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DRS CASE LAW NON UK DISPUTES ORIGINAL DRS |
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The Pitman Case
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Royal Courts of Justice The Judgement The Vice-Chancellor: This case raises questions about the rights acquired by someone who registers an Internet domain name and it has required me to try to understand the way in which the Internet system operates. I am grateful for the explanatory evidence given in their respective affidavits by Mr. Henderson Thynne and Mr. Rance. It is convenient I think that at the outset of this judgement and before describing the issues in the case I should give a description of the Internet system sufficient to enable the issues that have been argued before me to be comprehensible. In doing so I shall hope to avoid inaccuracy by using so far as possible the language of the two deponents. The Internet is a network of computer networks. A computer which is attached to an appropriate network can use appropriate software to communicate and exchange information quickly with any other computer on the network. In order to receive or to make available information on the Internet a domain name is needed. A domain name can be likened to an address. It identifies a particular Internet site. A particular domain name will only be allocated to one company or individual. It represents that company's computer site and is the means by which that company's customers can find it on the Internet. Electronic messages (e-mail) can be transmitted and received on the Internet. These messages are directed to e-mail addresses which will include the domain names of the addressees. A web site address, too, will include the main name of the owner of the web site. A web site is a series of files on a computer on the Internet that can be accessed by anyone via the Internet. It will be apparent, therefore, that in order to receive e-mail on the Internet and in order to establish a web site on the Internet a domain name is needed. Domain names appear as words. The name in issue in the present case, for example, is 'pitman.co.uk'. However, when a domain name is used on the Internet it is translated into numbers known as I.P. numbers. The translation is carried out by a series of computer software packages known as domain name servers. An I.P. number is required both to send and to receive e-mail. Besides translating domain names into I.P. numbers the name servers provide services to the software on clients' computers. Co.uk and com. are two of the most common domain name suffixes. They connote respectively U.K. companies and international companies. The Internet system has grown up informally and without statutory regulation. It was originally established and run, as I understand it, by academic bodies. The Internet Assigned Numbers Authority ('IANA') is operated by the Information Sciences Institute of Southern California and is the body which has become, for historical reasons, responsible for the allocation of top level domains. In the domain name 'pitman.co.uk', uk is the top level domain designating the United Kingdom. In about 1985 IANA authorised an academic organisation in the United Kingdom, known as the United Kingdom Education and Research Networking Association (UKERNA) to administer the domain name system for the United Kingdom under the u.k. top level domain. Initially the Internet was only used by academics and UKERNA gave domain names to universities and to other academic bodies. From about 1992, however, the Internet began to be used commercially and the business transacted on the Internet began to increase dramatically. Arrangements became necessary to deal, inter alia, with the allocation of domain names to companies and individuals desirous of using the Internet. In September 1985 a committee, the U.K. Naming Committee, was formed as an off-shoot of UKERNA to administer the U.K. domain. The Naming Committee consisted of United Kingdom Internet Service Providers. A Service Provider is a company whose business it is to arrange access to the Internet for its customers. A charge is naturally made for this service. The Service Provider can provide the customer with the facilities the customer needs in order to get connected to the Internet. It can obtain for the customer a domain name and e-mail facilities and set up a web site for the customer. There are two Service Provides who figure in this case. One is I-Way Ltd., which acted for the Second Plaintiff, PTC Oxford Ltd. The other is Demon. I imagine it is a company but I do not know its full corporate title. Demon acted on instructions given by Netnames Ltd. for the Second Defendant, Pearson Professional Ltd. Netnames Ltd. is a company which offers a service to clients in arranging for the registration of domain names, but it is not itself a Service Provider. So in its dealings on behalf of its client, Pearson Professional Ltd., it acted through Demon. Both I-Way and Demon were members of the