The trademark in question concerned the mark “banyan tree”. The trade mark had been used in relation to hotels and leisure facilities used in the Far East and promoted in the UK. Tropical had registered the domain name and operated under “banyantree.com” and “banyantravel.com”. TheÂ domain in dispute concerned the Country Code Top Level Domain “banyantree.co.ukÂ. The domain had been registered by Mr Morgan even though he had not to date used the name. Morgan approached the Â Claimant and offered to sell the domain for a price that Tropical considered to be too high. The Â Defendant had also threatened to place the domain in an auction. Â After learning that the domain had been linked to a pornography site, (shortly removed by the Â Defendant after the request from the Claimant). Proceedings were brought against the Defendant by Â Tropical on the grounds of passing off and applied for an injunction and order for the transfer of Â the said domains. The Defendant claimed that he had registered the domain innocently and had Â offered to transfer the domain to the Complainant upon notice of the ClaimantÂs claim to the High Â Court.
Â The High Court held that holding a domain name once one had received notice from the Claimant amounted to passing off as Banyan Tree was a trading name used by the Claimant.
This case joins a long list of cases which confirm that registration of domain names by individuals who have no obvious connection to and which incorporates other businesses registered or unregistered trademarks amounts passing off and/or trademark infringement. This concept has been echoed throughout the courts since the decision of BT v. One in one Million case.
Domain name disputes can now be solved by way of the various dispute resolution services, most notably the World Intellectual Property Organisation (www.wipo.org) Uniform Dispute Resolution Policy (http://ecommerce.wipo.int/domains) for Generic Top-Level Domains or the Nominet (http://www.nic.uk/) Dispute Resolution Service (http://www.nic.uk/DisputeResolution/AboutTheDrs/) for the UK Country Code Top Level Domains.