Yoyo.Email Ltd v Royal Bank of Scotland Group Plc and Others
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Dight |
| Judgment Date | 02 December 2015 |
| Neutral Citation | [2015] EWHC 3509 (Ch) |
| Docket Number | Case No: HC-2015-000379 |
| Court | Chancery Division |
| Date | 02 December 2015 |
[2015] EWHC 3509 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand, London, WC2A 2LL
His Honour Judge Dight
Case No: HC-2015-000379
Jonathan D.C. Turner (via Direct Professional Access) for the Claimant
Simon Malynicz (instructed by Pinsent Masons LLP) for the Defendants
Hearing dates: 25 and 26 November 2015
The cross-applications
By their application notice dated 29 May 2015 the defendants ask the court, first, to strike out the Claim and/or for reverse summary judgment on the Claim and, secondly, to strike out the claimant's Defence to Counterclaim and/or for summary judgement on the counterclaim. By its application notice dated 24 August 2015 the claimant asks the court, first, for permission to amend the Particulars of Claim, secondly, for answers to a request for information made pursuant to Part 18 of the CPR and, thirdly, for a direction that the proceedings be transferred to the Intellectual Property Enterprise Court ("IPEC"). It is agreed (for the purpose of the defendants' application only) that I should approach the arguments on the basis of the proposed Amended Particulars of Claim, including the additional amendments suggested on the second morning of the hearing.
The background
This Claim concerns the domain names, rbsbank.email, rbs.email, natwest.email, coutts.email ("the Domain Names") that the claimant registered for itself in March and April 2014 through an internet service provider and registrar by the name of GoDaddy of Scottsdale, Arizona, USA. The defendants are respectively the registered proprietors of the Trade Marks "RBS", "RBSBANK", "NATWEST" and "COUTTS". Having formed the view that its rights were being infringed the defendants filed a complaint with the World Intellectual Property Organisation ("WIPO") on 19 May 2014 pursuant to the Internet Corporation for Assigned Names and Numbers ("ICANN") Uniform Dispute Resolution Policy ("the UDRP"). Proceedings in respect of such complaints are dealt with in accordance with the UDRP Rules of Procedure ("the UDRP Rules"). The domain name dispute resolution panel ("the Panel") operating under the UDRP scheme concluded, in paragraph 6 of their decision dated 11 August 2014 ("the Decision"), (1) that the Domain Names were identical or confusingly similar to the defendant's registered trade marks, (2) that the claimant's proposed use of them could not be regarded as bona fide, nor was the intended use of them legitimate or fair and (3) that the claimant had registered the Domain Names and intended them to be used in bad faith. The Panel ordered that the Domain Names be transferred to the defendants. The Domain Names have been transferred (and are now registered to the first defendant's domain name management company in Sweden) but have been held in "lock" because of these proceedings.
The claimant contends that the Panel's decision was wrong on each ground of their conclusion and commenced these proceedings (after having made an abortive claim in the Luton County Court) for essentially negative declaratory relief to the effect that it has been guilty of no wrongdoing. The defendants deny that the claimant is entitled to the relief which it seeks and counterclaim for passing off and infringement of its Trade Marks. The claimant seeks to bring a counterclaim to counterclaim for revocation of two Community Trade Marks insofar as they extend to electronic mail services.
By its proposed Amended Particulars of Claim in this Claim, which had been issued on 8 February 2015, the claimant seeks the following relief:
"1. Declarations that:
(a) the Claimant is entitled to the domain names and entitled to recover and retain them;
(b) the Claimant is entitled to make the domain names available to users of its intended email services for addressing emails to the respective Defendants, whether the service is provided free of charge or for payment, if the Claimant makes it clear that it is not authorised or licensed by or connected or associated with the Defendants;
(c) the Claimant has rights or legitimate interests in the domain names;
(d) the Claimant did not register the domain names in bad faith;
(e) the Claimant has not used and is not using the domain names in bad faith;
(f) the Claimant has not committed and does not threaten or intend to commit any act of passing off by use or possession of the domain names;
(g) the Claimant has not infringed and does not threaten or intend to infringe the Claimant's registered trademarks;
(h) the administrative panel did not decide the dispute between the parties in accordance with the UDRP, the UDRP Rules and applicable rules and principles of law, as required by paragraph 15(a) of the UDRP Rules; and
(i) the purported decision of the administrative panel was not a decision within the meaning of the UDRP and the UDRP Rules and was a nullity;
and/or declarations in substantially similar terms and/or to the like effect."