U.K. Naming Committee. Mr. Henderson Thynne is the Netnames domain name manager. Mr. Rance is I-Way's technical director. The U.K. Naming Committee, at its inaugral meeting on 30th September 1995, agreed on rules to be followed in dealing with applications for co.uk domain names. It may seem a matter of some surprise that it had operated from 1985 to 1995 apparently without rules. Be that as it may, in September 1995 it decided to have rules. One of the rules was that if more than one application for the same domain name should be received a first come/first served rule would be applied. On 1st August 1996 a company, Nominet U.K., which is the first Defendant in this action, took over from the U.K. Naming Committee the responsibility for allocating U.K. domain names. Nominet is a company limited, as I understand it, by guarantee. I am not clear whether it purports to be a profit making company. Prior to 1st August 1996 the procedure for obtaining a particular domain name required an application to be made by a Service Provider. The application would be made by e-mail. It would be an application for registration in the name of the client of the chosen domain name. There then had to be a wait for a set number of days, originally as I understand it five, but later reduced to three, before an application for delegation of the domain name could be made. Finally, at the end of the fixed period, whether five or three days, and provided no objections had been raised by any of the other Service Providers, a second e-mail was sent by the applicant requesting the delegation to its client of the chosen domain name. When on 1st August 1996 Nominet U.K. took over the allocation of domain names from the Naming Committee the first come/first served rule was maintained. Nominet adopted a rule that 'where two applications are for the same name then the one which is received first shall have prior claim.' The problem in the present case has arisen out of the circumstance that both the Plaintiffs, Pitman Training Ltd. and PTC Oxford Ltd., and the Second Defendant, Pearson Professional Ltd., are entitled to use for their respective trading purposes the name or style 'Pitman'. One of the divisions of Pearson Professional Ltd., which is a wholly owned subsidiary of Pearson Plc, is Pitman Publishing, whose main business is the publication of books and electronic publications for university or college students. The managing director of Pitman Publishing, Mr. Bristow, has described it in his affidavit as "Europe's largest publisher of business management, education and development materials in the English language in paper based and screem formats." Pitman Publishing has an annual turnover in excess of £20m. Its United Kingdom annual turnover is in excess of £10m. The Pitman name has been associated with the publishing businesss since 1849. The Pitman business, founded as I understand it by Sir Isaac Pitman, originally included not only publishing but also a training business and an examination business. Of course the Pitman name was associated with each of these businesses. The businesses were sold in 1985. The publishing business was acquired by Pearsons. The training business was acquired by Pitman Training Ltd., the First Plaintiff. The examination business was sold off to another party. The continued use of the Pitman style, the Pitman name, for trading purposes by each of these purchasers of parts of the previous Pitman business was regulated by an agreement to which Pitman Training Ltd. and, as I understand it, the predecessors of Pearson Professional Ltd. were parties. It was dated 28th June 1985. Under the agreement Pitman Trading Ltd. covenanted for itself and its successors in title to the training business: "that none of them will at any time hereafter carry on or be directly or indirectly engaged or concerned or interested in carrying on in any part of the world, whether on its own account or as the agent, partner or associate of any other person, firm or company or to any subsidiary company: (1) the publishing of books, periodicals or magazines with the exception of publications ancillary to the training business including correspondence courses under the name or imprint of Pitman or which includes the name Pitman, or (2) any trade or business under the name Pitman or any name likely to cause confusion therewith but so that Pitman Training Ltd. shall be authorised by virtue of this agreement to carry on and conduct training and correspondence courses under the following names", and then a number of names are set out, "and such other names including the name Pitman which clearly indicate that the use is in connection with training or correspondence courses." It would seem that this covenant would bar Pitman Training Ltd. from using for its business purposes the domain name 'pitman.co.uk'. I am told, however, that over the period since 1985 Pitman Training Ltd. has carried on its training business using from time to time the name or style Pitman without any words indicating that the use