The Country Channel Ltd v The Country Channel Limited [2009] NZDNC 334
[2009] - NZDNC - 334
Appealed and Dismissed ; Complainant's Rights ; Unfair Registration ; CMD
thecountrychannel.co.nz - Appealed and Dismissed
The parties are companies registered in the UK and New Zealand respectively, bearing the same name. The complainant is a UK internet television channel. The respondent also provided a television channel locally in NZ. The complainant became aware of the respondent's existence in 2008 when the respondent communicated with the complainant on the two companies sharing a name and wanted the respondent to not use the name since, as it claimed, the complainant had interests and reputation in NZ.
The complainant alleged that the respondent registered the domain name in 2008, fully aware of the complainant's existence. They also based their action on the trademark it owns in UK. The respondent argues it registered the trademark THE COUNTRY CHANNEL in NZ in 2008 and they had launched The Country Channel without knowledge of the complainant's existence until shortly before the channel's launch in NZ. Before becoming aware of the complainant, the respondent made proper preparation to use the domain name for a genuine offering of goods or services. The complainant provided evidence of confusion of users over the two channels.
There is registration of THE COUNTRY CHANNEL from the UK. Since this was not a case where the respondent had obtained a domain name for the purpose of blocking registration, the registration in the UK does not create rights. However, it does create a basis for potential reputation through use. There is sufficient evidence for the expert to find that there are rights for the complainant in the mark and it was found to be identical to the domain name.
While there is evidence to support that there is unfair registration as the domain name would likely lead to confusion, the expert states that if the complainant can make it out that the respondent, before being aware of the complainant's cause of complaint, was making preparations for genuine offering of goods or services the registration was not unfair.
The expert found that during the long period of time when the respondent was preparing to use the domain name, it can be inferred that they were aware of the complainant and the mark. The expert found that someone with that knowledge should have been alerted to the issue of the likely confusion and there was unfair registration.