The parties' general contentions
In respect of the Claim the defendants submit that the court has no jurisdiction to act as a review or appeal body from the Decision and that the claimant has no reasonably arguable cause of action: the Claim should therefore be struck out pursuant to CPR 3.4(2). The defendants rely on the decision of Mann J in Toth v Emirates [2012] FSR 26 (in relation to the similar "Nominet" scheme relating to UK registered domain names) in support of the propositions that the claimant has no cause of action for appeal from or review of the Panel's decision and that there is no practical utility in granting a declaration which would have that effect. In addition, and in any event, the defendants submit that the claimant has no defence to their passing off claim that stands a real prospect of success and there is no other compelling reason why the counterclaim should be tried. The claimant submits that it has a realistic prospect of succeeding in its claim for declaratory relief (based on, inter alia, the proper construction of the UDRP in accordance with the law of the State of Arizona and an argument that the Toth decision is wrong or ought to be distinguished) and that there are compelling reasons why the case should go to trial. As to the counterclaim the claimant says that it has a strong defence which requires a number of factual issues to be determined and that it is not therefore open to the court to dispose of the matter summarily. It is agreed that I need not determine the technical issues, involving Community Law, arising out of the parties' respective contentions relating to the Trade Marks claims, save insofar as they concern the Common Law cause of action of passing off. I propose to consider the defendants' application for summary judgment on its counterclaim before turning to that part of their application which seeks to strike out the Claim.
Passing off and summary judgment
I remind myself that the test for summary judgment as set out in CPR 24.2 is as follows:
"The court may give summary judgment against a claimant or defendant on the whole of a claim or on a particular issue if—
(a) it considers that—
(i) that claimant has no real prospect of succeeding on the claim or issue; or
(ii) that defendant has no real prospect of successfully defending the claim or issue; and
(b) there is no other compelling reason why the case or issue should be disposed of at a trial"
I have also reminded myself of the relevant notes in the White Book which explain the nature and application of the test. Mr Malynicz has drawn my attention specifically to Easyair Ltd v Opal Telecom [2009] EWHC 339 (Ch) at [15] and Mr Turner to Nigeria v Santolina [2007] EWHC (Ch) 437, both decisions of Lewison J, as he then was. It is necessary, with one exception, only to cite the principles set out by the learned judge in the later of those two cases:
"i) The court must consider whether the Claimant has a "realistic" as opposed to a "fanciful" prospect of success: Swain v Hillman [2001] 1 All ER 91 , [2000] PIQR P51;
ii) A "realistic" claim is one that carries some degree of conviction. This means a claim that is more than merely arguable: ED & F Man Liquid Products v Patel [2003] EWCA Civ 472 at 8.
iii) In reaching its conclusion the court must not conduct a "mini-trial": Swain v Hillman .
iv) This does not mean that the court must take at face value and without analysis everything that a Claimant says in his statements before the court. In some cases it may be clear that there is no real substance in factual assertions made, particularly if contradicted by contemporaneous documents: ED & F Man Liquid Products v Patel at 10.
v) However, in reaching its conclusion the court must take into account not only the evidence actually placed before it on the application for summary judgment, but also the evidence that can reasonably be expected to be available at trial: Royal Brompton Hospital NHS Trust v Hammond (No 5) [2001] EWCA Civ 550 , [2001] Lloyd's Rep PN 526, 76 ConLR 62;
vi) Although a case may turn out at trial not to be really complicated, it does not follow that it should be decided without the fuller investigation into the facts at trial than is possible or permissible on summary judgment. Thus the court should hesitate about making a final decision without a trial, even where there is no obvious conflict of fact at the time of the application, where reasonable grounds exist for believing that a fuller investigation into the facts of the case would add to...
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