Facts
The Defendant had copied the Claimant’s website and inserted the
material on other websites with confusingly similar names.
Customers would therefore think they were dealing with the Claimant
but in fact were on the Defendant’s contrived website, where they
were encouraged to give credit card details. At that point,
the contrived website would appear to crash, leaving the Defendant
with the credit card details and able to commit frauds.
Judgment was entered against the Defendant on 3 November
2000. Various orders had been made against the Defendant and
the Claimant alleged 13 breaches of the orders. These
breaches included orders requiring the Defendant to provide
information as to the operation of the contrived website, the
whereabouts of various people, copy documentation and copies of
website pages and similar such details and information.
The Defendant did not appear, was not represented and his
whereabouts were not known.
Judgment
The Defendant had acted in flagrant breach of court orders and
appeared to set them at naught. It was a case of continuing
conduct in breach of a court order. The Defendant was
exploiting domain names, infringing the Claimant’s intellectual
property rights so as to perpetrate frauds on the public and
seriously putting at risk the Claimant’s goodwill.
After “anxious consideration”, the right course was to order
that the Defendant should be arrested and sent to prison for 12
months. During that time, he could apply to the Court to
purge his contempt.
A further order was made for the transfer to the Claimant of all
domain names held by the Defendant in the Claimant’s name or any
colourable imitation of them, in particular any colourable
imitation of them or form of them which might constitute
infringement of copyright or trade mark or other interference with
property rights. The Master was authorised to execute the
transfer in the name of the Defendant.
The judge added as follows:
“I am told that one of the problems that
exist today for companies like Marks & Spencer faced with
persons of the like of Mr Cottrell is that orders such as those
that have been made in this case prohibiting an individual from
using a particular domain name can be evaded by adopting a
minuscule variation upon it. The domain name providers will
comply with a court order prohibiting the use of a particular name
but because all questions of registrations and domain name and
monitoring are computer driven, no scope at the moment is available
to prevent colourable imitations of the names though they are
prohibited from being used. I do not think that it can or
should be assumed by domain name providers, that they have no
responsibility to monitor whether court orders prohibiting use, not
merely of particular names, but of colourable imitations are being
broken by registration made with the names which fall foul of the
prohibition. That is not a matter I need go into now but it
does seem to me far from clear that they can abdicate
responsibility in respect of the names which they permit to
be registered on their sites. But that is a matter
which requires very careful consideration on another occasion.”
Commentary
The Defendant had in total 11 domain names registered in his
name which were contrived variations or expressions of the name
Marks & Spencer, including “www.marksandspencers.com” and
“www.marksandpencer.com”. It is these minuscule variations of
the legitimate site (“www.marksandspencer.com”) which led Lightman
J. to his somewhat exasperated statement towards the end of his
judgment.
Although Lightman J. resisted giving judgment on this particular
matter, he made it very clear that he considered domain name
providers to have a responsibility to monitor the registration of
domain names and consider whether any court orders are being
breached by the registrations.
The practicalities of such an obligation are problematic.
For example, Nominet, which is the registry for all domain names
ending in “.uk” has over 2 million registered domain names
and receives thousands of applications each month. These
applications are processed, as the judge acknowledged, by a
computer. Thus the exercise of checking each registration
against the terms of any Court orders is unrealistic.
Further, Nominet is a non-profit organisation (although a legal
defence fund has been established) and does not hold the power to
transfer domain names to other individuals without the registrant’s
permission or Court order.
Lightman J.’s comments are akin to suggesting that domain names
providers should make judgments as to whether the registration or
use of the domain name infringes the rights of third parties.
It is submitted that that is too far an extension of domain name
providers’ powers and would, no doubt, lead to an increased number
of Court proceedings as to whether a certain domain name might be
registered to particular undertakings.
Nevertheless, the problem is a real one, and one which is
difficult to control as there are any number of “colourful
imitations” that may be applied to names and marks protected by
IPRs. Further, there is no consultation procedure adopted for
domain name registrations, therefore, companies such as Marks &
Spencer are obliged to perform searches for registrations similar
to their name at regular intervals and follow up action against any
believed tortfeasor.
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