Agreement to register a Domain Name.  In this article, I consider how to bring a complaint under the Policy.

Why Use the UDRP

A brand owner who discovers a domain name that is identical or confusingly similar to his or her trade mark or trade name can usually bring an action for trade mark infringement or passing off in the English or other national courts (see British Telecommunications Plc and others v One In A Million Ltd and others [2001] EBLR 2, [1998] EWCA Civ 1272, [1998] 4 All ER 476, [1999] ETMR 61, [1998] Masons CLR 165, [1998] ITCLR 146, [1997-98] Info TLR 423, [1999] 1 WLR 903, [1999] FSR 1, [1999] WLR 903, [1999] 1 ETMR 6). The courts can sometimes grant an interim injunction within hours of the issue of a claim form and summary judgment within a few weeks if a defendant is within their jurisdiction.  They can also award damages and costs which UDRP panellists cannot.  However, court orders are difficult to enforce if the defendant is abroad or his identity or whereabouts are unknown and generally litigation is slow and expensive.  By contrast, an application to the WIPO for the transfer of a single domain name costs US$1,500 and a decision can be expected long before the time allowed for an exchange of pleadings.  The whereabouts or identity of a respondent is not an issue because the registrar is contractually bound to implement a panellists's order for the transfer of a domain name or the cancellation of a registration. 

Relevant Materials

The jurisdiction to transfer a domain name is contained in para 4 (a) of the UDRP which I discussed in my previous article. Brand owners or their legal representatives should also be aware of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and each service provider's supplemental rules.  The latest version of WIPO's Supplemental Rules is to be found on its website.  Although there is no doctrine of stare decisis as such, panels tend to follow previous decisions. Each service provider publishes its panellists' decisions on its website.  The WIPO has compiled an overview of its panels' views on selected UDRP questions which is now in its third edition ("WIPO Jurisprudential Review 3.0).  It also provides a guide to the UDRP.  

Procedure

Domain name dispute resolution proceedings are entirely in writing.  They begin when a brand owner files a complaint. Complaints to the WIPO can be filed directly online or on a model complaint form attached to an email.  Upon receiving a complaint, WIPO's Arbitration and Mediation Centre checks it for formal compliance with the Rules and Supplemental Rules.  Many domain name holders use businesses known as "privacy services" to hold the domain names on their behalf.  The WIPO or other authorized service provider may require the disclosure of the actual holder of the domain name. When that is done, a complainant may be invited to amend his or her complaint by adding the name of the actual holder as well as the privacy service as respondents.  The complaint is then served on the respondent who has 20 days in which to respond.   As often as not, a respondent fails to file a response within that time. Failure to respond does not result automatically in an adverse decision.   The complaint and any attachments or enclosures are sent to the panel who decides whether the complaint is made out.

Identical or Confusingly Similar 

The first element that a brand owner must prove is that the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights. Readers should note that it is necessary to prove that the domain name is identical or confusingly similar to just one trade mark and that trade mark can be registered anywhere in the world. In fact, it is not even necessary to show that a trade mark has been registered. Evidence of a right to bring an action for passing off will suffice. Lawyers acting for multinationals are tempted to refer to and exhibit their client's worldwide portfolios. There is no need for them to do so. It adds nothing to the case. Similarly, there is no need to annex authority that the ", com", ".org" or other gTLD suffix is disregarded. That is obvious. Excessive citation runs up costs and infuriates the panel who has to read all that matter for a US$1,000 fee. Identity or confusing similarity is a matter of impression and usually self-evident.

Trade mark registrations or the facts and matters giving rise to an action for passing off can conveniently be stated in para VI "Factual and Legal Grounds" of the model form. Any explanation as to why the domain name is similar to the trade mark should be inserted in para 12 A "The domain name(s) is(are) identical or confusingly similar to a trademark or service mark in which the Complainant has rights."

The Respondent has no Rights or Legitimate Interests in the Domain Name

The second probandum is that the respondent has no rights or legitimate interests in the domain name.  This is somewhat more difficult because it appears to require the complainant to prove a negative.   Para 2.1 of the WIPO Jurisprudential Review 3.0  provides the following guidance:

"While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."

One way of making out a prima facie case  is to show that none of the circumstances in para 4 (c) applies:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue"

It is also worth alleging that the use of the domain name would infringe a trade mark or constitute passing off and that the complainant granted no licence for such use.   As I said above, it is rare for a respondent to file a response.   It follows that the shifted burden of production is rarely rebutted.

Registration and Use in Bad Faith
The complainant has to show that the domain name was registered and is being used in bad faith.   At first blush this appears to be another difficult burden to discharge as an allegation of bad faith is a serious accusation in that it connotes impropriety if not actual dishonesty.   Also, a complainant must prove both registration in bad faith and use in bad faith.

The burden is alleviated by para 4 (b) of the UDRP which provides that "the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:"   Those circumstances are as follows:

"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

At least one of those circumstances applies to most cases, particularly the last as the disputed domain name is often used for a page with sponsored links and searches.  The click-through revenues from those links and searches constitute "commercial gain". As the panel is likely to have found that the domain name was confusingly similar to the claimant's trade mark the requirements of para 4 (b) (iv) will have been satisfied,.  It should be noted that the circumstances in para 4 (b) constitute only evidence of use and registration in bad faith which can be outweighed by other evidence but I have never seen it done.

