Domain Name Confusion? There is a Solution

In a case which vividly illustrates that confusion between similar website names is not an insoluble problem, a businessman has been directed to give up two internet domain names which were capable of creating public confusion and a perception that they were connected to the world’s largest steel manufacturer.

The businessman brought down the wrath of multi-billionaire, Lakshmi Mittal, and two companies within the multi-national group of which he is chairman (the group) when he registered internet domain names, mittalbank.co.uk and mittalgold.co.uk, along with other domain names incorporating the word ‘Mittal’.

In ordering the businessman to transfer the two domain names that were the subject of the complaint to one of the company’s within the group, an independent expert appointed by Nominet – the body that polices domain names within the UK – found that the ‘abusive’ registrations had been carried out with a view to profit and took ‘unfair advantage’ of the group’s trading reputation.

The expert found that the offending domain names, which were registered in 2009, were ‘identical to, or at least highly and confusingly similar’ to the Mittal trading style used by the group since 1976. She accepted the group’s plea that the businessman had never intended to make genuine commercial use of the domain names.

He had made ‘at least 20 offers’ to sell the domain names to the group for up to £6 million, sums which the company had attacked as ‘disproportionate and unwarranted’ and bearing no resemblance to the modest sums paid by the businessman in order to register them.

The expert noted that there was strong evidence that the businessman had ‘targeted’ the group and that his motives were to make a profit out of the domain names rather than to use them for any business purposes of his own. He had probably registered them with the intention of selling them to the group for sums far in excess of his out-of-pocket expenses, the expert found.

Arcelor Mittal (Societe Anonyme) v Hanif. Case Number: D00012383