Child Cancer Foundation Inc. v Garth Piesse [2013] NZDNC 897
[2013] - NZDNC - 897
Transferred ; Complainant's Rights
childcancer.co.nz - Transferred, overturned and dismissed on appeal - Rights
The domain name was registered by the respondent in 2009. The complainant is a registered charity that has operated since 1978. At the initial examination, the expert held that the evidence supported that the term CHILD CANCER was not wholly descriptive due to the extensive and on-going use of the term in New Zealand and its unique presence in NZ being recognised by the expert. The respondent, now the appellant, lodged an appeal. In a DNC appeal, the Panel will have to reconsider the entire matter fully and that may include procedural matter.
The expert from the original decision was a partner in Baldwins (the firm representing C) until 2000 and the complainant alleged that that impacted the impartiality of the expert. At the initial decision, complainant claimed that the mark CHILD CANCER was not generic in NZ and had been used extensively to the point where the reputation has generated a reputation. The complainant has registered several trade marks that contained the name CHILD CANCER. The complainant also asserted that the registration by the respondent was detrimental to the rights of complainant and that it would likely confuse or mislead users. The complainant also cited other common reasons as reasons for unfair registration.
On appeal, the respondent claimed that the finding of extensive and on-going use of the term CHILD CANCER was not sufficiently supported by evidence and that CHILD CANCER had never been featured along without FOUNDATION. The complainant had a strong reputation in NZ. The complainant stated that the respondent had failed to provide evidence to support their claim that other entities have used the term "child cancer" so extensively that complainant can't claim distinctiveness.
The complainant is the owner of trade marks that contains the name concerned, but CHILD CANCER is never registered on its own (but they are emphasised in the registered marks). The Panel agreed that complainant had unregistered rights in CHILD CANCER FOUNDATION. However, CHILD CANCER on its own did not gain the necessary distinctiveness: it is a general term for an illness suffered by children and there are other organisations in NZ that use the term.
The complainant relied on the rights obtained through CHILD CANCER FOUNDATION to support a claim of rights in CHILD CANCER. Even if it was found to be a trade mark (which it was not), the complainant can't stop another person from practicing honestly and using a descriptive term for its descriptive purpose.
The test is that either at the time of the registration, the respondent took unfair advantage of the complainant's rights; or the use of the domain name has been unfairly detrimental to the complainant's rights.
The Panel found that the respondent was not aware of the complainant at the time of registration and the fact that the phrase CHILD CANCER had been in use before the registration as well meant that the domain name was not unfairly registered. The panel also found that the subsequent use of the domain name was not unfair either.