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Registration of domain names can amount to passing off

In a recent case a manufacturer and seller of dance equipment was entitled to summary judgment in its passing off case because an individual had registered a number of domain names. Those registrations had created circumstances that were likely to cause a misrepresentation to those looking at the register that the two parties were connected. The domain names also constituted instruments of fraud.

This case brings into focus the importance of domain names when considering passing off.

Background to Vertical Leisure Ltd v Poleplus Ltd

Vertical Leisure Limited (“Leisure”) was a manufacturer and seller of dance equipment which included poles for pole dancing. The Defendant, Poleplus UK Limited (“Poleplus”), was one of Vertical’s competitors and B, an individual, was a former director of Vertical (and now an employee of Poleplus).

Alleged Infringement

Vertical was the registered proprietor of various UK, international and community makes which included the words “X-Pole”. In 2013, Vertical developed a new accessory that was used in pole dancing termed “Silkii”. Vertical went on to promote its Silkii product in Germany and the UK.

B registered various domain names which included the words “X-Pole” and “Silkii” and even registered the latter as a UK trade mark. B then offered to sell the domain names to Vertical and admitted in evidence that he intended to make a profit from the sale.

After commencing proceedings for trade mark infringement and passing off, Vertical subsequently applied for summary judgment against Poleplus and B.

Decision

The Court was unable to reach any conclusions on Vertical’s trademark infringement case without further argument as to the applicable law. In terms of the passing off action however, goodwill subsisted in the names “X-Pole” and “Silkii” at the time that B registered the domain names. There was no doubt in British Telecommunications PLC v One in a Million Ltd regarding passing off and the Court was bound by that decision. By registering the domain names, B had created circumstances in which it was likely that a misrepresentation would be made to anyone looking at the register that he and Vertical were associated.

 

Important points

As mentioned at the beginning of this article, this case brings into focus the importance of domain names when considering passing off. When considering an action for passing off, careful consideration of any domain names that are likely to cause confusion should always be undertaken. It also highlights that the importance of reviewing existing domain names when registering a new one.

This information is intended as a general discussion surrounding the topics covered and is for guidance purposes only. It does not constitute legal advice and should not be regarded as a substitute for taking legal advice. DWF is not responsible for any activity undertaken based on this information.