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Despite the differences between the nature and scope of trade marks and domain names, they are both used to convey information to consumers so there is a likelihood of conflict between the two – particularly where domain marks are used in a commercial context.1 Domain names are similar to trade names as they both help lower search costs for consumers whilst also incentivising companies to increase brand reputation2. With the scope of the internet expanding by the day, the need for legal clarification in relation to domain names is pressing. Whilst it is common for domain names to fall under the protection of trade marks, it is questionable whether they even belong within the intellectual property regime. Trade marks are worth millions to big corporations and epitomize the identity of their products. With companies like Apple having an estimated brand value of $140 billion, no business can ignore the importance of trade marks as they can be their most valuable commercial assets. The Trade Mark Directive 2016 emphasises the importance for a ‘single market’ for intellectual property in order to meet the increasing need of a ‘faster, higher quality, more streamlined’ registration system for trade marks.3 This modernisation was based upon the recognition that it is essential that the trade mark system within the European Union is updated and adapted so it is in line with the important internet era. Domain names are used to identify particular web pages, the most common legal argument with domain names arises when a domain similar to that held by a trade mark holder is registered in by a third party. As domain names are a developing area of law it is important that they can be legally classified before legal issues relating to them can be solved – the

1 Spyros M Maniatis, ‘Trade mark law and domain names: back to basics?’ (2002) EIPR 24(8), 397-408 2 W Landes and R Posner, ‘Trademark law: an economic perspective’ (1987) 30 Journal of Law and Economics 265 at 268-70 3 Directive 2015/2436/EU of the European Parliament and of the Council to approximate the laws of the Member States relating to trade marks (Recast)

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main question being if they should come under protection of trade marks or if they should be protected by their own body of law. Along with the statutory criteria that a trade mark must meet in order to be registered, the legal standard developed in Sieckmann4 must be taken into account. This gives the specific legal standard that must be followed to ensure each trade mark registered is different from the next. Once registered, a trade mark is a form of personal property and the key issue for the courts is how wide the scope of protected signs should be. The primary function of a trade mark is as an indicator of origin so provides a guarantee of quality for the consumer.5 Landes and Posner highlight that the legal protection granted to trade marks is beneficial to the consumer as it lowers search costs and provides an incentive for companies to ensure the goods attached to the mark are of a high quality and that this high quality is maintained over time. Without this protection, it is likely that others will ‘free-ride’ on the original mark and it would subsequently lose its value as an indicator of origin and a guarantee of quality for the public – this ‘free-riding’ is known as passing off.6 Conversely, there is a concern that protecting a broad category of signs will discourage competition by allowing a single company to monopolize a sign which other traders may wish to use and build upon, as seen in Dyson7 where it was found that the brand’s transparent collecting bin was not a sign at all but rather a concept that other traders might wish to use. Article 3 of the Trade Marks Act 1994 gives the grounds for refusal of registration of a trade mark 8; the sign may not be registered if it cannot constitute a trade mark so is inherently incapable of

4 Ralf Sieckmann v Deutsches Patent- und Markenamt [2003] Ch 487 5 Arsenal Football Club plc v Reed (case c-206/01) [2003] 3 WLR 450 (Court of Justice) 6 W Landes and R Posner, ‘Trademark law: an economic perspective’ (1987) 30 Journal of Law and Economics 265 at 268-70 7 Dyson v Registrar of Trademarks (Case C-321/03) 8 Trade Marks Act 1994 s3(1)(a)-(d); Trade Marks Directive 2014 Article 4(1)(a)-(d)

