Phone4U.co.uk Court of Appeal Decision

[Beasty]

This was being dealt with on another thread - but I think it merits one of its own now that the decision has been handed down. Here's the link to it:

http://www.bailii.org/ew/cases/EWCA/Civ/2006/244.html

 

[Jac]

This was being dealt with on another thread - but I think it merits one of its own now that the decision has been handed down. Here's the link to it:

http://www.bailii.org/ew/cases/EWCA/Civ/2006/244.html

I've only had the briefest of looks but it seems the appeal by Phones4U was allowed (on passing off) and they win?

Clause 81. In the result I would allow the appeal on passing off but dismiss it on trade mark infringement.

Regards
James Conaghan
[PAB Member]

 

[Beasty]

I've only had the briefest of looks but it seems the appeal by Phones4U was allowed (on passing off) and they win?

Clause 81. In the result I would allow the appeal on passing off but dismiss it on trade mark infringement.

That's right. It does not say so on the Judgment - but the remedy sought was almost certainly transfer of the domain(s) - which I imagine will have been granted.

 

[olebean]

I've only had the briefest of looks but it seems the appeal by Phones4U was allowed (on passing off) and they win?

Clause 81. In the result I would allow the appeal on passing off but dismiss it on trade mark infringement.

Regards
James Conaghan
[PAB Member]

Jac

They did lose on passing off

leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff 's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff

It confirms that co-existance can occur provided that they are different goods or services

He should have been a web designer!

 

[Jac]

That's right. It does not say so on the Judgment - but the remedy sought was almost certainly transfer of the domain(s) - which I imagine will have been granted.

I also see at the bottom of Clause 7 that it says:

"In April or May (2000) Mr Heykali offered to sell the domain name for a large sum of money: he untruthfully said he had been offered £100,000 for it by a third party."

That will undoubtedly have gone against him as (IMHO) it might have done in a DRS.

Regards
James Conaghan
[PAB Member]

 

[Jac]

It confirms that co-existance can occur provided that they are different goods or services

Yes, I did agree with that in a previous thread (after looking it up) that co-existence can occur in TMs as long at they are as you said different goods or services.

He should have been a web designer!

It is highly possible he may wish he had been when he sees his final legal bill.

Regards
James Conaghan
[PAB Member]

 

[olebean]

It will be interesting to find out what the final cost is and whether he has to pay phones4u legal bill

 

[Jac]

It will be interesting to find out what the final cost is and whether he has to pay phones4u legal bill

Losing his ecommerce business ain't fun either!

Regards
James Conaghan
[PAB Member]

 

[domaingenius]

This case is going to have PROFOUND knock on effects on a lot of domainers and I can see a number of cases that will now be taken on the strength of it.
Again this shows that the "old school" are not going to lie down and let the "new school" take the business away from them, they will also have the backing of many of the "old school" Judges who have many financial interests in conventional business. This case will now be referred to again and again.

Addition. I have read it a bit more now, and in fact some of the Judgment may well be helpful to domainers, in that it agreed that Trademark was NOT infringed simply by using the same words as the trademark. This is useful, and indeed was something has been mentioned on this forum before, that in the DRS some complainants are flouting the strict TM approach by saying that they have a TM that is the same as the domain name, even though in fact on close inspection the TM was ONLY granted because the words were made distinctive by colours or other variants of the letters. This case should be taken in to account in future DRS's otherwise what is point of DRS if it only afterwards is going to end up in Court anyway because they ignored case law ?.

DG

 

[scooter]

Why did they go to all the expense of going to court?

Why did they not use DRS first? (A lot cheaper) and in the unlikely scenario they had lost, they could then go to court.

???

 

[domaingenius]

It will be interesting to find out what the final cost is and whether he has to pay phones4u legal bill

I would say that the BEST the loser could hope for would be an order for each party to bear their own costs on the basis that only half the appeal succeeded, BUT even then you are talking of probably £25,000 plus costs for each party to bear just for the appeal and that excludes the lower Court hearing the whole costs of which will now fall to the loser to pay i would guess. Probably I would say that the loser will be paying,if he has the money, close to £50-75,000 sterling. Justice does not exist believe me, win or lose, I know.

