Fleet & Partners Ltd v Fleet Partners Pty Ltd [2006] NZDNC 149
[2006] - NZDNC -149
Dismissed ; Complainant's Rights ; Degree of Name Similarity ; Unfair Registration ; CMD
fleetpartnersnz.co.nz - Dismissed - Rights
The complainant was incorporated in New Zealand in 1974 and has traded under the current name since 1984. The complainant registered the logo representation of the word as a trade mark and has registered and used the domain name.
The respondent acquire a business' division known as "FleetPartners", which is what it was known since 1998. The acquisition occurred in 2006. The domain name is used by the respondent to provide information and carries on legitimate business activities. However, there is significant evidence of confusion since 2006 by users who would send emails to one party while intending to communicate with the other. These businesses were in two separate industries.
The complainant complained of diversion of brand and confusion in the market caused by the respondent, who was not operating in New Zealand until 2006. Neither the respondent nor its predecessor had registered their company name in NZ, not to mention anything remotely similar to a trade mark. The complainant had shown evidence of license fees paid for its own domain name, the amount invested into its brand, and the upgraded website that it is planning on launching. These support the complainant's claim that it has rights related to the domain name.
The respondent claims that the confusion which arose with the customers is mainly with mistypes and misreads, rather than thinking that the complainant and the respondent were associated.
The expert found the complainant had registered trade mark rights in FLEET & PARTNERS and common law rights generated by the long use of the name, leading to the reputation associated with the name, and the name was similar.
The expert, however, found no evidence that the respondent registered the domain name for the purposes of selling, renting, or as a blocking registration. Nor was there evidence that the respondent used the domain name in a way that would confuse the users into thinking that the complainant and the respondent were associated.
The expert considered factors outside of the non-exhaustive list of paragraph 5.1 of the Policy. However, when considering the matter under the Trade Marks Act, the expert concluded that there was nothing under that Act that would find that the Respondent had unfairly registered the name.
On the question of whether the registration of the domain name took unfair advantage of the complainant's rights, the expert also found that there was no unfair advantage here when no evidence of diversion of business from the complainant to the respondent. Users were aware that the complainant and the respondent were not connected or associated. The case was dismissed.