Singapore – Domain Name Not Held On Trust – TWG Tea Company Pte Ltd v Murjani Manoj Mohan [2019] SGHC 117.

Facts

 

This action concerned around a website with the domain name www.twgtea.com (the "Domain Name") that (at the time of filing) was registered in the name of the Defendant (“Manoj”).

 

Manoj was a director, Chairman and CEO of the Plaintiff, TWG Tea Company Pte Ltd ("TWG Tea"), until he resigned in 2012 following disagreements with one of TWG Tea’s investors. Following a meeting on 3 August 2007 with Taha and Maranda, where they discussed the name of the brand, Manoj registered the Domain Name in August 2007 in his name.

 

TWG Tea commenced this action against the Defendant, Mr Murjani Manoj Mohan ("Manoj"), claiming that: (a) Manoj held the Domain Name on an express or constructive trust for TWG Tea; and (b) Manoj was estopped from denying that the Domain Name belonged to TWG Tea at all material times.

 

In response, Manoj counterclaimed that he was the owner of the Domain Name and that TWG Tea was liable to compensate him for its use. He also filed a counterclaim against TWG Tea, TWG Tea's CEO and President (“Taha”), and Taha’s wife and TWG Tea's Director of Corporate Communications and Business Development ("Maranda"), for publishing false statements that referred to Taha and Maranda as TWG Tea’s co-founders to Manoj’s exclusion.

 

Decision
 

Creation of express trust

 

The creation of an express trust requires the certainty of intention, subject matter and object. There must be proof that the settlor intended a trust. A trust can be created by an informal declaration or inferred from the acts of the settlor or the circumstances of the case.

 

The Judge found that an express trust was established during a meeting on 3 August 2007, when Manoj, Taha and Maranda agreed to set up a new entity named TWG Tea for Wellness’ tea business and for the

domain name associated with the same name to belong to this entity. The agreement and intention among them was that when such a domain was registered, it would vest in TWG Tea when the company wa incorporated and for its sole use and purpose.

 

The intention was also evident from uncontested evidence from Taha and Maranda that in 2008 and 2010, Manoj had assured Taha that he was holding the Domain Name on trust for TWG Tea. Manoj also referred to the Domain Name as “our domain” in an internal e-mail in 2009, and signed a letter stating

The Judge accepted that by Manoj referring to the Domain Name as "our" and not "his", TWG Tea was the rightful owner of the Domain Name. Further, the Declaration Letter confirmed that the Domain Name was owned by TWG Tea, and that Manoj was merely holding the same on trust for TWG Tea.

 

The Judge found that even if no express trust could be or was created in August 2007, such a trust would have been created by April 2008 by Manoj’s various representations that he was holding the Domain Name on trust for TWG Tea , including the Declaration Letter.

 

Proprietary estoppel

 

The Judge also agreed with TWG Tea’s argument that Manoj was estopped from denying that the Domain Name belonged to TWG Tea. In this regard, he found that Manoj had represented to TWG Tea that any domain name associated with “TWG Tea” would belong to the entity to be set up. TWG Tea had clearly relied on these representations and expended time and money in building up the company’s brand name under, and with the use of, this Domain Name.

 

Thus TWG Tea had relied on Manoj’s representations to its detriment, and it would be unconscionable to now allow Manoj to resile from his representations and enforce his rights to the Domain Name.

Malicious falsehood

 

Manoj counterclaimed that seven statements made by Taha and Maranda, which did not mention him as one of TWG Tea’s founders, were false and published maliciously (“Statements”). These Statements included published interviews with Taha and Maranda in various magazines (including Nomss, Niche, Montecristo, Forbes and Vogue), and statements by Maranda at an event in 2017.

 

The Judge found that a few of the Statements, which in their natural and ordinary meaning would convey that Taha and Maranda were the only two co-founders of TWG Tea, were false and that Taha, Maranda and TWG Tea had acted with malice when they caused these Statements to be made (“False Statements”). She dismissed Manoj’s counterclaims in respect of the rest of the Statements.

 

However, as Manoj had failed to show that he had suffered any special damage as a result of the making of the False Statements, the Judge also dismissed his counterclaim for malicious falsehood in relation to the False Statements.

 

Comment

 

This case serves as a useful reminder for parties to take necessary steps to protect their brands and/or intellectual property rights, for example by having contracts governing such rights prepared.