Lenovo (Beijing) Limited v Angela Huang [2014] NZDNC 938

[2014] - NZDNC - 938
Dismissed ; Unfair Registration

lenovo.co.nz - Dismissed

The complainant is a tech company based in Beijing and it is wholly owned by the Lenovo Group Ltd. The complainant's presence in New Zealand is generally through a subsidiary of the group in New Zealand, incorporated in 2005. Until April 2013, it traded under its original name "Legend". The decision to change the name was made in 2002. In that same year, the complainant registered the domain name <www.lenovo.com>. The disputed domain name was registered in May 2004.

The complainant was relying on its trade mark registration made between 2003-2004. Evidence showed that the earliest press release using the LENOVO mark was in November 2004. The complainant alleged that it had a clear intention to use that name according to section 32 of the Trade Marks Act 2002. The complainant made the case that the respondent did not have a legitimate interest in the complainant's trademark and that LENOVO was a brand new word and the respondent must have known of its significance when registering the domain name.

The complainant alleged that the respondent had registered the domain name to sell the name back to the complainant for a large sum. It also functioned as a blocking registration and it would divert business from the complainant. The complainant claimed that the respondent also had a pattern of registration (where she apparently registered 69 domain names since 2003). Lastly, the complainant contended that the respondent had not used the domain name in any way that would indicate a genuine offering of goods and services and the respondent had no legitimate interest in the domain name.

The respondent replied that the registration was not unfair, stating that the registration was made to reflect her personal game character's name. The registration of the name was merely done to acquire an email hosting service. The domain name was registered for personal use and sentimental value. She alleged that she was not the same person that the complainant was referring to who had 69 registrations. She simply had the same name. She claimed that the registration was not blocking and in the years it had been registered, had never diverted traffic from the complainant. The claim of potential damage was speculative at best; there is no evidence that she would use it prejudicial to the complainant in the future.

LENOVO is a registered trademark and the expert found for enforceable rights through use as well. It is identical to the domain name.

The expert was not satisfied that it was an unfair registration. The respondent was careful not to waive the protection of paragraph 5.4, so the expert could not decide whether at the time of registration, the respondent was aware of the complainant's rights in LENOVO. However, even if the protection was waived, the complaint will still fail. The complainant could not squarely establish the respondent was the same as the Angela Huant who had registered 69 domain names and the respondent's denial made it impossible for the expert to find for unfair registration. The conflict in evidence can only be resolved in cross-examination in court. Regarding potential unfair use of the domain name, the expert was not provided with evidence or claim of use that took unfair advantage of the complainant's rights. Thus, this ground failed as well.

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