Victoria University of Wellington v Fortune Sources Group Limited [2018] NZDC 1327

wellington.ac.nz - Dismissed

The complainant was considering changing its name in 2018 and had applied for the mark UNIVERSITY OF WELLINGTON. The complainant had contacted the respondent to try to obtain the domain name but no sale was agreed to. The disputed domain name was registered in 2012. The second-level domain name ".ac.nz" is unmoderated but the complainant stated that it was intended for tertiary organisations such as itself. At this point, the name change for the university is unconfirmed.

The complainant claims the ".ac.nz" second level domain is meant for tertiary education institutes, as understood by the New Zealand public. The registration of the disputed domain name is unfair since the respondent has no connection with academia. There seems to be also no use for the name. No response was submitted.

UNIVERSITY OF WELLINGTON/VICTORIA UNIVERSITY OF WELLINGTON was only a trade mark application in the process which is not enforceable under NZ law. Both marks were found to support a claim of unregistered, however, the claim over Wellington is weak since it is a geographical description. The expert found the domain name to be similar to VICTORIA UNIVERSITY OF WELLINGTON but the similarity was perceived to be weak as Wellington is a geographical name.

The expert held this was not an unfair registration. Firstly, there was no complaint about the registration of the domain name. Secondly, when considering whether the use of the domain name is unfair to the complainant's rights, the expert found that there was no evidence of use and there is no suggestion that the domain name is likely to be used in a way that would take unfair advantage of the complainant's rights.

The secondary level domain space is unmoderated, so despite the claim of an understanding that ".ac.nz" would refer to academia, there is no policy or rule to enforce the claim. Thus, there is no restriction as to who applies for it. The complainant also failed to prove that it is more likely than not that there would be future use of the domain name that would take unfair advantage of the complainant's rights.

Link to NZLII Decision

http://www.nzlii.org/cgi-bin/sinodisp/nz/cases/NZDNC/2018/1327.html?query=NZDNC%201327