First Direct Limited v Eva Romanowska [2009] NZDNC 420

ecocabs.co.nz - Dismissed

The complainant operates a taxi service and refers to some of its hybrid vehicles as Eco Cabs. These vehicles have been in service for a year. The complainant stated that its cabs are branded with the trademark ECO CABS on them. The registrant is a shareholder in Green Cabs Ltd and registered the domain name in 2007. The business also operated hybrid vehicles in the same location. The intention with the registration was that users would be able to search for Green Cabs, an eco-friendly branch of taxis.

The complainant argues the registration on the part of the respondent is unfair. They alleged that the respondent had not been using ECO CABS in its trading activities and was diverting users to enhance their own business. The respondent argues that when the domain name was registered, the complainant did not have an eco cab division and that they, in fact, referred to themselves as FIRST DIRECT ECO CABS, not just ECO CABS. The domain name was registered and used in good faith.

ECO CABS is a registered trademark of the complainant, but the mark that the complainant registered was a device mark, which means it cannot be identical to the domain name on its own. However, the expert found that the dominant parts of the registered mark ECO and CABS could be made out and that was sufficient as rights for the Policy's purpose. It was also found that the complainant could not rely on the first limb of the definition of unfair registration since they did not use ECO CABS until after the registration of the domain name. To prove under the second limb of the definition, it needs to be shown that the respondent had used the domain name in a way that unfairly took advantage of the complainant's rights.

When considering both paragraphs 5 and 6 of the Policy, the expert found that there is likely some level of confusion that would result from the respondent's use of the domain name, but at the same time, the respondent has been using the domain name in connection with genuine offering of goods. When both paragraphs could be applied, the expert ought to consider the weight of the evidence on both sides to decide whether it is an unfair registration. The expert was ultimately not convinced that the registration was unfair based on use of the domain name and the case was dismissed.

Link to NZLII Decision

http://www.nzlii.org/nz/cases/NZDNC/2009/420.html