Overview

In this case Global Projects Management Ltd (GPM) had registered <citigroup.co.uk> at around the time of the merger of the banks that formed Citigroup Inc. The use of the domain name was restricted to the receipt of emails (although automatic responses were sent to say that the email was misdelivered), and this had continued for over 6 years (the usual limitation period for trade mark infringement).

Justice Park found that there was an ongoing action of passing off. In the first instance there was a reported order to pay £30,000 as a contribution to damages and costs, with the rest to be assessed.

The dispute had originally come to our DRS but had to be suspended when it went to court. Another oddity of this case was that it started when GPM sued various Citigroup companies for 'groundless threats' under s.21 Trade Marks Act 1994. This (approximately) provides that a party can sue if another party makes threats to sue for trade mark infringement and then does not. In response to this action, Citigroup did sue for trade mark infringement, suing both GPM and also the director of GPM, Mr Davies. This explains the rather complicated headings for the names of the parties in the judgement.

The case was appealed, but there was some form of confidential settlement so no appeal judgement was made.

The judgement

This is the judgement: Download as a pdf file which was originally delivered in handwritten form.

Justice Park made extensive reference to the One in a Million case and made it clear that he had to follow it. In One in a Million, the defendants had argued that they were not using the domain, but the judge rejected that. Here Justice Park also rejected the argument, saying (at paragraph 40):

The mere registration and maintenance in force of a domain name which leads, or may lead, people to believe that the holder of the domain is linked with a person (eg Marks & Spencer or British Telecom, or, I would add, Citigroup) is enough to make the domain a potential "instrument of fraud", and it is passing off.

This potentially goes further than One in a Million did, as it suggests that any registration which may confuse the public is infringement, whereas in One in a Million the court based much of its reasoning on a domain name liked to a very well-known company and did not make such a strong statement in respect of the rest of them.

However, in this case the Judge set out various reasons why he felt that the 'generic' element to the domain name did not prevent this being passing off - the primary reason being the timing of the registration.

The judge also dealt with a defence based on limitation periods - essentially, an argument that the domain name had been registered more than six years before the claim was made in court. The judge dismissed this, noting:

There is no limitation defence, because passing off is a continuing cause of action (and so, I interpolate, is infringement of a registered trade mark). Admittedly Citigroup could not claim damages for any financial loss which it suffered more than six years before it brought its counterclaim, but realistically Citigroup is not looking for relief of that nature.