Introduction
This one of the first, and certainly the best known UK case on domain name registration. It was a fairly early case (1997) and went to the Court of Appeal. In the English courts, only the House of Lords is higher, so the judgement of the Court of Appeal is binding on the High Court and the County Courts. This case has therefore set the law in this area ever since.

There were actually five cases which were joined together, because the defendents were similar. The Plaintiffs were all well known companies: (1) British Telecommunications plc (2) Virgin Enterprises Plc (3) J Sainsbury Plc (4) Marks and Spencer Plc and (5) Ladroke Group Plc.

There were several defendants (1) One In A Million Ltd, its directors (2) Mr Conway and (3) Mr Nicholson and their other companies (4) Global Media and (5) Junic.

The Background
The domain names actually in dispute had been registered by different companies. One In a Million had registered <ladbrokes.com>, <sainsbury.com>, <sainsburys.com>, <j-sainsbury.com>, <marksandspencer.com>, <cellnet.net>, <bt.org> and <virgin.org>. Global Media had <marksandspencer.co.uk>, <britishtelecom.co.uk> and <britishtelecom.net> and Junic had <britishtelecom.com>.

As part of the original judgement the judge noted a number of other trade marked words which had been registered including <burger-king.com>, <waitrose.com>, <cadburys.com>, <spice-girls.net>, <macdonalds.com>, <buckinghampalace.org>, <marconi.com>, <spicegirls.com>, <leedsunited.com>, <itn.com>, and <spicegirls.org>. Other names advertised on their website were <nokia.co.uk>, <motarola.co.uk>, <bskyb.net> and <0700.net>.

The defendants did not point the domain names to websites or otherwise use them (except in one, apparently accidental). There was an offer to sell, however, both on the website and in correspondence. Burger King had been offered <burgerking.co.uk> for £25,000 + VAT and BT offered <bt.org> for £4,700 + VAT.

The case was filed on the basis of registered and unregistered trade mark infringement, and it was not disputed that the Defendants had registered the domains.

The High Court Judgement
The judgement in the High Court was given by a QC acting as a judge. He looked first at the Marks and Spencer case, and drew an analogy with earlier cases that the High Court had considered in which people had registered company names prior to mergers and then tried to sell that newly registered company (or its name) to the companies that were trying to merge.

The judge noted that 'passing off' could occur where someone "put or authorise[d] someone to put an 'instrument of deception' into the hands of others.". In this case, the domain name would be the 'instrument of deception' because it would create a misrepresentation. He noted that "The mere creation of an 'instrument of deception', without either using it for deception or putting it into the hands of someone else to do so, is not passing off." and "It  follows that the mere registration of a deceptive company name or a deceptive Internet domain name is not passing off."

The judge felt that it was "beyond dispute" that what was going on was designed to infringe Marks and Spencer's rights in future. He could see no other reason for chosing it, noting "Where the value of a name consists solely in its resemblence to the name or trade mark of another enterprise, the Court will normally assume that the public is likely to be deceived, for why else would the Defendant's chose it?".

The defendants argued that sale of the name to Marks and Spencer, or mere registration with a view to blocking Marks and Spencer would not be passing off. The judge accepted that, but thought that since they were only saleable to M&S, the argument failed.

The judge then turned to the registered trade mark case. The judge noted that there was no requirement under the Trade Marks Act 1994 for the goods or services for which the mark was being used to be 'similar' to the goods or services for which the mark was registered if the words being used were 'identical or similar' to the mark. In other words, because <marksandspencer> is 'similar' to the registered trade mark, it is irrelevant that the domain name was not being used in relation to similar goods.

The defendants argued that (1) there had been no use in trade (as the name might suggest, a trade mark protects use in trade, not any use), and (2)  there should be a likelihood of confusion - and since there was not, there was no harm.

The judge dismissed this first argument very quickly, noting that "Use 'in the course of trade' means use by way of business. It does not been use as a trade mark ... The use of a trade marks in the course of the business of a professional dealer for thep urpose of making domain names more valuable and extracting money from the trade mark owner is a use in the course of trade." In relation to the second, he merely said that there was confusion, so he did not need to decide.

The judge then turned to the other four cases. While he accepted that there could, in theory, be innocent uses for 'virgin', 'bt' and 'sainsbury' he felt that in this case that was clearly not true, and ordered injunctions in all cases.

The Court of Appeal
The case was appealed. Lord Justice Aldous gave the judgement of the court. He started with a history of the first instance case, and then discussed the historical development of registered and unregistered trade mark law. In doing so, he showed that since the times of Queen Elizabeth I the law had prohibited use by one trader of another trader's name on their goods. He traced how the law had developed over time to deal with new situations and noted that the Plaintiffs suggested that in effect "..the court will not stand by and allow, what can be graphically call, an 'instrument of fraud' to remain in the hands of a trader, if it is likely the name could result in passing-off'.

He then looks at a range of cases which concern the degree to which Mr A can be liable for providing Mr B with an item which is likely to mislead Mr B's customers, even if Mr B is not deceived at all.

He noted that the cases shows a clear power "to grant injunctive relief where a defendant is equipped iwth or is intending to equip another with an instrument of fraud. Whether any name is an instrument of fraud will depend upon all the circumstances. A name which will, by reason of its similarity to the name of another, inherently lead to passing off is such an instrument. If it would not inherently lead to passing off, it does not follow that it is not an instrument of fraud. the court should consider the similarity of the names, in the intention of the defandant, the type of trade and all the surrounding circumstances."

He then summarised the facts again, noting the offers to sell and approving of the original judge's interpretation of the situation. The judge felt that the 'Marks and Spencer' name could only refer to the famous shop, and had no other purpose. The fact that a WHOIS search would show a link was a false representation and therefore passing off. He then went further than the original judge, rejecting the suggestion that 'mere registration did not amount to passing-off' and that M&S had suffered no damage. He felt that the M&S-related domains were instruments of fraud, as no legitimate use could be made of them by the registrants.

Although the judge accepted that there could be legitimate uses of 'virgin' and some of the other names, he felt that in this case, it was clear that this was not what the defendants had in mind. He therefore found these too to be instruments of fraud.

In relation to the registered trade mark claim, the judge felt that by seeking to sell domain names which were confusingly similar to registered trade marks they had infringed those marks.

The appeal was dismissed, and the original summary order stood.