Cine Craft Limited v Vixen [2007] NZDNC 244
[2007] - NZDNC - 244
Transferred ; Complainant's Rights ; Unfair Registration
private.co.nz - Transferred
The complainant is a subsidiary of Private Media Group, which is a global adult entertainment company that promotes its content to many countries, including New Zealand. There is evidence to support the substantive presence that the group has globally. The complainant at the time owned the trademark PRIVATE. The parties were in business relations at some point and the respondent had registered the domain name to protect its interest while it was the distributor for the complainant.
The complainant argued the domain name could lead to assumptions that the parties are related. There were also past incidents where the respondent had tried to change it's name to take advantage of the complainant's efforts and reputation. The respondent alleged that the director of the respondent had owned the domain name since 2004 and before that, the name was owned by the Private Sale Company. The company also owned the trademark PRIVATE E. Additionally, the director had issued a 'without prejudice' offer to the complainant.
PRIVATE is a registered trademark and found to be identical to the domain name. It is established that an agent or distributor - in this case, the respondent using the trademark of the principal complainant - does not acquire rights to the trademark. The goodwill that is generated in the name while the agent is acting as the distributor for the principal is also gained for the benefit of the distributor.
Once the distribution agreement between the parties terminates, the respondent ought to return the domain name at the request of the complainant, which is now the case.
The expert found the domain name is used to divert internet customers and it is an unfair registration.