Margrain Vineyards Ltd v Interlace Technology [2019] NZDNC 1334

[2019] - NZDNC - 1334
Transferred ; Complainant's Rights ; Unfair Registration - Transferred

Daryl Margrain operated a vineyard called "Margrain Vineyard" and the respondent provided IT services in Martinborough (where Margrain is also located). Margrain was a customer of the respondent. Margrain asked in 1999 that the respondent would register the domain name for him. The respondent did so but registered its own name as the registrant. The vineyard was not incorporated until some time after the domain name registration. The business continued to use the domain name and registered its name in 2018 as a trademark. When the company asked the respondent to make changes to the domain, no responses to them were made. The complainant asserted that the respondent had no rights to the domain name.

The complainant only claimed that the respondent had no rights in the domain name and aside from repeating the history of its relationship with the respondent, it does not assert that the registration was unfair. The respondent made no response.

MARGRAIN VINEYARDS is a registered trade mark for goods and services related to wine and it has also built up reputation as a vineyard. The mark was found to be identical to the domain name.
According to paragraph 3 of the Policy, the respondent must have either taken unfair advantage of the complainant's rights at the time of registration or used the domain name in such a manner. However, since the complainant was not registered to be a company until 2000, it did not exist at the time of registration and the respondent never used the domain name in any way. The complainant's complaint is chiefly with their failure to correct an error.

The expert noted that the case fits with the scenario set out by para 5.15. It was intended that the complainant would be the Registrant. It would coincide with the purpose of the Policy to treat the registration as an unfair registration and rectify the mistake. Regarding the fact that the complainant did not exist at the time of the registration, the expert inferred that the original owner has transferred the rights over to the complainant.

Link to NZLII Decision

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