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acting as a badge of origin9, signs which are devoid of distinctive character so may only be registered with evidence of their acquired distinctiveness through use and descriptive signs10. Registration of a trade mark gives the owner of the mark the right to prevent third parties from infringing upon the mark11 and whilst there are many different complications with trade mark infringement, the growth of online commerce has raised huge problems for infringement in relation to the internet. The most urgent of these problems being the use of trade marks as keywords on internet search engines, also known as ‘AdWords’. The question in the leading case in this field, Interflora v Marks & Spencer12, was whether an advertiser’s unauthorised use of a trade mark as a search engine keyword constituted trade mark infringement.13 This case reiterated the need for a balance between the protection afforded to trade marks with a reputation for their company and fair competition within the sector in which the marks are registered. Although there are similarities between trade marks and passing off, the latter is used where businesses have not registered trade marks or they are ineffective in some way, so passing off is used to give them protection of their goodwill. It is a ‘right’ that is used to protect things which may not have otherwise been regarded as intellectual property, mainly for things that fall into unregistered trade marks, and is often called upon by smaller businesses who do not have the resources to register and maintain trade marks. The main aim of bringing an action in passing off is to prevent one person from benefiting from the 9 Philips Electronics NV v Remington Consumer Products Limited [1998] EWCA Civ 1340 10 Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC) v Boots- und Segelzubelohor Walter Huber and Franz Attenberger (c 108/97) [2000] Ch 523 11 Trade Marks Directive 2014 Article 5 12 Interflora Inc v Marks & Spencer Plc [2013] EWHC 1291 (Ch) 13 Cornthwaite, ‘Say it with flowers: the judgment of the Court of Justice of the European Union in Interflora v Marks & Spencer EIPR 2012 34(2) 127-132

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goodwill attached to the business, product or service of another person. The most widely recognised definition off passing off was given by Lord Oliver in the Jif Lemon case, ‘no man may pass off his own goods as those of another’.14 This is the leading case as it provided the ‘classic trinity’ needed for a passing off action; goodwill, misrepresentation and damage or the likelihood of damage. The Advocaat15 case also provided five criteria needed for a passing off action – there must have been a misrepresentation in some way, must be carried out by a trader in the course of trade, must have been carried out in relation to prospective customers or ultimate consumers of the goods, must injure the business or goodwill of another trader and must cause damage to the business or goodwill of the trader bring the action – however the Jif Lemon16 test is used more widely as it is the more modern definition. Traditionally, goodwill is the property protected by a passing off action, ‘it is the benefit and advantage of the good name, reputation and connection of a business’.17 The distinguishing criteria for the goodwill – be it the mark, get-up, or trade name under which the product is sold – will be different for each case. Passing off protects the claimant against the defendant’s deceptive use of this criteria linked to the goodwill. It is not necessary that the consumer knows the ultimate owner of the goodwill, as long as there is a belief that all goods sold under the distinctive criteria derive from a single source – the claimant. A common problem seen in relation to distinctive criteria, as seen in Jif Lemon18, is that if any of the insignia is descriptive of the goods then it would be difficult to prevent other suppliers from using such insignia to describe its own goods. 14 Reckitt & Colman Products v Borden Inc [1990] 1 All ER 873 15 Erven Warnick BV v Townend & Sons (Hull) Ltd [1979] AC 731 16 Reckitt & Colman Products v Borden Inc [1990] 1 All ER 873 17 The Commissioners of Inland Revenue v Muller & Co’s Margarine [1901] AC 217 18 Reckitt & Colman Products v Borden Inc [1990] 1 All ER 873

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The second element of a passing off action is where the defendant misrepresents to the consumer that their product originates from the claimant and as a result of this, the consumer may purchase the defendant’s product instead of the claimant – meaning that the claimant has suffered damage as a result. However, although there is a difference between misrepresentation and ‘mere’ confusion – the latter may affect a consumer’s actions in relation to the product but there has been no intention to deceive the consumer so does not result in actual damage to the claimant’s goodwill19 – the claimant must show that the misrepresentation leads to or is likely to lead to confusion in the mind of the consumer. The deception also does not have to be deliberate, as seen in Specsavers v Asda20, a defendant can simply ‘live dangerously’ and allude to the claimant’s protected insignia without being found to be passing off. The final element of passing off is the need for there to be damage caused by the defendant’s misrepresentation. Whilst there is no need for actual damage, the claimant must successfully show that there is a likelihood of damage caused by the actions of the defendant. Lord Oliver in Jif Lemon stated that the claimant must be able to show that the damage is resulting from the belief of consumers that the defendant’s goods are the same as those offered by the claimant.21 The types of damage recognised in a passing off action are loss of sales, damage to reputation and restriction of the chance to expand in a new market. It is critical that the claimant can show they have, or are likely to suffer from, one of the aforementioned types of damage. Domain name disputes, despite having difficulties with legal classification, have increasing importance in relation to the doctrine of passing off. Wood argues that domain 19 Phones 4u Ltd v Phone4u.co.uk Internet Ltd [2007] RPC 5 20 Specsavers v Asda Sotres [2012] EWCA Civ 24 21 Reckitt & Colman Products v Borden Inc [1990] 1 All ER 873

