Global Projects Management Ltd v Citigroup Inc & Ors [2005] EWHC 2663 (Ch) (17 October 2005)

Global Projects Management Ltd v Citigroup Inc & Ors [2005] EWHC 2663 (Ch) (17 October 2005)

The registration and retention of the domain name citigroup.co.uk by GPM, immediately following the public announcement of the Citigroup merger, was an opportunistic act intended to take advantage of Citigroup's reputation and constitutes passing off and trade mark infringement. The facts are on all fours with One in a Million, and there is no realistic prospect of GPM or Mr Davies successfully defending the counterclaim. Mr Davies is personally liable as he participated in a common design with GPM. The threats action fails as a consequence.

Citation
[2005] EWHC 2663 (Ch)
Parties
Claimant / Part 20 Defendant: Global Projects Management Ltd; Defendant / Part 20 Claimant: Citigroup Inc; Defendant / Part 20 Claimant: Citicorp; Defendant / Part 20 Claimant: Citibank NA; Part 20 Defendant: Daniel James Stuart Davies
Jurisdiction
England and Wales
Judgment Date
17 October 2005
Procedural Posture
Civil (chancery Division) / Summary Judgment Application
Outcome
Summary judgment granted for Citigroup and its subsidiaries on the counterclaim; summary judgment dismissing GPM's threats action.
Legal Topics
Passing Off, Trade Mark Infringement, Domain Names, Summary Judgment, Personal Liability of Directors
Intellectual Property Commercial Law Passing Off Trade Mark Infringement Domain Names Summary Judgment Personal Liability of Directors

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 2 Authorities cited 11 Party arguments 2 Amounts and remedies 2
Sign in to unlock

Parties

Global Projects Management Ltd

Claimant / Part 20 Defendant

Citigroup Inc

Defendant / Part 20 Claimant

Citicorp

Defendant / Part 20 Claimant

Citibank NA

Defendant / Part 20 Claimant

Daniel James Stuart Davies

Part 20 Defendant

Procedural Posture

Civil (chancery Division) / Summary Judgment Application

Legal Issues

  1. 1 Whether the registration and retention of the domain name citigroup.co.uk by GPM constitutes passing off against Citigroup and its subsidiaries.
  2. 2 Whether GPM's actions infringe registered trade marks held by Citicorp under section 10(3) of the Trade Marks Act 1994.
  3. 3 Whether Mr Davies is personally liable for the tortious acts committed by GPM.

Ratio Decidendi

The registration and retention of the domain name citigroup.co.uk by GPM, immediately following the public announcement of the Citigroup merger, was an opportunistic act intended to take advantage of Citigroup's reputation and constitutes passing off and trade mark infringement. The facts are on all fours with One in a Million, and there is no realistic prospect of GPM or Mr Davies successfully defending the counterclaim. Mr Davies is personally liable as he participated in a common design with GPM. The threats action fails as a consequence.

Court Disposition

Summary judgment granted for Citigroup and its subsidiaries on the counterclaim; summary judgment dismissing GPM's threats action.

Orders

  • GPM to assign the domain name citigroup.co.uk to Citigroup.
  • Injunctions restraining further passing off and trade mark infringement by GPM and Mr Davies.