Lloyd's Maritime and Commercial Law Quarterly
Passing off: the right solution to domain name disputes?
Catherine Colston *
The practice by businesses of registering company and brand names as their domain name addresses, in order to use the Internet for e-commerce, has been associated with the established law of registered and unregistered trade mark protection, also structured to facilitate commerce. This is a matter of concern for two reasons. First, legal solutions are being sought for legitimate but competing claims to the same domain name (reverse domain name hijacking). Secondly, allowing one trader control of a given name for all areas of commerce disturbs the carefully balanced limits of existing protection for unregistered marks. As these limits are designed to avoid the monopolistic dangers of overprotection, any adjustment to the balance needs careful consideration.
To apply passing off to both cybersquatting and reverse domain name hijacking disputes in the absence of either damage or competition confers a monopoly interest in a name. All embracing protection against dilution of a name on the Internet by extension of the tort of passing off, as recent case law suggests, would exceed the existing limits posed by a requirement of damage and misrepresentation, potentially allowing big brand owners to force smaller concerns to relinquish legitimately earned rights to reputation bearing names when entering e-commerce. Such distortion of the tort is unnecessary in the light of other potential solutions.
Introduction
In the United Kingdom two regimes provide intellectual property protection for the names and other indicia adopted by traders to identify their products, whether goods or services, and to represent their commercial reputation to consumers. These comprise the registration of trade marks and the tort of passing off; the latter extends protection to unregistered but recognized indications of reputation. The boundaries of both regimes have seen expansion in recent times.1
Changes in trading and advertising practices have been reflected in the substantive law. At the same time careful boundaries for such protection
* Lecturer in Law, University of Strathclyde.
1. The Trade Marks Act 1994, s. 10(3) added a remedy for trade mark dilution. The House of Lords recognized an extension of the boundaries of passing off in Warnink (Ervin) BV
v. Townend (J.) and Sons Ltd
[1979] A.C. 731.
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