Case Studies - Domain name recovery

The success of the Jet2 holidays business has led other providers to piggy back on their success using very similar domain names.

Our litigation team acted for in relation to the recovery of five domain names acquired by a developer aiming to set up a rival travel service, and for trade mark infringement/passing off. The team filed UDRP proceedings at WIPO and Nominet to recover the domain names, but then the developer threatened an imminent launch of his website, so the team filed for an interim injunction in the High Court. The defendant conceded the domain names two days before the hearing.

JD Sports - Online confusion

Our litigation team acted for JD Sports, the leading high street and online retailer, in a worldwide trade mark dispute against Beijing Jing Dong 360 Du E-Commerce Ltd (“Beijing Jing Dong”), one of the largest Chinese e-commerce companies. The dispute concerned the right to use and retail under the mark “JD” in each country of the world. 

UK High Court proceedings were served on all the relevant defendants seeking a pan-European injunction to stop Beijing Jing Dong trading in Europe under its JD domain name. Opposition and cancellation proceedings were brought between each party throughout the world, which we are responsible for, including in the EU, USA, the Middle East, East Asia, etc. Our client’s goals have been fully achieved. 

Finastra - A tailored approach

We act for Finastra, a global leader in financial services software. In 2017, Misys merged with D+H, to create the third largest Fintech company in the world, with a substantial portfolio of financial services solutions that cover retail and corporate banking, lending, treasury, capital markets, investment management and enterprise risk. The firm was tasked with developing and implementing a trade mark searching strategy for a new global brand which the merged business was to operate under. Our search strategy had to be comprehensive, cost effective and commercially focussed.

The firm adopts a flexible and holistic approach to trade mark clearance searches, an approach that utilises a blended mixture of publically available registers, commercial databases which we subscribe to and our network of trusted partners throughout the world. The strategy that we developed for Finastra was structured to take account of their key markets, their core goods and services and the budget for legal spend. With our team of chartered trade mark attorneys who are highly experienced in conducting clearance programmes over many years, we were able to provide Finastra with commercially relevant and concise advice. We identified not only where there were possible conflicts and where earlier rights posed a risk to Finastras’ proposed use, but also gave Finastra a commercial steer on whether there was likely to be a commercial risk in their market sector.