Marks & Spencer Plc v One in a Million Ltd
| Jurisdiction | England & Wales |
| Judgment Date | 28 November 1997 |
| Date | 28 November 1997 |
| Court | Chancery Division |
Chancery Division
Before Jonathan Sumption, QC
Trade marks - Internet domain names - injunction
A plaintiff could obtain a final injunction against a future threat of injury restraining someone else from using its name or trademark as a domain name on the Internet and a mandatory order for the assignment to it of the registration of the domain name to prevent threatened passing off or breach of trademark.
Mr Jonathan Sumption, QC, sitting as a deputy High Court judge so held in the Chancery Division granting relief sought by five plaintiffs in five actions for summary judgment, pursuant to Order 14 of the Rules of the Supreme Court, against One in a Million Ltd, Mr Richard Conway and Mr Julian Nicholson, its directors, Global Media communications, a firm, and Junic, a firm, who were all dealers in Internet domain names.
The plaintiffs were British Telecommunications plc and Telecom Securicor Cellular Radio Ltd, Virgin Enterprises Ltd, J Sainsbury plc, Ladbroke Group plc and Marks & Spencer plc.
Mr Malcolm Chapple for British Telecom and Cellnet; Mr James Mellor for Virgin, Sainsburys, Ladbrokes, and Marks & Spencer; Mr Philip Noble for One in a Million, its directors and dealers.
HIS LORDSHIP said that each of the plaintiffs in the five actions for summary judgment was a well known business enterprise possessing substantial goodwill and valuable registered trademarks most of which incorporated the name.
The defendants were dealers in Internet domain names. They registered names and sold them to potential users. They had made a speciality of registering Internet domain names comprising the names or trademarks of well known commercial or other enterprises without the consent of those enterprises. The names were not as yet active sites but were available for such use.
For a dealer in Internet domain names there were in principle only four uses to which the names could be put:
First and most obvious was that it might be sold to the enterprise whose name or trademark had been used, which might be prepared to pay a high price to avoid the inconvenience of there being a domain name comprising its own name or trade mark which was not under its control.
Second, it might be sold to a third party unconnected with the name, so that he might do or...
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