National Manager, TeachNZ, Ministry of Education v David Powell [2007] NZDNC 156

[2007] - NZDNC -149
Complainant's Rights - Cancelled

The complainant is the New Zealand Ministry of Education and established the TEACHNZ unit, which focuses on education for young students. There is evidence that the complainant had been carrying on advertising and promotion with the brand name TEACHNZ. The complainant does not have a registered trademark - its claims are based on an unregistered mark in TEACHNZ. The mark itself has actually been registered by another individual for educational purposes. The complainant was in an on-going dispute over the registration.

The respondent is a teacher and the domain name was registered in 2001. The respondent was engaged with the complainant to refer the mistaken users back to the complainant. It was a voluntary position and he had stopped dealing with the misdirected enquiries. Since then, the domain name links to a website that generated linked to the other websites. There were correspondences regarding the sale of the domain name but it was ultimately not successful.

The complainant claims to have rights in TEACHNZ as the owner of the unregistered trademark. The respondent's registration is unfairly disruptive of the complainant's business and he was engaged in a regular pattern of registrations to domain names he had no rights to. The respondent claims that the complainant has not claimed an exclusive right to the term and didn't register the domain name for years. If the complainant had wanted to do so, it should have been done so. The respondent alleged that the domain name is worth a significant amount and could not be traded away without the equivalent amount, which the complainant did not offer.

The complainant did not register the TEACHNZ mark and was, in fact, registered by a third party. It was found, however, that the complainant did have significant presence in NZ, having used that name to advertise, etc. The expert found TEACHNZ is the most prominent part of the complainant's logo and is incorporated in the disputed domain name.

The expert examined the logos that both the complainant and the third party had been using. Aside from both featuring the word TEACHNZ prominently, there is little resemblence between the marks. 'Rights' under the policy has a low threshold and the expert believed that the complainant would have been able to assert its ownership of the mark through the Fair Trading Act, meeting the requirement.

Normally, the finding of unfair registration would lead to a transfer. However, the third party ownership of the registered trade mark right that the domain name is named after brings doubt as to whether the complainant would have better rights than the third party to the name. The appropriate action is to cancel the domain name instead.

Link to NZLII Decision

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