Regilait SAS v Dimitri Pantelo [2015] NZDNC 1102
[2015] - NZDNC - 1102
Transferred ; Complainant's Rights ; Unfair Registration
regilait.co.nz - Transferred
The complainant is a French company specialising in dairy products and milk powder. The mark REGILAIT has been used in New Zealand since 2001. The domain name that the complainant uses, <regilait.com>, was registered in 1999. The application for trade mark was made but the mark was not registered at the time of the decision. The respondent is the owner of the domain name, which was registered in 2014.
The complainant asserted that it had rights in the mark REGILAIT based on usage and reputation. The complainant argued that the registration was unfair because it was confusingly similar and the respondent had no rights or interest in the domain name. The complainant further suggested that the registration would divert trade from the complainant and was disruptive. The complainant also believed that the respondent committed the tort of passing off under the Fair Trading Act 1986 on grounds that members of the public are likely to believe that the respondent has been given permission by the complainant to use the mark in NZ.
The respondent contested that as an importer of products including milk powder, he approached the complainant to organise reselling the products in NZ, which he claimed went on until 2004. He claimed that the complainant did not have a direct presence in NZ since their products were mainly sold through other parties. The respondent claimed that the complainant had opportunities to register its trade mark and now that they have gone around to try to claim rights against the respondent, who had generated awareness of the complainant in the first place. They further claimed that it was not a diversion of sales, since the complainant did not have a presence in NZ. The respondent has also amended the content on the domain name to fit the Dispute Resolution Service Policy.
The complainant claimed that their relations with the respondent ended due to the belief that the respondent had acted in bad faith. All rights and goodwill in relation to the mark, as the complainant argued, had flown back to the complainant since the respondent was never granted any rights in respect to the mark. The complainant stated that when the respondent changed the site to comply with the Dispute Resolution Service Policy, it is an indication that the respondent had been using the domain name unfairly.
The complainant's application to register trade mark REGILAIT had been accepted but the mark was not yet registered at the time of the decision. The expert found that there is an unregistered right associated with the mark based on the reputation built up as the products are sold in NZ since 2001. The complainant did not need to be represented in NZ directly.
Firstly, the expert found that the respondent was aware of the complainant's rights due to pre-existing relationship. The expert found that there was unfair registration as the name was registered to take unfair advantage of the complainant's rights as the registration was both a blocking registration and also a diverting registration as it would redirect trade from the complainant to competitors.
On the respondent's claim on fair use, the expert asserted that changing the content on the domain name subsequent to the complaint being lodged is not sufficient to avoid a finding of unfair registration. However, the Expert still continued to consider the claim.
When the respondent changed the content of the site, it became a tribute site to the respondent. The respondent tried to argue that it fell under paragraph 6.2 (fair use might include sites for tribute or criticism purposes). Usually, when making the tribute or criticism, the site is related to the complainant, which is not the case here (the site is claimed to be a tribute to the respondent).
Overview Version 2 from Nominet Experts: It depends on the nature of the domain name - domain names that are more obvious with their criticism or tribute are more likely to be accepted. It will take an exceptional circumstance for the use of an identical name to be found fair.
The expert then found that the domain name was intended to be recognised as the name of the complainant's goods. The respondent was effectively pretending to be the complainant. Even if it was a tribute site, the respondent had no right to use the domain name to promote a tribute to himself where there is no legitimate right.