Domino's Pizza Enterprises Limited v Ltd [2014] NZDNC 932

[2014] - NZDNC - 932
Dismissed ; Complainant's Rights ; Degree of Name Similarity ; Unfair Registration ; CMD - Dismissed

The complainant runs a pizza business and the New Zealand activities began in 2003. Domino's intellectual property (one of the complainant) owned the word marks for DOMINO'S PIZZA and DOMINO'S. The usual domain name for the complainant is owned by Domino's Pizza Enterprises. The respondent is a company associated with internet and related services. It owned over 50 generic one-word domains. It registered the domain name in 2001 and had held the name for 13 years. There were two separate occasions of communication between the two parties. During the second time, the respondent demanded a huge sum for the transfer.

The complainant alleged that it was unfair for its registration and its use for common reasons such as being confusing to the users, blocking registration, and disruption. The respondent argued that by first claiming that the respondent had registered the domain name in 2001 before the first New Zealand store of the complainant was opened. The respondent had been using the domain name for commercial purposes and that the domain name is generic and descriptive, making it a fair use by the respondent.

DOMINO'S and DOMINO'S PIZZA are registered trade marks in New Zealand. DOMINO'S PIZZA is not proven to the Erxpert to be similar or identical to the domain name. The rest of the decision considered only the mark DOMINO'S. The expert did not think that unfair registration was made out as the evidence was not sufficient.

Link to NZLII Decision

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