of that style is in connection with training or correspondence courses. So I understand, although there is no evidence to that effect. I understand also that a case of waiver may be raised as an answer to the allegation that the use by Pitman Training Ltd. of the domain name 'pitman.co.uk' constitutes a breach of the 1985 covenant. So much for background and I now come to the events which have given rise to this litigation. On 15th February 1996 Netnames Ltd. recevied a request from the Second Defendant, Pearson Professional Ltd., to arrange for the registration of 'pitman.co.uk' and pitman.com as domain names for the benefit of its Pitman Publishing Division. On 16th February 1996 Mr. Henderson Thynne sent an e-mail request for those two domain names. On the same day he received an e-mail response confirming that his application had been accepted on to the automated system and that the three day (as it had become) objection period had begun to run. No objection was received to that application. So on 21st February Mr. Henderson Thynne applied, again by e-mail, for the two domain names to be delegated to the two designated name servers. On the same date, 21st February, Mr. Henderson Thynne received an e-mail response which showed, by the words "entry processed ok", that the application had been received and duly processed. The response indicated that alterations to the domain names data base so as to connect the domain names to the designated name servers had been made. Accordingly, Mr. Henderson Thynne issued certificates of registration of the two domain names to the Second Defendant. The procedures I have described established the Second Defendant as the company entitled to the domain name, (pitman.co.uk). No issue in this action turns on the other domain name. Pitman Publishing did not, however, intend to make any immediate use of the (pitman.co.uk) domain name save for certain advertising purposes that I will mention in a moment. Pitman Publishing did not intend to make use of Internet facilities for which the domain name would have been needed. So steps were not taken to translate the domain name into I.P. numbers. It was the intention of Pitman Publishing to set up a web site and to publish one or more of its publications on the established web site. The planning of this web site took, Mr. Bristow said in his affidavit, a good deal of time. He has explained: "Although the Internet is already important, we consider that it will become increasingly important in the future, indeed, so important that it is crucial to manage the way that the Pitman brand in relation to our publishing business is marketed on the Internet. We spent time considering and planning the web site, assessing what would be the most appropriate content and the most appropriate way to display that content. This was done by canvassing the opinion of senior people in Pitman Publishing and forming a working party to make the relevant decisions all of which takes time. The outcome of the decision was that we would start with a relatively inexpensive site based around one major publication. This would be an experimental attempt to learn what we could from marketing on the Internet and we would move on to a general Pitman site as time went on. Once these decisions were taken we began the process of constructing the site in or around September 1996. 15. We had planned to put our web site on the Internet from 10th December 1996 and to co-ordinate it with the launch of the product to be the main feature on the web site, a book called 'Mastering Management'. In the meantime, however, Pitman Publishing had made no use of the domain name it had registered save that the first 10,000 copies of the Mastering Management book had included a web site address which incorporated the domain name, 'pitman.co.uk'. Also in a number of advertisements for the book appearing in national newspapers in December of 1996 the web site address incorporating that domain name was given. In December 1996 Pitman Publishing attempted to connect its web site to the 'pitman.co.uk' domain name. The attempt ran into difficulties. It transpired that, unknown to Pitman Publishing, the 'pitman.co.uk' domain name had been redelegated to the Second Plaintiff, PTC Oxford Ltd. The story of how the Second Plaintiff came to be registered with the 'pitman.co.uk' domain name is told by Mr. Stanley Hunter, its managing director, in his affidavit sworn on 14th April. The Second Plaintiff is a computer and office skills training centre. It is a franchisee of Pitman Training Ltd., the First Plaintiff, and has been so since April 1995. In March 1996 Mr. Hunter contacted I-Way (as I have said, I-Way is an Internet Service Provider) and asked I-Way to check whether the domain name 'pitman.co.uk' was available and, if so, requested that that name be registered to his company, PTC. The evidence does not disclose exactly what was done by I-Way pursuant to the instructions that it had received from Mr. Hunter. But it is not in doubt that Mr. Hunter was told