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  • Writer's pictureRosie Burbidge

What constitutes "use" of a domain name?

A recent judgment by Mr Nicholas Caddick KC had a bit of everything: allegations of patent & copyright infringement & passing off, questions regarding ownership & transfer of rights, issues relating to insolvency & estates and joint tortfeasorship!

The dispute, Price & Ors v Flitcraft Ltd & Ors, was essentially between rival builders and concerned insulated timber framed panels. It was highly complex and at times bitter. Many of the interactions between the parties took place some time ago and the judge had to reconstruct them from the “fog of time” and despite some witness testimony that he could not rely on.

The result of the case was that one of the claimants succeeded in the patent infringement claim to a limited extent, but failed in all their other claims. The copyright and passing off aspects of the case raise some interesting issues.

Copyright and probate

One of the copyright claims concerned photographs made by the father of the first claimant, Anthony Price. On his death, Price’s estate (including title to his copyrights) was left to his wife Jean Price. However, there was no grant of probate to her.

While the judge was satisfied that the copyrights were subsequently assigned by Jean Price to Philip Price, he said that:

in order to prove that he [Philip Price] had acquired title from his mother under that assignment, he must prove that his mother had had title to assign to him and this requires there to have been a grant of probate to her … Without a grant, Mr Price cannot establish his mother’s title to the copyrights in the Photographs and, therefore, cannot establish his own title.”

Unless a grant is obtained, then the infringement claim must fail.

No threat of passing off

The passing off part of the case concerned the goodwill attached to the trading name “Maple Timber Frames”, used by the claimants since 1993, and the defendants’ registration of the domain names “”, “” and “”.

Mr Caddick KC found that goodwill was established, but there was no evidence of use of the domain names by the defendants, and therefore no misrepresentation or damage.

On the question of quia timet relief (to prevent threatened passing off), the judge said that no threat of infringement was established:

The fact is that the domains have not been used for 6 years … and it seems highly unlikely that they would be used now, particularly in view of the indications above that use in relation to their goods or services would constitute passing off. The domain names may be of no use to the Defendants, but they are the Defendants’ property and an order for transfer would not, therefore, be appropriate.”

A warning to businesses

This summary highlights just a couple of interesting points in what is a long and detailed judgment, which readers may wish to study in full. Standing back from the detail, it is once again a warning to businesses about the problems that can arise when decisions are not properly documented and records are not kept.

In this case, the parties have been involved in protracted and apparently at times unpleasant litigation, and the judge has had to piece together who did what and when over a period of some two decades in a judgment that runs to nearly 200 paragraphs.

We always recommend companies carefully consider matters such as assignments and licences of IP rights. We can advise on all the key issues to address in order to reduce the likelihood of costly and distracting litigation.

To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London -

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