Taxi Driver Online

Here is a summary of the battle of the "domain name" fought out by two of Londons largest Radio operators. To the victor went the spoils but is it ever worth spending thousands on such issues when there are a million and one adaptations that can be applied to the naming of domains?
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RADIO TAXICABS (LONDON) LTD (T/A RADIO TAXIS) v OWNER DRIVERS RADIO TAXI SERVICES LTD (T/A DIAL-A-CAB) (2001)

Ch D (John Randall QC) 12/10/2001

INTELLECTUAL PROPERTY - INFORMATION TECHNOLOGY

TRADE MARKS : RADIO TAXIS : GENERIC : DESCRIPTIVE : INTERNET DOMAIN NAMES : WORLDWIDE WEB : WWW : PASSING OFF : TAXI BUSINESSES : LICENSED BLACK CABS : RADIO CIRCUITS : INSTRUMENTS OF FRAUD : NAME : REPUTATION : GOODWILL : INTENTION TO DECEIVE : GENERIC TERMS : DESCRIPTIVE TERMS : TRADING NAMES : DISTINCTIVENESS : MISREPRESENTATION : REASONABLY PROBABLE DECEPTION :

The internet domain name "www.radiotaxis.com" was not being used as an instrument of fraud. The claimant's action in passing off did not succeed and it was not entitled to the "delivery up" of the domain name.

Claim for injunctive relief: (i) restraining the defendant ('D') from passing off its business as, or as being connected with, that of the claimant ('C') by use of the domain name "www.radiotaxis.com" ('the name'); and (ii) requiring D to "deliver up" the name to C. C and D were both operators of radio circuits for licensed black cabs in London. C had traded under the name "Radio Taxis" since the 1950s. D first registered its name in September 1997. D's website (the primary address for which was "www.dialacab.co.uk") went online in April 1998. D caused an automatic direct link to be set up such that persons arriving at the web address "www.radiotaxis.com" automatically had the pages published on its website displayed before them.

C first went online with its website in 1998, and had since spent some £500,000 developing an internet booking system. C had registered the domain name "radiotaxis.co.uk" in 1998, but did not query why its preferred choice of "radiotaxis.com" was not available. C now contended that the combination of the name and the installation of the automatic direct link to D's website constituted actionable passing off. However, C was unable to adduce any evidence of actual confusion in the two years of the operation of the website and the link.

HELD: (1) The court was not satisfied that D had registered the name or had caused the link therefrom to be established with the intention either of taking advantage of C's name, reputation or goodwill, or of diverting business from C to D. (2) In the light of that finding, the claim that the name was an "instrument of fraud" which should be "delivered up" or assigned to C could not succeed. (3) Although C had a reputation within "the trade" as "Radio Taxis", it had no such reputation amongst members of the general public. Since there was no real risk of confusion amongst members of the trade about the separate identities of C and D, the claim in passing off failed.

Claim dismissed.

Robert Englehart QC and Guy Tritton instructed by Simons Muirhead & Burton for C. Patrick Milmo QC and Stephen Bate instructed by Fladgate Fielder for D.
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