British Telecommunications Plc v One in a Million Ltd [1999] 1 W.L.R. 903

• Defendant were dealers in Internet domain names; had deliberately registered domain names consisting of names of trademarks of well-known businesses without those business’s consent.

• Claimant, one company whose name had been registered by Defendant in numerous forms, sued Defendant for passing off.

Held

• Is passing off where Defendant is equipped with, or intends to equip another with, an instrument of fraud.

• Whether a name is instrument of fraud is matter to be determined by all the circumstances; including:

  • Similarity of names

  • Intention of Defendant

• On facts, names were instruments of fraud.

  • I.e. Defendant intended to extract money from Claimant by express or implied threat that Defendant or someone else could make use of its name.

• Therefore was passing off and threatened passing off.