TEVA AGAIN; CITIGROUP WIN DOMAIN NAME CASE

1 Antidepressant brings smile to Teva's lips

Only a few days ago the IPKat commented on how difficult it seems to be to get the better of generics manufacturer Teva. Well, here's another news item that informs the IPKat that Teva has wriggled out of a patent infringement suit brought in the US by Wyeth in relation to antidepressant EFFEXOR.

The terms of the settlement are confidential but will have to be approved by the US Federal Trade Commission and the US District Court for the District of New Jersey.


2 Citigroup goes to town

The IPKat has found this absorbing case on Thomson's Lawtel subscription service. It's Global Projects Management Ltd and another v Citigroup Inc and others, a Chancery Division of Mr Justice Park on Tuesday.

On 6 April 1998 the merger of two companies created a new company, Citigroup. That very day one of the directors of Global Projects Management (GPM), a professional IT security business, applied successfully to register the domain name "citigroup.co.uk"; the next day his application to register the domain name "citigroup.com" was refused. GPM had no connection with Citigroup, had never used "citigroup.co.uk" in its own business and had not attempted to sell the name to Citigroup.

What did this all mean to internet users? Anyone keying in "www.citigroup.co.uk" would be taken to GPM's website, where he would receive a message that "an error has occurred". Likewise, any email to one of Citigroup's employees that used the "citigroup.co.uk" email tail would go to GPM, the sender receiving a message that the email had been wrongly addressed.

In 2003 Citigroup found out about "citigroup.co.uk" and threatened legal action against GPM, whereupon GPM sued Citigroup for making unjustified threats under the Trade Marks Act 1994, s.21. Citigroup counterclaimed for summary judgment, maintaining that GPM's registration and ownership of the "citigroup.co.uk" domain name amounted to passing off and alleging that GPM had infringed its registered trade marks.

Park J gave judgment for Citigroup.

*Following the somewhat controversial ruling of the Court of Appeal in Marks & Spencer Plc v One in a Million Ltd [1999] 1 WLR 903, held that the mere registration and maintenance of a domain name that led people to believe that the holder of the domain name was linked with a person was enough to make the domain a potential "instrument of fraud" and therefore constituted passing off.

* It was conceded that neither GPM nor its director had cyber-squatting backgrounds, but concluded that the evidence was irrefutable that their object was to obtain a domain name that carried the threat of deception harmful to Citigroup: applications were made speedily to register the domain names and a volume of email, which might be confidential or sensitive, would be mistakenly sent to GPM where it might be read by its director.

* A full trial would be pointless as it was obvious that the director had caused GPM to register the domain name and he knew of the press announcement of the formation of Citigroup that was made earlier the same day.

* Citigroup was entitled to summary judgment on its claim for infringement of registered trade marks under s.10(3) of the Act.

* Having participated personally with GPM in a common design to carry out acts that resulted in tortious liability, both the director and GPM were liable.

The IPKat would like to know a little more about this case and hopes the full transcript of the judgment will appear on BAILII. He's intrigued as to why an IT security company with no track record of cybermischief should have done what it did and suspects there may be more than meets the eye.