Salamander Enterprises Ltd v Michael Sables [2017] NZDNC 1202

furniturebydesign.nz - Dismissed

The complainant is the owner of Salamander, the furniture wholesaler, and also personally the owner of the registered trade mark FURNITURE BY DESIGN. The respondent is the owner of another furniture business. The two parties are known to one another and had dealings before in the past. The respondent had acquired some domain names for the sake of brand protection, to avoid confusion (part of the reason is that the respondent's trading name ByDezign contains an intentionally misspelled component).

The respondent registered the domain name furniturebydesign.co.nz on the same day that the complainant had gone to the respondent to inform them of their new webpage. The respondent stated that the complainant might have been negligent in not realising that they had an interest in the domain name or had been wanting to take advantage of their goodwill. There is evidence that the respondent has been referred to by the short form FB and FbD.

The complainant's claim invoked para 4.1.1, that the registration was unfair and demanded a transfer of the domain name. The complainant relied on the trade mark registration for FUNITURE BY DESIGN. The expert interpreted the complaint to be a claim that the respondent had registered the domain name to unfairly disrupt the business of the complainant and likely to confuse others.

The respondent argued that the registration was not done to benefit off the complainant's reputation/goodwill (which the respondent argued was insignificant). The respondent argued that the registration was done to protect brand awareness. The respondent counterclaimed that the complainant was trying to piggyback off their brand with numerous references to FbD (which is what R has been referred to). Paragraph 6.1.1.(b) was referred to to support their claim that the registration was not unfair as the name was something that the respondent was commonly known by.

The complainant FURNITURE BY DESIGN is a registered trade mark and was similar to the domain name. The respondent believed that the domain name was almost identical to the respondent's trade mark and the complainant's use of their mark will cause confusion and diversion. The respondent has been legitimately connected to the mark "bydezignfurniture" for some years. There is also genuine offering of goods as the website used by the respondent does operate commercially. 

The expert found that there was no evidence of unfair registration as the complainant claimed. The confusion that would arise comes from the fact that the complainant had decided to register a trade mark that is similar to the respondent's business. There is no evidence of unfair registration.

Link to NZLII Decision

http://www.nzlii.org/cgi-bin/sinodisp/nz/cases/NZDNC/2017/1202.html?query=NZDNC%201202