Yellow Holdings Limited v Eurobelt Limited [2015] NZDNC 1116

yellow.net.nz - Dismissed

The business has maintained the Yellow Pages business directories for over 50 years. When the complainant obtained the business, it also obtained rights to use the trade marks related. The respondent obtained the domain name in 1998 and was incorporated in 1991. There was a previous proceeding between the parties where the complainant, as the plaintiff, was granted a permanent injunction against the Respondent from using the description 'Yellow Pages' or 'Yellow Web Pages' in relation to business directory on the internet.

The current dispute comes from when the complainant tried to register the main name <yellow.nz> but failed to do so because it was registered already. The complainant offered to buy the domain name from the respondent, after asserting that the respondent could not use the domain name without infringing the trademark or the Fair Trading Act. The respondent demanded a much larger sum.

The complainant claims it had gained rights through use and also through trade mark registration of the term YELLOW, giving it exclusive rights for the service it provides. The complainant also asserted that the domain name was unfairly registered for reasons such as confusingly similar, non-usage of the domain name, unfairly disrupting the complainant's business, and so on.
There was no response from the respondent.

YELLOW PAGES and YELLOW PAGES BUSINESS are registered trademarks but YELLOW is not. The expert found there is a common law right in the words YELLOW PAGES but the expert found that the complainant had not managed to prove that it had used YELLOW for a significant period to a significant degree to gain an unregistered right.

The expert found the trade mark owned is not a mark similar or identical to the word 'yellow', so there are no rights at all. Since the domain name consists of 'yellow' only, and the complainant cannot claim to have rights to it, the case is dismissed on this ground.

For the sake of completion, the expert continued to decide whether it would be an unfair registration had the domain name been identical or similar. Firstly, failure to use the domain name is not in itself evidence of unfair registration (para 5.2). Secondly, there is a limitation imposed that prevents the expert from considering evidence that acts or omissions from 3 years before the date of the complaint. However, the expert can consider the fact that there is a permanent injunction against the respondent to stop them from infringing trade marks through the use of the domain name for the specified categories.

The respondent did not acquire the domain name for the purposes of selling, renting, or transferring. Nor was it a blocking registration. Since it had been registered for over 15 years, the expert is not satisfied that the domain name will be used in a way that will lead to confusion, unless there is positive evidence that the respondent will use the trade name. However, in the email correspondence, it did seem as if the respondent intended to extort a large sum of money from the complainant to mitigate the sum used in the previous litigation. Nonetheless, since the complainant did not have the rights in the name or the mark identical or similar to the domain name, the case is dismissed.

Link to NZLII Decision

http://www.nzlii.org/cgi-bin/sinodisp/nz/cases/NZDNC/2015/1116.html?query=NZDNC%201116