Heroes for Sale Limited v Amber Velich [2010] NZDNC 506

[2010] - NZDNC - 506
Transferred ; Complainant's Rights ; Degree of Name Similarity ; Unfair Registration ; CMD

heroes.net.nz - Transferred

The complainant operates a comic book store in Auckland and registered the domain name <heroes4sale.co.nz> in 1997. In 2007, the domain name <heroesforsale.co.nz> was registered. They asserted that it had generated substantial reputation in New Zealand amongst the knowing public. The logo of the complainant prominently featured the word HEROES. The complainant alleged that it was commonly referred to by its customers.

The complainant has an ongoing application to register the trademark HEROES but it had yet to be registered. The domain name was registered in 2009 and it linked to a website that featured identical goods to the complainant. The website is the primary website of Company of Heroes Limited, which was run by the respondent and Ms Dunlop, who was hired by the complainant in its Palmerston North branch. The brand was sold to the respondent without consulting the complainant, who insisted that permission be granted by him before the words HEROES could be used.

The complainant alleged that it had obtained goodwill and reputation in the name HEROES FOR SALE and HEROES through long term use. The domain name registration was unfair as it was obtained as a blocking registration and it was likely to confuse, mislead, or deceive people.
The respondent alleged that the word HEROES did not belong specifically to the complainant, and that it was generic and descriptive.

The complainant argued that in relation to the particular goods/services it provided, the name is capable of distinguishing. The complainant alleged that it was not required to provide evidence of actual confusion.

For a mark or a name to have gained unregistered trademark rights, the requirement is that it is more likely than not that HEROES FOR SALE has become distinctive of the particular services that the complainant provided. The expert found that the complainant had met this criteria. The standard of proof is not the same as a trademark infringement proceeding. The standard required to be demonstrated by the Policy is not a high threshold test. The purpose of the Policy after all is to provide a cheap and quick means of resolving a dispute. It is sufficient if the expert is convinced that it is more likely than not that HEROES FORO SALE has become distinctive.

The expert held that the domain name was similar to the mark that the complainant had rights in. The deciding question is whether there is sufficient similarity between the marks and the domain name that will likely confuse users looking for a website owned by the complainant. The expert accepted the complainant's contention that HEROES was the prominent part of the mark and FOR SALE does not possess any meaning of its own. The expert found that there was enough evidence that the domain name would likely lead to users being confused, misled, or deceived into thinking that the domain name was connected to the complainant.

Link to NZLII Decision


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