Further Information
I first discussed this topic in Domain Name Registration which appeared in NIPC's Chambers Newsletter for October 1997.  Two years later the Internet Corporation for Assigned Names and Numbers ("ICANN") adopted the UDRP which I had envisaged in that 1997 article.  Shortly after the UDRP was launched, I settled one of the first complaints from the United Kingdom (and the first one ever to be settled by an English barrister) (see Re Superfi.com WIPO Case Number D2000-0789 Eddys (NottinghamIPO) Limited, trading as Superfi v. Mr Kingsley Smith  7 Sept 2000).  Not long afterwards, the WIPO invited me to join its panel and I decided my first case on 4 April 2004 (see WIPO Case No. D2004-0124 Microsoft Corporation v. TheBuzz Int (microsoftcore.com) 4 April 2004).  In my capacity as a panellist, I have resolved many disputes since then,  As a barrister, I have advised and drafted complaints and responses for both brand owners and domain name holders.

In my next article I will; discuss responses under the UDRP.    Anyone enquiring about the UDRP may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page at other times.  

The Terms that are incorporated into every Agreement to register a Domain Name

 

Jane Lambert

One of the reasons why the internet works as well as it does is that there is a fast and relatively inexpensive procedure for resolving disputes between brand owners and domain name holders.  That procedure is contained in a document called the Uniform Domain Name Dispute Resolution Policy ("UDRP"). The UDRP is incorporated by reference into every agreement for the registration of a generic, and many country-code, top-level domain names.  Domain names ending in ".com", ".org" or ".biz" are examples of generic top-level domains ("gTLD"). Domain names ending in a two-letter country code such as ".nu" (Niue). ".tv" (Tuvalu) or ".ws" (Samoa) are country code top-level domains ("ccTLD").

The UDRP is incorporated into domain name registration agreements upon the insistence of a not-for-profit California company called the Internet Corporation for Assigned Names and Numbers ("ICANN").  ICANN was established at the behest of the United States government to regulate the allocation of domain names.   ICANN subcontracts the registration of gTLD to businesses known as "registrars" and ccTLD to national domain name registration authorities.  One of the terms of ICANN's agreements with those registrars and authorities is that the registrar or authority will incorporate the UDRP into every agreement for the registration of a domain name that it enters with a third party. 

Para 1 of the Policy states that the UDRP's purpose is to set forth the terms and conditions in connection with a dispute between the domain name holder and brand owner over the registration and use of an internet domain name.  In the Policy the pronouns "we" and "us" refer to the registrar or other authority and "you" to the person registering, maintaining or renewing a domain name.

An important but frequently overlooked provision of the Policy is para 2 which sets out the representations and warranties that every person seeking to register, maintain or renew a domain name makes to the registrar or other authority.  It will be recalled that a representation is an assertion as to a fact, true on the date the representation is made, that is given to induce another party to enter into a contract or take some other action and a warranty is a promise of indemnity if the assertion is false.  These representations and warranties are as follows:

"(a)    the statements that you made in your Registration Agreement are complete and accurate; 

(b)    to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; 

(c)    you are not registering the domain name for an unlawful purpose; and 

(d) you will not knowingly use the domain name in violation of any applicable laws or regulations."

It is the responsibility of the person seeking registration, maintenance or renewal of the domain name to determine whether the domain name registration infringes or violates someone else's rights.  It will be appreciated that these are onerous obligations.

Para 3 of the Policy sets out the circumstances in which a registrar or other authority may cancel, transfer or otherwise make changes to a domain name registration.   These include "receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which you were a party and which was conducted under this Policy".  

Para 4 sets out "the type of disputes for which you are required to submit to a mandatory administrative proceeding."  Subpara (a) provides:

"Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present."

Para 4 states that those proceedings will be conducted before one of the following administrative-dispute-resolution service providers:

• Arab Center for Domain Name Dispute Resolution 
• Asian Domain Name Dispute Resolution Centre
• Canadian International Dispute Resolution Centre
• The Czech Arbitration Court Centre for Internet Disputes
• National Arbitration Forum, and
• World Intellectual Property Organization ("WIPO").

Each of those service providers has a list of panellists who will decide the dispute on the documents that the parties submit to them.   Those documents will always include a complaint and exhibits known as annexures from the brand owner.  Sometimes there will be a response from the domain name holder.  After receiving the complaint and any response that may have been filed the service provider will appoint a member of its panel to determine the dispute as a sole panellist.  If the respondent pays an additional fee each of the parties may choose a panellist for a three-member panel.

Most panellists are lawyers specializing in intellectual property or patent or trade mark attorneys.  I have served on the WIPO panel for nearly 20 years.  I have also drafted complaints for trade mark owners and responses for domain name holders.  Complaints and responses are submitted on online forms.   In the next and subsequent articles, I will discuss how to complete the complaint or response in a way that is likely to appeal to a panel. I will also warn of the sort of submissions that are likely to infuriate the panel. Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 or send me a message through my contact page. 