that there was no prior registration of the 'pitman.co.uk' domain name and on 15th March 1996 the registration of that domain name in the name of PTC was confirmed by I-Way to Mr. Hunter. It is also not in doubt that by 31st March 1996 the 'pitman.co.uk' domain name had become attached to I-Way's primary and second name servers in place of Pitman Publishing's name servers to which as late as 24th March 1996 the domain name was still attached. No one, neither of the two experts who have given evidence in this case nor anyone else, has come up with any clear explanation beyond mere speculation as to how this could have happened. It should not have been possible but it did happen. Unknown to Pitman Publishing their domain name was removed from their name servers, was registered in the name of PTC and was attached to PTC's name servers. PTC and Mr. Hunter had no knowledge that the domain name had previously been registered in the name of Pitman Publishing. In about July 1996 PTC began actively using its 'pitman.co.uk' domain name. It produced publicity literature which included an e-mail address incorporating that domain name. The literature was sent out to some 500 local companies and 1,000 private individuals. From about November 1996 PTC began to place advertisements in the local trade and consumer press, all of which included the e-mail address incorporating the domain name. To date, however, PTC have received only two e-mail corporate responses to these advertisements. Those responding would, of course, in doing so have used the e-mail address incorporating the 'pitman.co.uk' domain name. The discovery in December 1996 by Pitman Publishing that its domain name had been reallocated to and was now being used by PTC produced, understandably, a considerable volume of correspondence both between the parties and eventually solicitors on their behalf and between each of the parties and Nominet U.K. Pitman Publishing called on Netnames Ltd., who had acted for them in registering the domain name, to sort out the difficulty. In a letter dated 23rd December 1996 to Netnames Mr. Bristow said: "We have never requested a change to that registration and still require our domain name as certified by you. You have indicated that the name was registered by you and at some time subsequently has been reregistered to Pitman Training Services. We request that the registration is reverted to us immediately." Netnames reported back to Pitman Publishing on 13th February, after no doubt they had made enquiries, that Netnames had properly registered the domain name with the U.K. Naming Committee and that the Naming Committee had been in error in reregistering the domain name to PTC. On 14th February 1997 Netnames told Mr. Bristow that Dr. William Black, the managing director of Nominet U.K., would be dealing with the problem. Dr. Black did indeed contact both parties. He suggested mediation in order to resolve the problem but the suggestion of mediation did not bear fruit and solicitors were appointed on all sides. Willoughby & Partners were instructed to act for Pitman Publishing, and on 4th March 1997 they wrote to Nominet U.K. pointing out, as was the fact, that Pitman Publishing had been first in time in applying for the 'pitman.co.uk' domain name, that the rules of Nominet required priority to be given to the applicant who was first in time and requesting that Nominet reallocate the domain name to the first in time applicant, namely Pitman Publishing, and do so as soon as possible. In a letter of the same date to PTC, Willoughby & Partners made the same point about the rules and Pitman Publishing's priority in time as had been made in the letter to Nominet. They called on PTC to cease use of the domain name. PTC, by Mr. Hunter, responded with a letter of 7th March pointing out that PTC was not responsible for any error that might have been made and insisting that PTC was entitled to continue to use the domain name. Mr. Hunter concluded his letter by saying this: "I will defend my right to freely use this domain name and if stopped will commence proceedings against all parties concerned." PTC shortly thereafter instructed Dibb Lupton Alsop to act for them in the dispute that had arisen. On 27th March 1997 Willoughby & Partners wrote to Morrell Peel & Gamlen, solicitors acting for Internet. This is an important letter, for it is the foundation on which PTC's alleged cause of action against the Second Defendants for abuse of process is based. The letter, after referring to previous communications, said this: "Our client finds it difficult to understand the delay in redelegation of the pitman.co.uk name to Netnames' server for our client's use. As far as we are aware you have no reason to believe that our client was not the first applicant and thereby entitled to the name. Further, all the evidence points to the fact that our client was the first applicant and was accepted as such." Then, after some specific references to evidence that I need not trouble to read, the letter continued: "Accordingly, our client is of the opinion that there is no reason why the pitman.co.uk name should not be redelegated immediately for our client's use. Finally, there is no question of our client waiting beyond 4th April for a full satisfactory reply from Nominet U.K. In the absence of notification by that date that the name will be redelegated for our client's use we have received a strong indication from our client that proceedings will be issued." On 4th April Nominet U.K., having apparently been persuaded by Willoughby & Partners' letter of 27th March, wrote to PTC informing them that the 'pitman.co.uk' domain name was being transferred back to the Second Defendant, back to Pitman Publishing. The transfer was effected by, at latest, 7th April 1997. Accordingly, as from that date PTC's e-mail address that had included the domain name could not be used for e-mail communications with PTC. These proceedings were then commenced. The writ was issued on 9th April, with Pitman Training Ltd. as First Plaintiff and PTC Oxford Ltd. as Second Plaintiff. Nominet U.K. was First Defendant and Pearson Professional Ltd. was the Second defendant. An ex parte application for relief was made to and granted by Jacob J. on 8th April. The judge ordered that Nominet "do forthwith reinstate the Plaintiff-s electronic mail address with the name 'enquiries @ pitman.co.uk'" and ordered also that until after 8th April 1997 the First Defendant was not to suspend or remove the Plaintiff's electronic mail address with the name 'enquiries @ pitman.co.uk', nor to provide Internet services or any electronic mail address with the name 'pitman.co.uk' or any name including 'pitman.co.uk' to any person other than the Plaintiffs. There was also an order made against the Second Defendant ordering that over the same return date the Second Defendant "must not use any electronic mail address or Internet service with 'pitman.co.uk' in its name." On 11th April the application for interlocutory relief came inter partes before Lightman J. The matter was dealt with on that occasion by a consent order. First, as against Nominet U.K., an order was made restraining Nominet U.K. from suspending or removing the Plaintiffs' Internet services or electronic mail address with the name 'pitman.co.uk' or providing Internet services or any electronic mail address with the name 'pitman.co.uk' to any person other than the Plaintiffs. That consent order was made until judgement or further order. So far as Nominet was concerned that appeared to dispose of the interlocutory application. As against the Second Defendant, however, the consent order was expressed to continue until a full hearing of the interlocutory application. The full hearing has been the hearing before me. Over that period the Second Defendant was restrained from using any electronic mail address or Internet service which included in its name 'pitman.co.uk.' In the hearing before me Nominet has not taken any part, although I have been told, and can well believe, that it has had somebody listening to what has been said. The issue before me is whether PTC should, pending trial, have an injunction against the Second Defendant in the form of the injunction which has been running until today. The present position, as I understand it, is that although the domain name remains reallocated to the Second Defendant, to Pitman Publishing, technical arrangements have been made by Nominet for e-mail communications to PTC's e-mail address incorporating the domain name to continue to be received by PTC. This is apparently technically possible without reallocating the domain name back to PTC. So the name remains formally with the Second Defendant to whom it was reallocated by Nominet at the beginning of April but PTC has been in a position to continue to receive e-mail through an address incorporating that domain name. How this is technically possible I do not know but I do not think I need to. It is trite law and, of course, common ground that interlocutory relief in an action can only be granted in support of some viable cause of action. If a plaintiff cannot show a reasonably arguable cause of action against a defendant the plaintiff cannot obtain any interlocutory relief against that defendant however convenient the grant of that relief might appear to be. In the present case three alternative causes of action against the Second Defendant have been put forward on behalf of the Plaintiffs. Two of them, passing off and tortious interference with contract, are mentioned in the relief sought by the writ and are set out more fully in the draft statement of claim. But the third, abuse of process, is the subject of a proposed amendment to the writ for which leave is needed. Leave should, of course, not be granted unless the proposed cause of action can be made to appear reasonably arguable. I am of the opinion that none of these three causes of action is reasonably arguable, that none has any prospect of success. Let me take them in turn.
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