Domain Name in UK Law

I therefore find and hold that Merck Sharp & Dohme Corp (which is the contractual counterparty) is in breach of the 1970 Agreement as indicated above. I will (as sought in paragraph 4 of the prayer for relief) declare that Merck US has breached its contractual obligations contained in the 1970 Agreement and the 1975 Protocol. The precise form of injunctive relief must be considered after this judgment is handed down.

For my part, I do not understand how he can assert that. The statement might perhaps have been true prior to June 2001 when Vickers Hi-fi was one of MF's authorised distributors. But it is plainly untrue now, and I do not follow how the contrary is arguable. In my judgment, any reader of that legend, having been led to the Vickers Hi-Fi web site via the domain name, would understand it as meaning nothing other than that Vickers Hi-Fi was and is one of MF's authorised distributors.

A name which will, by reason of its similarity to the name of another, inherently lead to passing-off is such an instrument. If it would not inherently lead to passing-off, it does not follow that it is not an instrument of fraud. If it be the intention of the defendant to appropriate the goodwill of another or enable others to do so, I can see no reason why the court should not infer that it will happen, even if there is a possibility that such an appropriation would not take place.

It is accepted that the name Marks & Spencer denotes Marks & Spencer Plc and nobody else. Thus anybody seeing or hearing the name realises that what is being referred to is the business of Marks & Spencer Plc. It follows that registration by the appellants of a domain name including the name Marks & Spencer makes a false representation that they are associated or connected with Marks & Spencer Plc.

Mr Wilson submitted that mere registration did not amount to passing-off. 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 or associated with the name registered and thus the owner of the goodwill in the name.

Mr Wilson also submitted that it was not right to conclude that there was any threat by the appellants to use or dispose of any domain name including the words Marks & Spencer. He submitted that the appellants, Mr Conway and Mr Nicholson, were two rather silly young men who hoped to make money from the likes of the respondents by selling domain names to them for as much as they could get.

Fourthly, the court must carry out an evaluation of all the relevant circumstances. These may include any clear expressions of an intention to solicit custom in the UK by, for example, in the case of a website promoting trade-marked products, including the UK in a list or map of the geographic areas to which the trader is willing to dispatch its products. But a finding that an advertisement is directed at consumers in the UK does not depend upon there being any such clear evidence.