Yoyo.email Ltd v Royal Bank of Scotland Group Plc & Ors

Registration of a distinctive domain name may itself constitute passing off where registration represents to persons consulting the register that the registrant is connected with the owner of the associated goodwill. The court is bound by the principle in British Telecom v One in a Million & Others [1999] FSR 1. A proposed business model or disclaimer does not answer the misrepresentation arising on registration. Summary judgment is appropriate where the defence has no realistic prospect of success and there is no compelling reason for trial. A UDRP provision permitting court proceedings does not create a separate cause of action or confer appellate or review jurisdiction over a panel decision. Declaratory relief may be refused where it would have no practical utility.

The claimant registered four domain names corresponding to the defendants’ trade marks. A WIPO panel held that the registrations were confusingly similar to those marks, lacked a bona fide or legitimate purpose, and had been made in bad faith. The domain names were ordered to be transferred.

The claimant brought proceedings seeking declarations challenging the panel decision and denying passing off and trade mark infringement. The defendants counterclaimed for passing off and applied for summary judgment, strike-out and reverse summary judgment. The claimant sought permission to amend, information and transfer to the Intellectual Property Enterprise Court. The central issues were whether registration alone could constitute passing off, whether the proposed use created a triable defence, and whether the UDRP permitted the court to review the panel’s decision.

1. Passing off. The defendants’ goodwill and reputation were admitted, and the claimant accepted that damage would follow if the proposed system misled a substantial number of the public. The decisive issue was misrepresentation.
2. The court held that British Telecom v One in a Million & Others [1999] FSR 1 established a binding principle of general application. Registration of a distinctive domain name on a publicly accessible register represents that the registrant is connected or associated with the owner of the goodwill in that name. Registration therefore amounted to passing off.
3. The court rejected the argument that changes in internet use or greater public sophistication had displaced that principle. It was unnecessary to investigate present use of the internet or the Who-is service. The proposed use, disclaimers and privacy arrangements could not neutralise the misrepresentation created by registration. The proposals were in any event unformulated and speculative.
4. Declaratory relief. Adopting the reasoning in Patel v Allos Therapeutics [2008] ETMR 75, the court held that UDRP clause 4(k) created no separate cause of action and gave the court no jurisdiction to act as an appellate or review body. The reasoning of Toth v Emirates [2012] FSR 26 was compelling and applied by analogy. There was no practical utility in declarations which could not alter the panel’s decision.
5. Applying CPR 24.2, the claimant had no realistic prospect of defending the passing-off counterclaim, and there was no compelling reason for a trial. Summary judgment was granted on that part of the counterclaim. The claim was struck out as a plain and obvious case; alternatively, reverse summary judgment would have been granted.

First-instance decision. The judgment does not state any subsequent appellate history.