Most of the domain name cases in the courts have been based on actions for trade mark infringement, or unregistered trade mark infringement ('passing off'). If you need background as to what trade marks or passing off are, you should consult sites such as Intellectual Property.

The first domain name case before the English courts related to <harrods.com> in 1996, but it was undefended.

The main case is the 1997 Court of Appeal case of One in  Million. It established that the mere registration of a domain name could make that name 'an instrument of fraud' and could be passing off. The court explained at some length why it was necessary for the courts to protect the reputation and goodwill of traders and prevent it being abused.

This principle was taken up in Scotish law: for example, the case of Bonnier Media Ltd was a case of the Outer House of the Court of Sessions in 2002. In that case, the court found both trade mark infringement and passing off, and referred to "One in a Million".

The 2005 case of <citigroup.co.uk> has potentially widened the law, with the judge making a statement to the effect that the possibility of confusion could lead to a domain name being actionable passing off. In his judgement, Park LJ said that passing off was occurring even though the registrant had registered the domain name some 8 years before and had not actively used it.

Also in 2005 the Court of Appeal considered the case of <phone4u.co.uk>. The registered trade mark that the Claimants relied on was a graphical one, and the court spent a great deal of time considering the extent to which is could be relied on. However, in paragraphs 30 to 47 of the judgement the court found that there was passing off, finding that the use of the domain was leading to deception. The court also explained the difference between 'mere confusion' which was permissible and 'deception' which was not.

In relation to what causes the deception, the court will look at whether emails are being misdirected, a factor in phone4u.co.uk, citigroup.co.uk and in the 1997 case Dixons Group Plc v Triton Tek Ltd, where the defendant tried to increase the price demanded on the basis of misdirected emails.

In Ritz v Mr and Mrs C-Vani using a mark in relation to similar services was deemed to lead to passing off, and in Tesco v Elogicom Ltd the use of domains with 'tesco' in them to lead to Tesco's own sites (and take commission on sales) was deemed to be offering services of internet direction, and thus trade mark infringement (and passing off). The Metalrax case was a more standard claim for passing off, but notable because it had been to the DRS first.

Because of the reach of the internet, companies with similar names can come into contact where they might never have before, as in Reed v Reed, and use of a domain name which reflects a company name can be trade mark infringement even where the company name is not - as in the Klaus Kobec case.

The question of whether a trade mark is actually used or infringed by a specific activity conducted via the internet is dealt with in the jurisdiction section.

Parties also have to be aware of s.21 Trade Marks Act 1994, which deals with "groundless threats" actions - essentially a grounds to sue someone who threatens trade mark infringement actions for no good reason. It was successfully used in relation to domain names in the 1997 <prince.com> case where a UK company sued a US company under this provision. It was used again in 2005 in relation to <citigroup.co.uk>, although on that occasion the trade mark holder countersued for trade mark infringement and won.

Disclaimer
This page provides general information about sepicific court cases. It is not legal advice and you should take your own independent legal advice for your specific situation.