New Zealand Bio-recording Network Trust v Shane Orchard [2018] NZDNC 1281

[2018] - NZDNC - 1280
Dismissed ; Complainant's Rights / / - Dismissed

The complainant launched as New Zealand's first online repository of natural history observations. It registered as a charity in 2012.

When deciding domain names, the respondent, as one of the trustees, informed the other trustees of the complainant that he owned the domain names but upon its upcoming expiry, the complainant is free to take over the names. On behalf of the complainant, Mr. Sullivan emailed the respondent to try to get him to renew his ownership of the names and transfer them to the complainant later.

While the names are renewed, it was not transferred to the complainant and the costs of maintaining the site remained with the respondent. A few years later, noting that he is still the owner of the domain names and concerned with the way the charity is being run, the respondent proposed that unless reassurance that things will improve is given to him, he will hold onto the names and wants permission to use them for other purposes. The negotiation broke down and other respondent wished to use the names for other entities.

The complainant argues the registration of the domain name is unfair because the respondent was a party to a resolution that would see him transfer the domain name to the complainant and he would be reimbursed for the registration fee. Factually, it is unclear whether the sum was ever paid out. However, the complainant insisted that the respondent failed to perform his side of the bargain. The complainant claimed that it had gained rights through significant branding.

There are no registered or unregistered trademark rights. The expert found no abusive activity that met paragraph 5 of the Policy. There was no mark concerned or any rights. Referring to a decision from the UK, David Munro v Inc (2007) (DRS 04632), which was subsequently followed in NZ in DRS 646, the question is whether the Expert can decide if there is a contractual dispute. In the UK case, it was decided that a contractual dispute falls outside of what Nominet (the UK equivalent of Domain Name Commission) was given the power to decide on. The expert agreed that the contractual dispute was best left for the Courts to decide and the case was dismissed.

Link to NZLII Decision

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