Apollo Marketing v Apollo Marketing and Advertising [2008] NZDNC 250

apollomarketing.co.nz - Transferred

The complainant is a marketing agency that operates in both Australia and New Zealand. They do not rely on trade mark rights but instead on common law rights on its substantial use of APOLLO MARKETING. The respondent registered the domain name in 2007 and is in the business of marketing for sex workers and the industry. The respondent alleged that it was not aware of anyone else using the name and that there was no benefit to take from using the same name as the complainant.

The complainant became aware of the domain name in late 2007 when notified by its clients and was concerned with the explicit content hosted on the domain name. At the time of the decision, the expert had visited the domain name to find a website under construction while explicitly stating that it was not affiliated with the complainant.

The complainant claimed that it had rights to the name APOLLO MARKETING and the respondent's use of the domain name would lead to confusion in the market and damage the reputation of the complainant, making it an unfair reputation. The respondent argues it was not in the same business as the complainant and had an appropriate disclaimer on the site. Again, they emphasised the point that the respondent drew no benefit from being associated with the complainant.

The complainant had no registered or common law trade mark rights. It was in a situation where it was entitled to bring a claim under the Fair Trading Act 1986 against the respondent's misleading or deceptive use of the name. This right was found to be sufficient under the Policy. The expert held that the domain name was identical to the name, APOLLO MARKETING, that the complainant had rights in.

The expert found that it would be inevitable that some users would be confused. The disclaimer on the respondent's site does not lead to any reliable way to avoid the likelihood of confusion. The fact that the user will still land on the site is not affected by whether there is a sign afterward to tell them that this is not the site that they intended to land on.

The explicit content hosted at the domain name is also factored in the finding that the domain name registration was unfair as it would ultimately damage the reputation of the complainant.

Link to NZLII Decision

http://www.nzlii.org/nz/cases/NZDNC/2008/250.html