Heat Force Ltd v Plato Creative Design [2014] NZDNC 942

heatforce.co.nz - Transferred

The complainant was in the business of providing heat pumps and insulation. The complainant registered the trade mark HEAT FORCE and its many variations on 11 July 2013. The complainant attempted to have the domain name registered but the attempt on 10 January 2013 failed because the domain name was registered on the same day by the respondent.

The complainant asserted that there was a previous relationship between the directors of the complainant and the respondent, namely that the directors of the complainant were made redundant by HPAC, whose director was also a director of the Respondent, near the end of 2012. The complainant alleged that it had notified the respondent of their intention to enter into business as the complainant. The complainant claimed that the registration was unfair since the respondent did not have a legitimate interest in the domain name and the registration was done to disrupt business and provide unfair leverage for the respondent if disputes ever occur.

The respondent argued that the prior relationship had nothing to do with the registration. It was a case of businesses claiming rights to the same domain name. Contrary to the complainant's claim, the respondent argued that HEAT FORCE was an intended name for a new product by HPAC and that one of the directors of the complainant was likely involved in that discussion. They counter-claimed that the complainant intended to benefit from the reputation of HPAC in claiming the name of their intended new product. The respondent stated that it intended to give up on the domain name if they decided that the product will not be launched with that name.

The complainant denied that during their employment at HPAC, either of them was involved in the discussion of new products that would use the name HEAT FORCE. They argued that there was sufficient research conducted beforehand and there was no evidence that the name was used already, especially so by the respondent.

HEATFORCE is a registered trade mark and is similar to the domain name. On the topic of unfair registration, the expert noted that at the time when the domain name was registered, the complainant's trade mark acquisition was still in its application stage, which is insufficient to grant the complainant a right of the word. These rights only came into existence after the domain name registration. Despite the registration resembling a blocking registration, since the complainant did not have the rights, it was not an unfair registration.

For the complainant to succeed, it should rely on the domain name being confusing and potentially misleading/deceiving under paragraph 5.1.2, which does not require the right to be in existence at the time of the registration. The expert found for the complainant and ordered a transfer.
The expert took note that a renewal of registration is not the same as the initial registration and that is what the policy intends when specifying "at the time of registration". Similarly, intentions formed after the registration would not be considered if the requirement is at the time of registration.

Link to NZLII Decision

http://www.nzlii.org/cgi-bin/sinodisp/nz/cases/NZDNC/2014/942.html?query=NZDNC%20942