Facts
The First Defendant, Prangley, registered the domain name
britanniabuildingsociety.com. His evidence was that he
intended setting up a business in Iran providing the services of
British builders to Iranian employers. At this time no
website had yet been set up. The First Defendant claimed to
have contacted the Patent Office to check that the registration of
the name was allowed. There was a dispute over what the
Patent Office told him; his case was that he was told that he had
every right to acquire the domain name, provided he did not use it
for the purpose of offering services similar to those offered by
the Claimant.
On discovery of the existence of the domain name the Claimant
alleged that the appropriation and registration of that name
constituted threatened passing off and infringement of the
Claimant’s rights as the registered owner of various trade marks
incorporating the word “Britannia”.
An application for summary judgment was made by the Claimant on
the ground that the First Defendant had no possible defence to the
claim.
Judgment
Rattee J referred to the decision of Aldous LJ (Court of Appeal)
in British Telecommunications Plc v One in a Million Ltd
[1999] FSR 1.
Rattee J found the First
Defendant’s claim that his intention in registering the domain name
was in no way to make fraudulent use of it or to use it as a means
of prejudicing the goodwill and reputation of the Claimant by
association, was “wholly incredible”. The judge considered
that when registering the domain name, the Defendant was aware of
the Claimant and was aware that the name was a commercially useable
instrument.
Rattee J held that the use of the domain name in this country
would lead to a serious risk, if not a certainty, of confusion in
the mind of anybody who saw the domain name as to whether the owner
of the domain was the Claimant or connected to the Claimant.
As such, it was an instrument of fraud and the court should
intervene by injunctive relief to prevent the use of such an
instrument. Consequently, the First Defendant was ordered to
transfer the domain registration to the Claimant as the First
Defendant had no possible defence to the claim of passing off.
It was considered unnecessary to reach any conclusion on the
infringement of trade mark aspect of the claim in the light of the
injunction granted to the Claimant.
