ACID Members Fizbag sell a great range of stylish shopping bags including the “Fizbag” which is a reusable shopping bag which folds away into a pouch. They have a UK trade mark for Fizbag and have also developed goodwill in that name having promoted the product nationwide which was also featured in Cosmopolitan Magazine. They also operate from the domain 

Fizbag were disappointed and distressed to discover that a former customer had registered two domain names, and and were selling a range of products which included reusable bags. The customer had no link to the Fizbag name and the assumption was that the registering of the domains was simply to ride on the back of Fizbag’s reputation.

The potential offences included trade mark infringement and passing off by the offering for sale, under an identical mark, products for which Fizbag had a trade mark, and also the registering of the domains themselves. This gave a misrepresentation to people (who consulted the domain register) that the supplier was connected with the  registered Fizbag name – and thus owned the goodwill. As this was not the case this amounted to passing off.

McDaniel & Co wrote to the company and achieved the removal of the reusable bags from the website. Fizbag however wanted, and were entitled to the domain names, so to reduce costs, sensibly decided to use the Nominet dispute procedure as the supplier had refused to transfer them. Following negotiations it was agreed that the two domains would be transferred to Fizbag and they would be reimbursed their legal costs.

Andrew Lee of McDaniel & Co comments:” Following the One in a Million case a few years back there is a narrow ambit of passing off law which protects against abusive domain name registrations. Generally domains are allocated on a first come first served basis however if that domain infringes a trade mark or amounts to passing off then often the true owner can seek the transfer

Amanda Overland said, “This just proves that you don’t have to go all the way to Court to get a result. The combination of a letter before action and going down the Nominet dispute procedure has achieved our objectives in a cost and time effective way. However, it has also reinforced the fact that we will protect our name and our products at all costs”.

Amanda Overland, Heron House, L’Avenue de la Commune, St Peter, Jersey JE3 7BY

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