Financial services provider and credit card specialist MBNA had been trading in the UK since 1993 and had a registered a stylised representation of the letters mbna as a Community Trade Mark.
Topic: Domain names
Who: MBNA America Bank NA and Mr Freeman
Background:
Financial services provider and credit card specialist MBNA had been trading in the UK since 1993 and had a registered a stylised representation of the letters "mbna" as a Community Trade Mark. They were therefore not best pleased to discover that Mr Freeman had registered the domain name "mbna.co.uk". Although his site was not active, apparently the plan was to use it as a portal for use in connection with banner advertising, hence Marketing Banners for Net Advertising or mbna.co.uk for short. The ICANN/WIPO procedure for dealing with alleged bad faith domain name registrations described elsewhere in marketinglaw.co.uk is only available for disputes over .com, .org and .net urls, so MBNA issued proceedings for trade mark infringement and passing off in the UK court and asked for a temporary injunction preventing Freeman from using the url until trial. MBNA argued Freeman had deliberately chosen the url to drive traffic to his site, there being no MBNA at that time, and was hi-jacking the goodwill in the business done by MBNA under that name and misleading surfers into believing Freeman’s site was connected with MBNA. The court refused to grant MBNA a temporary injunction, although it did ban Freeman from selling the url to third parties until the trial. Its reasons were primarily the fact that Freeman’s site wasn’t active, that its business was not similar to MBNA’s and MBNA did not currently have a website whose activity could be damaged or reduced by Freeman’s url. In the circumstances, Deputy Judge Strauss QC ordered an expedited trial and left things as they were.
Why this matters:
Previous cases in this area indicated that even if an alleged cybersquatter was not actively using a url, it could still be injuncted from using it as an "instrument of fraud". On the other hand, in all the relevant cases the alleged cybersquatter asked the legitimate brand owner for substantial sums as a price for the url, whereas it does not appear that Mr Freeman ever made this move in this particular case. The case shows the continuing domain name/trade mark uncertainty, driven by the lack of any harmonised url dispute resolution mechanism outside bad faith TLD’s (.com, .org and .net). Many brand owners are continuing to hide their heads in the sand so far as domain names are concerned. All should have in place a comprehensive url strategy.
