Domain Name Rights – Yoyo case rebounds at court

The High Court has recently ruled again on the issue of third parties registering domain names of well-known trade marks. This used to be a recurring problem in the early days of domain name registration, but each time new generic domain names become available (in this case the .email domain) it seems that the issues are revisited.

The case of Yoyo.Email Ltc –v- Royal Bank of Scotland Group & ors [2015] has provided useful guidance on how the owner of a well-known brand name can object to the registration of that name as an internet domain name by a third party, on the grounds of passing off, even if the name has not been used by that third party.

Yoyo had registered approximately 4,000 domain names with the suffix .email.   A selection of those email names included rbsbank.email, rbs.email, natwest.email and coutts.email.  Yoyo had no apparent connection with RBS which objected to the registration body using the Dispute Resolution Procedure adopted by the World Intellectual Property Organisation (WIPO).   This procedure is intended to help parties seek an early ruling on whether the registration is valid, and made in good faith.   If not, the procedure allows an order to be made requiring the transfer of the registered domain name to the complainant.

WIPO’s process for challenging registrations of generic Top Level Domain names (gTLD’s), which include the .email names, is reasonably quick. There is a similar dispute mechanism for .co.uk names run by Nominet.   It held that the registrations had not been made in good faith and ordered that they be transferred to RBS.

Yoyo challenged that decision in the High Court and sought a declaration that they had not been guilty of “wrongdoing”.   This in turn was met with a cross-application by RBS to strike out that claim, which in turn provoked Yoyo to seek an order to revoke certain RBS trade marks because of non-use.

The decision of HHJ Dight was very clear. The court held that the mere registration of the domain names by Yoyo amounted to passing off.  Any act of a seemingly unconnected third party registering a well-known brand name as a domain name, now faces the prospect of it being challenged because it amounts to passing off.  It does not matter what the intended use of that domain name is, the act of registering it at all will be enough to assert that there is a misrepresentation which can be challenged at court.

The court also ruled that it was not to be used as a route to appeal against the WIPO decision.

This is a welcome ruling for brand owners, faced with third parties with no connection to them or their brand name, registering those names as internet domain names. It does not matter what the intended use of the name will be; the fact that it has been registered is now sufficient for a challenge.  It reinforces the position that, if a challenge is made through WIPO (or, by extension, Nominet) about the registration of a domain name, it cannot be appealed at court.   This should give further comfort to brand owners that there is a clear route of challenge in the courts to meet any unauthorised registration of domain names containing brand names.

If you would like any further information on how to protect your brand rights or intellectual property, please contact  Stephen McVey on 0113 227 0245 or at stephen.mcvey@gordonsllp.com.