5 years ago... Corporate giants win domain name case

24.07.98 The UK Court of Appeal has quashed two men's attempts to register the brand names of major businesses as web domains.

Six companies, including BT and Virgin, brought the case against Richard Conway and Jules Nicholson, of One in a Million. The judge ruled yesterday that brands such as BT have become so well known they must be treated as trademarks. The ruling brings UK law in line with the US.

One in a Million had registered, but never used, web addresses such as burger-king.co.uk and marksandspencer.co.uk. Conway told Silicon News: "We started this because we wanted to point out how slow big corporations were to see the potential of the internet. But now we are fighting for the rights of small businesses and non-commercial sites on the web."

24.07.03 It was around this time that major names started to play hard ball with their brands online. Opportunists are nowadays given short shrift - even as .info, .biz and other suffixes come in, giving major trademark owners a headache - and even those companies with historical claims to a name usually lose out to the big boys.

In 1998 many savvy web users were still trying to approach the medium as a Wild West where there were fortunes to be made. Plenty of money was made - remember this was the late 1990s - but not from something so simple as 'passing off', an act lawyers have known about and battled for over 100 years.

(Back to 1998...) Conway advocates a registration system that works on a first come, first served basis, to prevent large corporations from diminishing the web presence of smaller organisations with the same name. "Marks & Spencer didn't even offer to negotiate with us," he said.

Conway and Nicholson, who met over the Internet, now have one month to decide whether or not to appeal to the House of Lords. In the meantime, they have been ordered to pay their opponents' legal costs of up to £300,000, with bankruptcy looming if the companies force them to pay up.

The six companies suing the two men are BT, Cellnet, Ladbroke Group, Marks & Spencer, Sainsbury's and Virgin. Representatives from BT and Marks & Spencer were not available for comment.