Metalrax Group Plc & Anor v Vanci (t/a Disability UK)

In a domain-name passing-off case, the intention to pass off need not exist when the name is first registered. A registration acquired in good faith may later become actionable if the registrant learns that another party owns the goodwill and then uses or retains the name in bad faith. Where the name creates confusion and an inherent risk or likelihood of passing off, the court may treat it as an instrument of fraud and grant an injunction. The assessment is fact-sensitive and includes similarity, the defendant’s intention, the type of trade and the surrounding circumstances.

Metalrax Group Plc and Metalrax Ltd sought an injunction against Dr E C Vanci, trading as Disability UK, restraining acquisition or re-registration of the domain name www.metalrax.co.uk. Nominet had suspended the delegation following an expert finding that its use was likely to confuse internet users. Lawrence Collins J granted judgment in default, finding that Dr Vanci had no arguable defence. The application concerned whether the original good-faith registration, alleged legitimate use and absence of initial bad faith defeated the passing-off claim, and whether the principles concerning domain names as instruments of fraud applied.

Permission to appeal was refused. Lord Justice May held that the first-instance judge had reached the correct conclusion and that Dr Vanci had no real prospect of successfully appealing.

1. The principles in British Telecommunications Plc v One in a Million [1999] 1 WLR 953 were binding. Their application did not require an intention to pass off, or to use the name for passing off, to exist from the outset. The court accepted that the original registration had been in good faith, but held that later conduct was relevant once Dr Vanci knew that the claimants owned the goodwill and began acting in bad faith.
2. Where there was confusion and an inherent risk or likelihood of passing off, the court had jurisdiction in its discretion to grant an injunction. Whether a domain name was an instrument of fraud depended on all the circumstances, including similarity of the names, the defendant’s intention, the type of trade and the surrounding circumstances. The conduct need not amount to the high level of fraud found in the earlier authority.
3. The expert’s finding that the domain name was likely to cause confusion could not be displaced by Dr Vanci’s mere assertion to the contrary. His later licensing of the name to a pornographic fetish site and attempts to obtain payment from the claimants, despite having no genuine commercial interest in the name, supplied the necessary circumstances.
4. Nominet’s precise decision after the court proceedings was immaterial. The legal ingredients for injunctive relief were present, and the application for permission was therefore refused.

Order: application refused.

• Court of Appeal (Civil Division): Lord Justice May refused permission to appeal, holding that the first-instance decision was correct and that there was no real prospect of success: [2002] EWCA Civ 609.
• Chancery Division: Lawrence Collins J granted judgment in default and granted an injunction restraining acquisition or re-registration of the domain name.