Case No. EWHC-1798-(IPEC)

[1999] FSR1 held that the registration of a domain name of a well-known company was an actionable passing off”. [27]195.Jacob LJ then quotes from the Judgment of Aldous LJ:“The placing on a register of a distinctive name such as marksandspencer makes a representation to persons who consult the register that the registrant is connected to or associated with the name registered and thus the owner of the goodwill in the name. Such persons would not know of One In a Million Limited and would believe that they were connected or associated with the owner of the goodwill in the domain name they had registered. Further, registration of the domain name including the words Marks & Spencer is an erosion of the exclusive goodwill in the name which damages or is likely to damage Marks & Spencer Plc” (at page 23).196.A domain name (or names) in a distinctive name (‘the Rubettes’) was registered by someone having sufficient connection with the Defendants to take it down when requested to do so by them. The Defendants did not deny having knowledge of the domain name and Mr Clarke’s evidence suggested that it had been registered for him. The Defendants admit having used the name on other social media platforms.197.Mr Colbey’s arguments that fans would know that Mr Clarke and Mr Richardson were original band members may have been intended, at least in part, to suggest that those who looked at the domain or the Twitter feed or the Instagram account using the name ‘the Rubettes’ would know of Mr Clarke and Mr Richardson and of their connection with the band. While not put in these terms, the suggestion might be the situation is different from that in British Telecommunications Plc v One in a Million Ltd (where that company was unknown to the relevant public) and that the legal conclusion need not be the same as in that case.198.If that is the underlying thrust of Mr Colbey’s submissions, I do not accept that it is appropriate to distinguish that case. If anything, knowledge about the previous connection between Mr Clarke, Mr Richardson and the Rubettes would be more likely to lead interested parties to assume that there was some connection between their activities and the owner of the goodwill in the name. While, for the reasons set out above, Mr Clarke and Mr Richardson did not themselves accrue goodwill in ‘the Rubettes’ when performing with the bands promoted by AWEL and through which AWEL traded, those who were aware of the bands would be likely to conclude that activities using the name ‘the Rubettes’ involving some of the same personnel continued to be connected with the owner of the goodwill in that name.199.I conclude that the use by the Defendants of the word ‘Rubettes’ to signify the services that they supply is a misrepresentation. The Claimants have goodwill associated with that name and the use of it by others in trade as a badge of origin is a misrepresentation, likely to cause confusion as to their connection with AWEL’s business and, in the circumstances of this case, likely to cause damage to AWEL.200.The damage in question relates not only to the intrusion on AWEL’s goodwill, which is inherent in the registration of domain names, but also actual loss and damage caused by the unwillingness of promotors to book the Claimants’ band because of the Defendants’ activities.201.A potential issue arises in circumstances in which the Defendants have attempted to distinguish themselves from the Claimants’ band by using some form of words such as ‘the Rubettes featuring …’ and therefore to avoid confusion and misrepresentation.202.Mr Smith’s initial skeleton focussed exclusively on the use of ‘the Rubettes’ and the use of the Rubettes’ logo in the following form with a variety of background colours:203.As mentioned above, Mr Smith submitted during the hearing that attempts in the evidence to resile from the admission in the pleadings that ‘the Rubettes’ had been used by them could not succeed because there had been no application to withdraw the admission. He did not submit that any such change of case would have been futile (because ‘the Rubettes featuring …’ formulation would also infringe) but only that, on the evidence, it would have been untenable.Conclusion on Passing off – misrepresentation and damage (Issues 4 and 5)204.I have concluded that the Defendants have engaged in passing off by their admitted conduct and use of ‘the Rubettes’. 205.It is not necessary for me to resolve the issue of the potential alternative usage as a matter of liability and I am not persuaded that the pleading covers that alternative usage. Given the limited attention paid to this by counsel until closing submissions and the lack of submissions by either counsel as to the extent to which use by the Defendants of some distinguishing language would enable (or would have enabled) them to avoid any misrepresentation and/or damage, it would be difficult for me to deal with the issue at this point. I will hear submissions from counsel on this issue when the form of the final order is being settled.