Yoyo.email Ltd v Royal Bank of Scotland Group Plc & Ors

Yoyo.email Ltd v Royal Bank of Scotland Group Plc & Ors

The registration of the domain names by the claimant, which are distinctive and identical or confusingly similar to the defendants' marks, constitutes actionable passing off as a matter of law, and the claimant has no realistic prospect of defending the counterclaim. The court has no jurisdiction to review or grant declaratory relief regarding the WIPO UDRP panel decision, and the claim discloses no cause of action or practical utility.

Parties
Claimant: YOYO. EMAIL LIMITED; Defendants: ROYAL BANK OF SCOTLAND GROUP PLC and Others
Jurisdiction
England and Wales
Judgment Date
02 December 2015
Procedural Posture
Civil / Summary Judgment and Strike Out Applications
Outcome
Defendants' applications granted; claimant's claim struck out; summary judgment for defendants on counterclaim for passing off.
Legal Topics
Passing Off, Domain Names, Declaratory Relief, Summary Judgment, Jurisdiction
Intellectual Property Civil Procedure Passing Off Domain Names Declaratory Relief Summary Judgment Jurisdiction

Case Brief

Summary, issues, holding and outcome

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Parties

YOYO. EMAIL LIMITED

Claimant

ROYAL BANK OF SCOTLAND GROUP PLC and Others

Defendants

Procedural Posture

Civil / Summary Judgment and Strike Out Applications

Legal Issues

  1. 1 Whether the registration of domain names identical or similar to the defendants' marks amounts to passing off
  2. 2 Whether the claimant has a realistic prospect of defending the counterclaim for passing off
  3. 3 Whether the court has jurisdiction to review or grant declaratory relief regarding a WIPO UDRP panel decision

Ratio Decidendi

The registration of the domain names by the claimant, which are distinctive and identical or confusingly similar to the defendants' marks, constitutes actionable passing off as a matter of law, and the claimant has no realistic prospect of defending the counterclaim. The court has no jurisdiction to review or grant declaratory relief regarding the WIPO UDRP panel decision, and the claim discloses no cause of action or practical utility.

Court Disposition

Defendants' applications granted; claimant's claim struck out; summary judgment for defendants on counterclaim for passing off.

Orders

  • Claim struck out in its entirety
  • Summary judgment granted for defendants on counterclaim for passing off