Preemptive injunction stops cybersquatter in tracks

The English High Court has issued an unusual decision in the case of Metalrax Group v Vanci, granting an injunction to prevent the defendant from reacquiring a domain name he had lost, rather than waiting for the defendant to acquire the name and then ordering its transfer.

The claimant, an engineering company, had been trading under the name Metalrax for over 40 years. The defendant, an individual, had been trading as Disability UK, which raised money for the disabled. Vanci had registered over 180 domain names and linked them with the Disability UK name to raise its profile on the Internet.

When the claimant wrote to the defendant about his ownership of the domain name 'metalrax.co.uk', Vanci indicated he had received an offer from a "cold steel fetish eroticism" porn site. He subsequently licensed the name to this site, causing Metalrax's shareholders to complain.

An independent Nominet expert found that the name had been used in a manner likely to cause confusion. Accordingly, Nominet suspended the name for three months and declared its intention to cancel the registration and make it available on a first-come, first-served basis if matters were not resolved. Vanci said he intended to reregister the name and sell it to a US company. Prior to the cancellation date he offered to settle for a "realistic business offer" and an apology. Metalrax sought assurance from Nominet that it would not allow Vanci to reregister the name, to which Nominet replied that it would not make the name available if Metalrax sought a summary judgment or interim injunction.

Metalrax commenced proceedings, arguing that as Vanci was now aware of the claimant, any reacquisition of the name would be in bad faith and amount to passing off as the domain name was an instrument of fraud. It argued that the threat to sell or license the name to a porn site was a crude attempt to force the claimant to pay.

The court granted the injunction, stating that Vanci could not reacquire the domain name in good faith as he had no commercial interest in it except to extort money from the claimant. The court also commented that documents revealed that the defendant had no arguable defence to the claim of passing off.

Although Metalrax was forced by Nominet to bring the matter before the court, ultimately this proved beneficial as it stopped Vanci from reacquiring the name and selling it on to a company beyond the UK court's jurisdiction.

Dawn Osborne, Willoughby & Partners, London