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Friday, November 28, 1997 Published at 16:28 GMT


Banned - Domain name dealing

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 "", "", "" and "". 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 "" for 25,000 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.

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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 "", "" and "". 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 65,000 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.

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