My Tax Limited v The Web Company Ltd & MyTax Back NZ Ltd [2016] NZDNC 1169

[2016] - NZDNC - 1169
Dismissed ; Complainant's Rights - Dismissed - Rights

The primary target of the complainant is the second respondent. The second respondent is a tax refund service provider (the complainant provided a similar service) who had traded as "My Tax Back" since 2008. The disputed domain name was registered in 2009. The name was sold in 2016 to the second respondent.

The complainant asserted that it had rights in the phrase "my tax refund" and argued that the second respondent had chosen the name to cause confusion and abuse the goodwill the complainant generated. The respondent claimed that there is no goodwill in a generic name. There are already a lot of names in the market that are similar.

There are no registered rights for MY TAX REFUND. The expert found that the mark had not obtained the required reputation for a distinctive character to be generated. As such, an unregistered right is not generated.

There are multiple respondents in this case because the first respondent sold the name to the second respondent without the proper registration of the transfer. In cases where there is a delay between the sale agreement and the transfer of ownership (which is the case between the respondents here), the owner of the property becomes a trustee holding the property in trust for the purchaser. This is why there are two respondents in this case.

Link to NZLII Decision

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