Western Bay of Plenty Tourism & Visitors Trust v Wayland Mark Warner [2015] NZDNC 1088
[2015] - NZDNC - 1088
Dismissed ; Complainant's Rights
bayofplentytourism.co.nz / tourismbayofplenty.co.nz - Dismissed - Rights
The complainant is a Regional Tourism Organisation for the Bay of Plenty. It is also the owner of two trade marks, one is a visual logo and the other is "Tourism Bay of Plenty - Plenty for Everyone". The complainant also had another expired trade mark that did include the words BAY OF PLENTY. The complainant also asserted that it had unregistered rights in TOURISM BAY OF PLENTY and BAY OF PLENTY TOURISM.
The respondent registered the domain name in 2012 and also a logo trade mark. There is evidence that the respondent intended to use the domain names to assist in its tourism business. The respondent initiated communication with the complainant and suggested a joint effort to benefit both parties. The complainant did not respond to those communications but instead had their lawyer write to the respondent to express their displeasure with the registrations that respondent had made. In response, the respondent argued that there was no misrepresentation but did change the names that the complainant complained about and offered to park the domain names from use or to sell it to the complainant. By the time the complainant's lawyers got back to the respondent, one of the domain names had registered and the respondent offered to sell tourismbayofplenty.co.nz to the complainant for $250. The complainant never responded.
The complainant demanded the domain name to be transferred from the respondent, asserting both registered and unregistered trade mark rights - alleging that the respondent's registration is a blocking registration, likely to mislead, and the respondent partook in a pattern of registering famous trade marks. The respondent claimed that complainant was trying to monopolise descriptive generic terms without any other identifying factor. The respondent also claimed that the complainant was dishonest in its pleading and trying to discredit respondent. The complainant indicated that it was ready to buy the domain names.
There are no registered or unregistered trade mark rights on BAY OF PLENTY TOURISM. In both instances, the expert found that the terms are extremely descriptive and no exclusive rights can usually be found. There is no evidence that the marks had been used on its own, without being a part of a logo or other materials. Nor was there evidence of the scale and duration of the use of the mark.
For completeness, the expert considered this limb of the test: she could not find evidence of unfair registration. There was evidence of genuine intention to use the domain name to meet the requirement of fair use. The expert also considered whether the terms are wholly descriptive. The mark was found to be "at the 'purely descriptive' extreme end". It would be difficult to conceive of an alternative descriptive term to describe the line of business in the location and the complainant simply did not show that there were secondary meanings acquired.