Full case report

Global Projects Management Ltd & Anor v Citigroup Inc & Ors

Reference [2005] EWHC 2663 (Ch)
Court Chancery Division

Judge Park J

Date of Judgment 17 Oct 2005


Summary

Domain Names – Infringement – Passing off – Trade marks – Maintenance of Domain an Instrument of Fraud – Cybersquatting – ss.10(3) and 21 Trade Marks Act 1994 – Summary Judgment


Facts

The merger of 2 companies had led to the formation of the first defendant, Citigroup. Citigroup sought summary judgment of its counterclaim alleging passing off and trade mark infringement. On the same day that the formation of Citigroup was announced (6 April 1998), the second claimant, a director of the first claimant, applied to register the domain name ‘citigroup.co.uk’. The following day, Citigroup’s application to register ‘citigroup.com’ was refused. The first claimant had no connection with Citigroup and had not tried to sell ‘citigroup.co.uk’ to the Defendant. When ‘www.citigroup.co.uk’ was typed in an error message was displayed. Any emails sent to the .co.uk address were received onto Global’s system, which Global’s director had caused to send a return message informing him or her that the email had been wrongly addressed. In 2003, Citigroup became aware of the existence of ‘citigroup.co.uk’ and threatened legal action against Global.


Issue

Whether the mere registration and maintenance in force of a domain name that led people to believe that the holder of the domain name was linked with a person or entity was enough to make the domain a potential ‘instrument of fraud’ amounting to passing off.


Held

Following Marks & Spencer v One in a Million [1999] 1 WLR 903, the domain name Citibank.co.uk in the hands of Global was an ‘instrument of fraud’ and constituted passing off. Although Global had no ‘cyber squatting’ background, the evidence showed irrefutably that Global’s aim was to carry a threat of deception that would be harmful to Citibank in the form of the domain name. Global was in a position to read confidential and sensitive emails intended for Citibank. A trial would be pointless and Citibank was entitled to summary judgment under section 10(3) of the 1994 Act. Its director had participated personally with Global in a common design that resulted in tortuous liability – MCA Records Inc v Charly Records Limited [2001] EWCA Civ 1441 followed.


Comment

One in a Million is strengthened by this decision to include those who have no clear cyber squatting background if the aim is nevertheless to carry a threat of deception in the form of a domain name.


Instructing Solicitors

Memery Crystal for the Claimant; Denton Wilde Sapte for the Defendants