Retail Distribution Limited v Sarah Perkins [2008] NZDNC 236
[2008] - NZDNC - 236
Transferred; Complainant's Rights ; Degree of Name Similarity ; Unfair Registration
adman.co.nz - Transferred
The complainant purchased the business of GN Network and ASOTV is the subsidiary of that business. ASOTV is the owner of two visual trademarks, one of which features the phrase ADMAN AS SEEN ON TV in along with a cartoon character that had a TV for a head and a stickman body. These marks were registered in 2005. The respondent and her husband are owners of Evil Genius Limited (EGL) who is a franchisee of the complainant until recently before the case. The franchise agreement was terminated in 2007 and the complainant requested that the respondent transferred over the domain name but when negotiation fell through, the respondent refused to transfer.
The name ADMAN is a principal trade name and branding. It did not object to the respondent obtaining the domain name in 2005 initially because it was though to be an extension of the respondent's franchising activities. The registration was unfair because it would cause confusion to the consumers. The respondent argued the complainant did not have a trademark for ADMAN, the word itself and so the domain name is neither identical nor similar to the trademark.
ADMAN AS SEEN ON TV is a registered trademark. When considering whether the domain name is similar to the registered trademark, it is necessary to consider how they sound and look, the services that the mark would be applied to and whether the consumers are likely to be deceived and/or confused. In the expert's view, since the word ADMAN is so prominent in the trademark and other phrases and visual cues are there as support for the trademark, ignoring the ".co.nz", the dominant portion of the trademark is identical to the domain name.
The additional parts of the trademark simply do not distinguish the trademark from the domain name. Consumers are likely to see the association and be convinced that they are related.
Since the first limb of the definition of unfair registration does not apply, the expert considered whether the domain name has been used in a way that is detrimental to the rights of the complainant. Since the domain name was first obtained for the sake of the franchising, it would be unfair to allow the continued retention of the domain name in a business similar to that of the complainant, making the registration unfair.