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The UK’s Intellectual Property Enterprise Court (IPEC) has handed what one law firm has called “unprecedented” costs to translation company TheBigWord in a trademark infringement claim.
The court handed down its judgment on Tuesday, October 9, against interpreting service Language Empire and individual Yasar Zaman, who was also named as a defendant.
According to TheBigWord, based in Leeds, UK, the defendants set up two websites that infringed the company’s trademarks and amounted to passing off.
The allegedly infringing domain names, www.thebigwordtranslation.co.uk and www.bigwordtranslation.co.uk, were registered under Language Empire’s name in August 2010. The websites only displayed a holding page until 2014, when they went live.
Both websites contained the sign ‘Big Word Translation’ and contained a logo that allegedly infringed TheBigWord’s logo.
In addition, the websites contained text that suggested they were connected with TheBigWord.
For example, thebigwordtranslation.co.uk said: “Welcome to The Big Word Translation, the right place for professional translation services of the highest standard. Delivering translations in over 400 different languages and offering a 24 hour service, has made us one of the UK’s most popular providers of translation services.”
Both websites also contained a copyright notice reading: “© 2014 The Big Word Translation All rights”.
In February 2017, TheBigWord sent pre-action correspondence claiming trademark infringement and passing off.
Although no response was received, the websites were taken down shortly afterwards.
In March 2017, TheBigWord issued a claim form alleging that the defendants had deliberately infringed the company’s trademarks and passed off the websites as connected with TheBigWord to divert potential customers.
As the defendants did not acknowledge the action, TheBigWord obtained judgment in default in May 2017. The judgment said that TheBigWord was owed damages and that the domain names should be transferred to the company.
In an affidavit, Zaman said that he did not respond to correspondence because he assumed it was “a scam” as he didn’t recognise TheBigWord’s holding company name—Link Up Mitaka.
However, this week, Judge Melissa Clarke said that Zaman had “fatally undermined” the letter, as “a glance” would reveal that Link Up Mitaka trades as TheBigWord.
According to barrister Nick Zweck, who was appointed by London-based Virtuoso Legal (representing TheBigWord), the real reason Zaman didn’t respond to the notifications was because “he panicked, took the websites down and hoped that would be sufficient to make the matter go away”.
In addition, the IPEC heard that when a court date was set for judgment, Language Empire responded by claiming that the domains were dormant. The company alleged that the websites had not been used and were registered by a marketing assistant on their own debit card.
Clarke called Zaman’s evidence a “tangled mass of contradictions, inconsistencies, unlikelihoods, implausibilities and untruths which obscure any truthful evidence he may have given, such that I cannot identify it”.
According to TheBigWord, the company’s web traffic increased by 50% from 6,500 per month to 10,000 hits per month after the infringing domains were removed.
TheBigWord was awarded damages of £142,044 ($186,800).
In what Virtuoso called an “unprecedented” ruling, Clarke also lifted the cap on the legal costs the court could award, from £25,000 ($32,900) to £98,250 ($129,200), to accommodate additional legal fees incurred by TheBigWord.
domain names, websites, online, trademark, trademark infringement, Intellectual Property Enterprise Court, TheBigWord, translation