DG

 

[bb99]

Why did they go to all the expense of going to court?

Why did they not use DRS first? (A lot cheaper) and in the unlikely scenario they had lost, they could then go to court.

???

I is no lawyer, but I'm guessing that they went down this route because they not only wanted the domain name back but they also wanted to screw the other party over in respect of legal fees and damages (for the alledged TM infringement).

Such an approach also sends out a message to other potential litigants in the future - "we've got deep pockets and we won't hesitate to do you properly - why would we DRS you when we can bankrupt you instead??".

Perhaps someone with the relevant legal brain could shed some light?

 

[Jac]

I would say that the BEST the loser could hope for would be an order for each party to bear their own costs on the basis that only half the appeal succeeded, BUT even then you are talking of probably £25,000 plus costs for each party to bear just for the appeal and that excludes the lower Court hearing the whole costs of which will now fall to the loser to pay i would guess. Probably I would say that the loser will be paying,if he has the money, close to £50-75,000 sterling. Justice does not exist believe me, win or lose, I know.

DG

DG

Isn't this a good reason why we should all try to work towards making the DRS a tad more palatable to all stakeholder groups including domainers? (Whilst the £3k appeals fee is certainly a barrier to some; and I personally acknowledge that; it's a lot cheaper than the figures you are quoting above.)

Regards
James Conaghan

 

[sneezycheese]

Isn't this a good reason why we should all try to work towards making the DRS a tad more palatable to all stakeholder groups including domainers? (Whilst the £3k appeals fee is certainly a barrier to some; and I personally acknowledge that;

…Blooming heck Jac we agree. :mrgreen:

As a ‘Natural Monopoly’ and the social responsibilities that it is ‘supposed’ to bring, it certainly doesn’t seem fair that those who can least afford the appeal fee end being charged the most… To summarise: a corporation ends up actually only paying £3,000 for an appeal as they can claim the VAT back, while a lowly individual ends up paying £3,525 and (of course) can’t claim the VAT back! So in this sense it’s a double whammy for the ‘little guy’.

In addition, those people who would be certainly exempt form paying court fees and more than likely receive some form of ‘legal aid’, once again get ‘stuffed’ by a system that takes no account of an individuals ability to pay… So it would seem that Nominet ‘currently’ (and lets hope things change) do not live up to their social (and possible legal) responsibility in the privileged position they currently hold.

 

[Jac]

…Blooming heck Jac we agree. :mrgreen:

Hey! Despite what my adversaries tell you, I am not the Anti-Christ!

As a ‘Natural Monopoly’ and the social responsibilities that it is ‘supposed’ to bring, it certainly doesn’t seem fair that those who can least afford the appeal fee end being charged the most… To summarise: a corporation ends up actually only paying £3,000 for an appeal as they can claim the VAT back, while a lowly individual ends up paying £3,525 and (of course) can’t claim the VAT back! So in this sense it’s a double whammy for the ‘little guy’.

I hope the DRS review will be available soon as a public consultation document; but I cannot preempt the consultation. As soon as it's available on Nominet's website I'll let you know. There are reasons why a thing is costed as it is, but in my opinion it doesn't mean there shouldn't be exceptions in exceptional circumstances; especially if the system is to be acknowledged as fair to everyone (not just the winner). It isn't easy to please someone who loses something and I'm sure Mr Heykali wasn't best pleased at yesterday's appeal ruling, but that's the way the crumble cookies at times.

In addition, those people who would be certainly exempt form paying court fees and more than likely receive some form of ‘legal aid’, once again get ‘stuffed’ by a system that takes no account of an individuals ability to pay… So it would seem that Nominet ‘currently’ (and lets hope things change) do not live up to their social (and possible legal) responsibility in the privileged position they currently hold.

Sneezy, you've got two separate points in there and the first (about ability to pay) is in my opinion quite fair, but I can't agree with the second (about social/legal responsibility). Nominet is trying to be fair, but it is difficult to find a system that works for every-one and isn't open to abuse by any-one. Please let's wait and see what the DRS review offers and let's try to find compromises that work for everyone.

