In what is thought to be the first case of its kind in the Republic, an Irish firm of solicitors has succeeded in recovering the right to its dot.com domain name after taking proceedings in the High Court against the company which registered it. Last Friday, LK Shields, of Upper Mount Street, Dublin, secured leave from the High Court to seek an order against Engefield Management Consulting Limited, Boreenmanna Road, Cork. Engefield had registered the name LKshields.com.
A hearing was fixed for yesterday when the legal firm planned to seek an interlocutory order against the Cork company directing it to cause the domain name or any sign incorporating the trademark LK Shields, to be erased, removed or obliterated from any domain registration.
However, when the matter came before the High Court yesterday, Mr Richard Nesbitt, for Shields, told Mr Justice O'Neill that a settlement had been reached in the dispute between the parties.
Under the terms of settlement, the Cork company undertook to make no further use of the name, LK Shields, except in the assigning to the Dublin company within 14 days of the domain name "lkshields.com".
Provided Engefield abided by the terms of the settlement, Shields would agree not to seek costs of the proceedings, counsel added. In light of the agreement, he sought and was granted an order adjourning the proceedings generally.
Mr Eoin Cunneen, a solicitor at LK Shields who represented the firm in court, said after the case that Engefield had registered lkshields.com in March.
Mr Cunneen said that the firm was "very happy" with the outcome of the case and said that no money had changed hands as part of the settlement.
The fact that LK Shields had trademarked the name of the company strengthened its position in the case, according to Mr Cuneen. He said that like the Marks & Spencer.com case in the UK, the question of the jurisdiction of the Irish courts in the matter did not arise.
Mr Michael Mulcahy, the Cork businessman against whom LK Shields was seeking the interlocatory injunction, had told the Sunday Business Post at the weekend that he did not register the name for financial gain.
He told the paper: "This isn't cyber-squatting. I'm actually a client of LK Shields, who are dispensing advice on e-commerce to top Irish companies and Government Departments. They're supposed to be experts. I'm just making a point."
Jurisdiction of the court has been a major sticking point when cases of this type have arisen in other countries. All dot.com domain names are registered in the United States and some plaintiffs and defendants have argued that therefore the courts in other countries have no jurisdiction to make a judgment regarding ownership of such domain names.
