Parties


In the Court of Appeal, May LJ, April 2002


The original judgement is available from BAILII (external link).

Background

Dr C Vanci (we do not know if he was the same C Vanci as in the Ritz case) registered some 180 domain names, including metalrax.co.uk in 1999. His stated intent was to raise the search engine ranking of his Disability UK website by using these names. The first instance judge appears to have accepted that there was no bad faith at the time of registration.

By March 2000 Metalrax had found out about the domain name, and wrote to object to the registration. Dr Vanci wrote back, quoting the "first-come, first-served" principle and saying that the name "metalrax.co.uk represents a jazzy website title" and mentioning that they had already had an offer for it from "an XXX group interested in promoting the site for hosting collection of nude ladies in extremely compromising positions ... centering on creation of cold steel fetish eroticism ...[but]... metalrax.co.uk is still under offer."

In due course the domain was pointed towards pornographic content, to the evident displeasure of Metalrax's shareholders. Metalrax complained to Nominet, under our dispute service (which was quite different to the current service). The complaint went to our external expert, Tony Willoughby (now the DRS Experts Chair) who concluded that the domain name was being used in a manner likely cause confusion and recommended suspension or cancellation. We suspended the domain name in July 2001 and said that we would cancel it if the parties did not agree by 15th October 2001. Dr Vanci refused to promise not to re-register the name unless he received (a) a realistic business-oriented offer and (b) a letter of apology addressed to all the staff of Disability UK. No agreement was reached and court action began. We agreed to maintain the domain until the legal action ended.

The decision

The judge, citing One in a Million, decided that the registration and initial use of the domain name was not passing off, but from March 2000 (when Dr Vanci sent the letter asking for money) Dr Vanci had consistent sought to extract money from the claimants.

Because we were due to delete the domain, Dr Vanci would have had to re-register it to continue. The judge felt that, whatever the rights and wrongs of the original registration, a re-registration by Dr Vanci would be solely for the purpose of extorting money. Accordingly, he granted an injunction preventing Dr Vanci from reregistering the name when it was cancelled.

The appeal

Dr Vanci appealed, saying that he did have a legitimate commercial use for the name, and his actions had been in response to the "high-handed" actions of Metalrax, not in bad faith.

• He noted that he was asking for £250 and said that this was not "extortion".
• He said that One in a Million was not comparable and no longer relevant, referring to the (then fairly new) Uniform Dispute Resolution Procedure (the .com dispute system, created for ICANN with help from WIPO). This has a three part test - (1) Rights of complainant, (2) lack of rights of respondent and (3) bad faith.
• He also said that Nominet would review their decision depending on the outcome of the court case.

His permission to appeal was rejected. Lord Justice May said that for One in a Million to apply, it is not necessary that the intent to pass off or to use a name for the purposes of passing off should be there from the outset.

In this case, May LJ was prepared to accept that the initial acquisition was in good faith, but from March things were different because:

• he knew about Metalrax's goodwill; and
• he "began to use it in what can only be described as bad faith".

May LJ noted that since March various things had happened:

• First, that Tony Willoughby's decision for Nominet that there was confusion had been made, and any suggestion by Dr Vanci that it was wrong could not be sustained.

• Second, Dr Vanci had tried to sell the domain name to the claimants. While May LJ did not see this as "high fraud" as described in One in a Million, it was the same sort of case.

May LJ also said that, however interesting the UDRP was, the One in a Million case was the Court of Appeal case and binding on him. He felt that all the required elements to obtain an injunction were present, and the fact that Nominet might not cancel the name if the court case resolved matters did not change that. Dr Vanci had no real prospect of success, and the appeal rejected.