Tesco's successful infringement action against Elogicom's use of domain names such as "tescodiets.co.uk" to direct traffic to Tesco's web site (Tesco Stores Ltd v Elogicom) illustrates how agile Courts need to be to address each new ingenious mechanism for use of well known trade marks on the internet.
In this case Tesco had agreed through TradeDoubler to pay a commission for traffic directed to the Tesco web site through some innocuous domains, which had no reference to Tesco's name in them. Elogicom apparently then obtained a number of domains which included the Tesco name and used these to redirect traffic to the Tesco site -- exactly the sort of thing that people typing in those domains would have hoped for, so hardly a source of confusion for the punter. What Tesco objected to was that they, Tesco, were being asked to pay commission on such redirections. Quite a nice little earner if Elogicom could pull it off -- using a trade mark owner's name to attract custom to the trade mark owner's web site and take a small cut along the way! Commission apparently increased from about £70 per month to about £27,000 per month. The judge was having none of it: Summary judgement all round.
A good result for trade mark owners: we have seen an increasing trend for "infringers" to use domain names to redirect users to the trade mark owners own web site -- either directly or through parking sites. Food for thought as well, should trade mark owners register their trade marks to cover a "service" analogous to that identified by the judge as "[Elogicom's] own service to the public, in the form of providing a pathway through the internet to Tesco websites", something which was (sort of) covered by Tesco's registrations.
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