Global Projects Management Ltd v Citigroup Inc & Ors

The registration and maintenance of a domain name which is likely to make the public believe that its holder is connected with another business may constitute passing off, even where the holder supplies no competing goods or services and has not tried to sell the domain name. Timing, surrounding circumstances and the resulting risk of confusion may establish the necessary intention and deception without a trial. A domain name can be an instrument of deception where it causes misdirected communications and threatens commercial harm. An individual who participates in a company’s common design to commit the tort may be jointly liable. The court also treated the principles in British Telecommunications plc v One in a Million Ltd as applicable to both passing off and trade mark infringement.

GPM registered citigroup.co.uk shortly after the public announcement that Citibank and Travelers Group would merge under the name Citigroup. It retained the domain name, which diverted misdirected emails intended for Citigroup employees, including confidential material. Citigroup, Citicorp and Citibank brought counterclaims alleging passing off and trade mark infringement, seeking summary judgment and transfer of the domain name. GPM’s claim concerned allegedly unjustified threats under section 21 of the Trade Marks Act 1994. The central issues were whether the counterclaims were established summarily, whether the registration amounted to passing off, whether section 10(3) was infringed, and whether Mr Davies was personally liable.

1. Summary judgment was granted to Citigroup and its associated companies on the counterclaim. The court considered the counterclaim logically prior to GPM’s threats action, which the judge’s present view was should also be dismissed.

2. Following British Telecommunications plc v One in a Million Ltd [1999] 1 WLR 903, registration and maintenance of a domain name which leads, or may lead, the public to believe that its holder is linked with another business may itself constitute passing off. It is unnecessary that the defendant use the domain to supply goods or services, or attempt to sell it.

3. The factual differences from One in a Million were immaterial. The prompt registration immediately after the announcement of the Citigroup merger, the attempted registration of the corresponding .com domain, the absence of any genuine business use, and the continuing diversion of emails made the relevant intention and potential deception irresistible. A full trial was therefore unnecessary.

4. The court rejected arguments based on the existence of other businesses using similar names, delay, limitation or acquiescence. Passing off was continuing. The evidence established existing or potential commercial harm, including the risk arising from misdirected confidential emails.

5. Citicorp was also entitled to summary judgment under section 10(3) of the Trade Marks Act 1994. The court regarded the opposing arguments as irreconcilable with One in a Million and considered itself bound by that decision.

6. Mr Davies was personally liable because he participated with GPM in a common design resulting in tortious liability. This was not piercing the corporate veil. The principle applied notwithstanding that he was a de jure director. The court relied on MCA Records Inc v Charly Records Ltd [2001] EWCA Civ 1441; [2002] FSR 26, and referred also to C Evans & Sons Ltd v Spritebrand [1985] 1 WLR 317.