Regards
James Conaghan
[PAB Member]

 

[Beasty]

Affiliate expert comment requested

Taking a look at the Phone4U.co.uk site before it is taken down, it strikes me that it is basically a "whitelabel" affiliate site for e2save.com. e2save is in turn part of Carphone Warehouse. Anyone agree/disagree with my analysis of the websites?

Now, if this is right, it may explain why (according to the Appeal judgment) there seems to have been only a limited amount of information about the trading status of Phone4U.co.uk. LJ Jacob puts this down to a limited level of turnover - and therefore a small number of customers. It assists him in reaching the conclusion that the fact that Phone4U.co.uk co-existed for a long time with its larger rival is not relevant. He focusses on the handful of sales made some years ago as an indication of the number of customers the business has - since it seems to have been the only evidence on the point provided to him.

Some of you guys will have a much better knowledge than me of affiliate schemes such as this. Could you comment on the likely payment that e2save might make (per sale) on such a deal? If we tie that to the turnover of the business - could we come up with an estimate for the number of phones sold and so the number of customers the business had?

 

[grandin]

Passing off

I personally feel that someone who is clearly passing off should be made accountable. However, the experts have a lack of understanding in respect to what is in a domain name in its original state (unused).

Trade Mark registration has a strict criteria....you must ask why has it got a strict criteria when domain name registration does not. You cannot use Trade Mark registration as a means to decide ownership of domain names unless you have a very clever trade mark........

for example

toysrus is a very clever trade mark because the name (without any device) is descriptive of its class of trade. So anyone who registers the domain name toysrus cannot claim to be used for any other class of goods apart from toys...why else would you register such a name?

Lets look at this drs case ciallis. Whilst the right decision was made (passing off would probably be proven in a court of law) the written DRS decision is incorrect. The expert claims that the name is non generic....this has no bearing and therefore can mislead domain name registrants.....can the old domain name holder register ciallis as a trade mark in a class of goods that has no overlap with the complainants class of goods? yes, the question I would like to know....is it immoral to copy a name because you like the name....surely all names are copied as some point....for example hoover.

If the expert is of the opinion that 'generic' is important then at what point does a word become generic? When two people use it?....

I do not understand why drs has complicated a very simple use of common sense....is it to protect trade mark holders from something that is unprotectable?

 

[domaingenius]

I personally feel that someone who is clearly passing off should be made accountable. However, the experts have a lack of understanding in respect to what is in a domain name in its original state (unused).

Trade Mark registration has a strict criteria....you must ask why has it got a strict criteria when domain name registration does not. You cannot use Trade Mark registration as a means to decide ownership of domain names unless you have a very clever trade mark........

for example

toysrus is a very clever trade mark because the name (without any device) is descriptive of its class of trade. So anyone who registers the domain name toysrus cannot claim to be used for any other class of goods apart from toys...why else would you register such a name?

Lets look at this drs case ciallis. Whilst the right decision was made (passing off would probably be proven in a court of law) the written DRS decision is incorrect. The expert claims that the name is non generic....this has no bearing and therefore can mislead domain name registrants.....can the old domain name holder register ciallis as a trade mark in a class of goods that has no overlap with the complainants class of goods? yes, the question I would like to know....is it immoral to copy a name because you like the name....surely all names are copied as some point....for example hoover.

If the expert is of the opinion that 'generic' is important then at what point does a word become generic? When two people use it?....

I do not understand why drs has complicated a very simple use of common sense....is it to protect trade mark holders from something that is unprotectable?

I agree wholeheartedly ,particularly with the last paragraph. I do NOT think that the phone4u.co.uk is a good one to use as any kind of campaign against drs simply because to use a domain that only misses the "s" from the TM and was used for exact same business is hard to get away from. Now Game is a different matter because there you do not have the "4u" bit which kind of makes it distinctive. As ive aid, I think that drs does not really know what it is meant to be doing, nor does Nominet seem to know whether it wants to be "Nominet Courts of Justice" or a non profit making UK Registry. Nominet, get out of DRS ,hand it to Patent Office and let them deal with it on strict TM laws taking into account the REASON that the TM used to complain was granted in the 1st place, i.e. because a common word can be made distinctive because it is in multi colours or changed in some way., PLEASE,

DG