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names are problematic because many legislators had not yet fully grasped the legal issues surrounding domain names before the case law occurred, so had to start fresh with these cases.22 Although domain names are easily defined, it is not as easy to legally classify them. Ramahi argues that contract law should apply to domain name disputes as the ownership of a domain name is no more than a contractual relationship between the user and the registration authority.23 However, this ignores the intellectual property value that a domain name has developed in relation to a company and contract law cannot deal with this correctly. Domain names can be legally considered property as they are capable of precise definition, there can be exclusive possession or control over them and a legitimate claim to the exclusivity of them can be established.24 Passing off plays a significant role in domain name disputes, with the claimants in the leading case One in a Million25 relying on passing off rather than trade mark legislation. Passing off is flexible by nature so makes it an easy option for claimants whose case is not covered by statute26, making it a good choice for those involved in domain name disputes. When a trade mark is registered, the owner gets an exclusive monopolistic right over their mark in that class, whereas a domain name owner does not always have the right to use their domain free of legal claims over it.27 Many trade mark holders believe that they have an unreserved right to the domain name corresponding to their mark, even if they have not 22 L Wood, ‘A name of thrones: why domain names should now be a separate intellectual property right’ [2014] EIPR 36(7), 452 23 Mohammad S Al Ramahi, ‘Internet domain names & Trademark Law: Does the current legal scheme provide an adequate protection to domain names under the US & the UK jurisdictions?’ 2006 University of Manchester 24 L Wood, ‘A name of thrones: why domain names should now be a separate intellectual property right’ [2014] EIPR 36(7), 452 25 British Telecommunications plc v One in a Million Ltd [1996] 4 EII ER 476 26 Lionel Bently and Brad Sherman, Intellectual Property Law (3rd edn, Oxford University Press 2009) 27 L Wood, ‘A name of thrones: why domain names should now be a separate intellectual property right’ [2014] EIPR 36(7), 452

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purchased it first.28 One in a Million29 concerned a defendant registering the domain names of well-known retailers with no intention of using them, but to sell them for a much higher price – a practice known as cybersquatting. Cybersquatting is often described as trade mark infringement, however this stretches trade mark protection beyond its traditional limits.30 It was found that the defendants had created an instrument of fraud available for purchase, they had made available the means of making an actionable misrepresentation to others so were found liable of passing off in relation to the goodwill of the company involved. The judgment shows that, even without having purchased them, the claimants have ownership in the names so are entitled to stop any other party from using them to their benefit.31 However, the decision in this case has been criticised as an unacceptable extension of passing off since the questions of where the exact misrepresentation lies in the situation and what the resulting damage would be arises. Similar cases regarding domain names have had different outcomes. Goodwill can subsist in a domain name similar to that of a retailer as long as it is sufficiently distinctive, as the standard of distinctiveness is lower than what is required for registration of the domain name as a trade mark.32 Where the domain name exists for a website to complain about the company, as in opticalexpressruinedmylife.co.uk33 and ihateryanair34, it has been held that the defendant is entitled to express their negative opinion of the claimant and speak for a number of the complainant’s aggrieved customers35 – provided the defendant makes no 28 ibid 29 British Telecommunications plc v One in a Million Ltd [1996] 4 EII ER 476 30 L Wood, ‘A name of thrones: why domain names should now be a separate intellectual property right’ [2014] EIPR 36(7), 452 31 A Sim, ‘Rethinking One in a Million’ [2004] EIPR 442-446 32 Phones 4u Ltd v Phone4u.co.uk Internet Ltd [2007] RPC 5 33 DCM (Optical Holdings) Ltd v Sasha Roddy [2014] Nominet Case No: D00013417 34 Ryanair Limited v Robert Tyler (ihateryanair.co.uk) [2010] Nominet Case No: D0008527 35 K Vora and M Collins, ‘Seeing things clearly – brand owners are advised to take a broader view of domain names.’ [2013] EIRP 35(1), 53

