Britannia Building Society v Prangley & Others
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.
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.