The IPR Help Desk's Domain Name Primer

 

Jane Lambert

The IPR-Helpdesk is an EU-funded service that supplies information on intellectual property to small and medium enterprises.  It carries out research into IP, publishes regular newsletters and other publications and holds webinars and other events.  Among its most useful publications are infographics that communicate essential information in a digestible format.

The latest of those infographics is on Domain Names and Cybersquatting which can be downloaded free of charge from the EU Publications Office.  That document explains what is a domain name, what is meant by the terms TLD (top-level domain), second-level domain and third-level domain and the difference between generic and country-code top-level domains.  It discusses how to register domain names, the practice of cybersquatting and what can be done to prevent it.

Readers who require further information on domain names, cybersquatting and dispute resolution may read my articles on Domain Name Disputes and Dispute Resolution Policies and Domain Name Glossary.  The Uniform Domain Name Dispute Resolution Policy is one of the most successful alternative dispute resolution schemes in the world.  For a few hundred United States dollars, trade mark owners or those who could bring an action for passing off can apply for the transfer or cancellation of a domain name that is the same as or confusingly similar to their trade mark. 

Such applications come before administrative panels (of which I am one) who decide whether the domain name is the same or confusingly similar to a trade mark in which the complainant has rights,  whether the domain name holder has any rights or legitimate interests in the disputed domain name and whether the domain name was registered and is being used in bad faith.    If the panel finds in favour of the complainant on all those issues he or she can order the transfer of the domain name to the complainant or its cancellation,   The whole process is completed within a matter of weeks.   Usually, far less time than would be required for a claimant to issue and serve proceedings in the English courts and for the defendant to respond.   

The UDRP has been adopted by many other domain name registries including Wales (see my articles Welsh Top Leval Domain Names  12 April 2019 and Welsh IP Cases: D2016-0485 ALDI GmbH & Co. KG v. Mahfuz Ali  13 April 2019 NIPC Wales).  Many others such as Nominet regulates the ".uk" space and the Swiss domain name authority have similar policies.   To see how the process works just read my decision in Re D2022-1858 lancastersarchery.com.

Readers may be interested to learn that I do not confine myself to deciding domain name disputes.  I also advise and represent parties to such disputes.   As a panellist, I know exactly what the tribunal that will decide the dispute is looking for.   Having such insight, I can usually offer a much more successful and cost-effective service than most others.   Those who want to learn more can call me on +44 (0)20 7404 5252 or send me a message through my contact form.

Auntie Jane's Trade Mark Tips No 10 - Passing Off

Jif Lemon

Author Paul Hurst Licence CC BY-SA 2.5 Source Wikimedia Commons

 

Jane Lambert

Since 1876 it has been possible for suppliers to protect their brands by registering signs that distinguish their goods from those of all other suppliers as trade marks with the Intellectual Property Office.  There is, however, a much older judge-made protection known as the law of passing off.  Lord Oliver summarized that law as "no man may pass off his goods as those of another."

Lord Oliver said those words in a speech in the House of Lords in a case called Reckitt and Colman Products Ltd v Borden Inc. [1990] UKHL 12, [1990] 1 WLR 491, [1990] 1 All ER 873, [1990] RPC 341, [1990] WLR 491.  For many years, the claimant company had sold lemon juice in squeezable lemon-size plastic containers like the one in the photo. They claimed that that packaging distinguished their juice from the juices of all other suppliers.  When the defendant tried to supply lemon juice in squeezable lemon shape plastic containers, the claimant complained that such packaging led consumers to buy the defendant's juice in the belief that it was the claimant's.  Proceedings were brought in the High Court which ended up in the House of Lords, then the highest court of appeal in the United Kingdom.

Lord Oliver was one of the judges who heard that appeal.  In deciding that case, he set out the elements that a complainant has to prove:

"First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff."   

There is considerable overlap between trade mark law and the law of passing off, Very often, brand owners sue for both causes of action.  There are, however. important differences that allow claims to be brought under one head but not under the other.

Probably the most significant of those differences is that a claimant has to prove that he or she has goodwill by reference to a mark, get-up or other indicia.  That usually requires evidence of sales and advertising under a mark over time.  By contrast, the owner of a registered mark may sue for infringement of that mark before he or she has made a single sale,  Conversely, it is sometimes possible to sue for passing off where the defendant has used a mark that cannot be registered as a trade mark.

Rights to bring actions for passing off can be important in trade mark law.  One of the grounds for opposing an application for the registration of a trade mark or invalidating a registered mark is that the use of the trade mark can be prevented by an action for passing off (see s.5 (4) (a) of the Trade Marks Act 1994).

You will find my other tips indexed here.

If you are an entrepreneur, business owner or anyone else seeking guidance on UK trade mark law, I can give you up to 30 minutes of my time for initial advice and signposting. That may not be enough time to dispose of your issue but it should be enough to define it and assess what further assistance you need, what sort of professional is best placed to supply it and how and where to find such assistance.