Reference:  FSR 9
Court: Court of Appeal
Judge: Chadwick & Robert Walker LJJ
Date of judgment: 20 Mar 2000
Summary: Trade Marks - Infringement - Passing off - Registration of Internet Domain Name - Admissibility of without prejudice correspondence
Instructing Solicitors: Marine & Co.
The defendant registered the name whsmith.com as a domain name. The claimant sought injunctive relief against use of the domain name and a mandatory order requiring the defendant to take all steps within its power to transfer the domain name to the claimant. The defendant claimed that, after having received what he regarded as threats made by one of the claimant’s employees, he transferred the domain name to an individual named William Harold Smith who was said by the defendant to be resident in the United States but who had an address in the Bahamas. The transfer was said to have been effected through a Bahamian company. The claimant doubted the existence of William Harold Smith. The claimant sought summary judgment. Its application was supported by an affidavit which referred to and exhibited a letter to the Chairman of the Claimant’s Board of Directors from the Defendant. The letter was marked “without prejudice”.
Should “without prejudice” correspondence be included in witness statements as open correspondence prior to a decision by the Judge as to whether the correspondence is truly written “without prejudice” or not.
Allowing the appeal: To fall outside the protection of the “without prejudice” rule, the communication had to disclose “unambiguous impropriety”. The protection was not to be set aside simply because the party making the communication appeared to be putting forward an implausible or inconsistent case or to be facing an uphill struggle if the litigation continued. In the light of the previous “without prejudice” correspondence it could not be said that the defendant’s offer was not a genuine offer to negotiate a settlement. In the absence of evidence of unambiguous impropriety the defendant had to be given the benefit of the doubt in negotiations which were directed towards a plausible compromise.
“Unambiguous impropriety” in the context of “without prejudice” correspondence is to be strictly applied even where the party making the communication is putting forward an implausible case.