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income through the domain name as this would take unfair advantage of the complainant’s trade mark right and goodwill. Domain name disputes tend to be associated with cybersquatting but Mueller found that there are four other main types of dispute; infringement, name speculation, character string conflicts and parody or expression.36 Infringement is where a third party registrant intentionally trades off on the resemblance between their domain name and another company’s trade mark, name speculation – also known as cybersquatting – is where a third party registers a domain name very similar to the trade mark of another and attempts to sell it to the mark owner 37, character string is where more than one user has a legitimate claim to register a domain and there is no intention to infringe or cause customer confusion38 and parody or expression is where the domain name will deliberately use or resemble a recognised mark, often to make a satirical point39. There are several similarities between trade marks and domain names; both protect a brand and are used to communicate with their customers and invest time, effort and resources into enhancing their ability to attract custom.40 A trade mark is defined as ‘any sign… capable of distinguishing goods or services’ that must be ‘capable of being represented graphically’41 and because of this there has been dispute over whether a domain name that consists purely of words in the same font, colour and format satisfy this

36 Milton Mueller, ‘Trademarks and Domain Names: Property Rights and Institutional Evolution in Cyberspace’ accessed November 10th 2017 37 British Telecommunications plc v One in a Million Ltd [1996] 4 EII ER 476 38 Hotel Cipriani SRL v Cipriani (Grosvenor Street) Limited [2010] EWCA Civ 110 39 Clark v Associated Newspapers Limited [1998] 1 AII ER 959 40 Anan Younes, ‘Trademarks & Domain Names: Exploring the Inadequacy of Existing Protection for the Economic Value of Trademarks’ [2012] EIPR 847 41 Trade Marks Act 1994 s1(1)

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definition.42 However, as seen in One in a Million43 it is possible that the courts can accept a domain name as a sign for this purpose. The most important distinction between trade marks and domain names is that domain names are globally valid whereas trade marks are purely national. As there are no jurisdiction barriers on the internet it makes it easier to both register and maintain a domain name whereas trade marks are subject to the laws within their country of protection.44 The flexibility of passing off has allowed great extension of the law in recent years which in turn has decreased the usefulness of the doctrine. It is clear that passing off cannot be a simple, applicable claim in a domain name dispute as, just like trade mark law, it has been drawn out beyond its limits to a point where the courts allow successful claims where the basic requirements, such as the ‘classic trinity’45, have not been fulfilled. Passing off has not yet been fully analysed in terms of its application to domain names so Wood believes that it should, similar to trade mark law, be left to protect only owners of genuine marks.46 There are several different dispute resolution policies in place that have been specifically developed to settle domain name disputes so suit the exclusive needs of the domain name system better than trade mark law and the doctrine of passing off do – such as the Uniform Domain Name Dispute Resolution Policy and national dispute resolution procedures. 47 In order to be regarded as an intellectual property right, the domain name system should be capable of fulfilling the ‘underlying intellectual property theory’ – the 42 Warren Chick, ‘Lord of your Domain: But Master of None: The Need to Harmonize and Recalibrate the Domain Name Regime of Ownership and Control’ (2008) 16(1) IJL & IT 8 43 British Telecommunications plc v One in a Million Ltd [1996] 4 EII ER 476 44 L Wood, ‘A name of thrones: why domain names should now be a separate intellectual property right’ [2014] EIPR 36(7), 452 45 Reckitt & Colman Products v Borden Inc [1990] 1 All ER 873 46 L Wood, ‘A name of thrones: why domain names should now be a separate intellectual property right’ [2014] EIPR 36(7), 452 47 ibid

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understanding that intellectual property rights have three main functions; to incentivise knowledg...