Eat My Lunch Limited v Chris AC [2017] NZDNC 1238

[2017] - NZDNC - 1238
Dismissed ; Complainant's Rights ; Unfair Registration / - Dismissed

The complainant is a New Zealand registered company that operates a catering service, providing individual meals to order. Before the complaint, the director of the complainant was the owner of the trade marks BUY ONE. GIVE ONE and a visual mark including the words EAT MY LUNCH. These marks were transferred to the company after the filing of the complaint. The complainant proceeded to expand into providing further dinner meals to customers. The phrase "eat my dinner" was not used in the article and the respondent registered the domain name containing that phrase subsequently. There is no evidence that the respondent used those domain names in connection with any business.

The respondent was also in the catering business and had been apparently operating for around 25 years. The complainant actively approached the respondent and stated that they wished to purchase the domain name, stating in the text that the respondent had infringed their trade mark. The respondent initially refused but subsequently, after the complaint was lodged, contacted the complainant to discuss the sale of the domain name. The two parties could not agree on the price of the two domain names, with the respondent wanting a total of $6,000 for the two of them and the complainant only willing to pay $4,000.

The complainant submitted that they have the registered and unregistered rights to both EAT MY LUNCH and EAT MY DINNER. They submit that the domain name was confusingly similar to EAT MY LUNCH at the time of the registration. They claimed that their business Eat My Lunch gave them unregistered rights to EAT MY DINNER for being in a similar category. The complainant also relied on the registration of the mark EAT MY DINNER (which was after the domain names were registered). They then claimed unfair registration for several common reasons, such as:

  • possible confusion,
  • lack of genuine offering of goods or service through the domain name and,
  • the sale price was significantly higher than the out-of-pocket cost of registration.

    The expert found that there were enforceable trade mark rights since both EAT MY LUNCH and EAT MY DINNER were registered. However, the trade mark registration for the latter was not gained until after the domain name was registered. However, Eat My Dinner was not used in any business and there was only a mention of the name in reference to a plan to expand. That was found insufficient. The trade mark EAT MY LUNCH was not sufficient to establish unregistered rights in EAT MY DINNER.

    The expert was not satisfied that there is sufficient evidence of Unfair Registration. There is no evidence of the domain name being registered for the purpose of selling it to the complainant. The mere fact that the price the complainant wants is greater than the out-of-pocket cost of registration does not in itself mean that it is an unfair registration. There was also no evidence that it is a blocking registration as there was no evidence that the registration was done to stop the complainant's registration. The respondent did not know of the complainant's plans to use the name EAT MY DINNER. Similarly, there is no evidence that the registration is intended to unfairly disrupt business. The respondent is not using the domain name, since offering for sale does not amount to use. Failure to use the domain name is only a factor to consider when deciding if there is unfair registration. It is not conclusive.

Link to NZLII Decision

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