Toshiba (Australia) Pty Ltd v Leigh Brotherston [2009] NZDNC 426
[2009] - NZDNC - 426
Transferred ; Complainant's Rights, Degree of Name Similarity, Unfair Registration ; CMD
mytoshiba.co.nz - Transferred
The complainant is a part of a multinational company that specialises in manufacturing electronic goods. They are the authorised user of the trade mark TOSHIBA in New Zealand. In NZ, the complainant had registered the domain name <www.toshiba.co.nz>. They are situated mainly in Australia and it registered the domain name <www.mytoshiba.com.au> in Australia.
The respondent is the CEO of MyToys Ltd that conducted an online business in selling branded goods including the complainant's goods. In 2005, the respondent registered the disputed domain name, which was used to link to the respondent's website.
The complainant asserts that the respondent was unfairly using the disputed domain names to divert potential customers. It also alleged that the respondent was engaged in a pattern of registering well-known names or trade marks.
TOSHIBA is a registered trade mark in NZ by the complainant and was found to be identical to the domain name. The expert found the evidence supported the finding that the domain name is likely to confuse, mislead, or deceive. The expert also finds that the respondent has been engaged in a pattern of registering well-known names that the respondent had no rights to. For example, the domain names <myibm.co.nz> , <myphilips.co.nz> and <mylenovo.co.nz> bring to mind well-known brands such as IBM, PHILIPS and LENOVO.