New Zealand Detector Dog Services Limited v Wildlife Contractors Ltd [2016] NZDNC 1183

[2016] - NZDNC - 1183
Transferred ; Complainant's Rights ; Degree of Name Similarity ; Unfair Registration - Transferred

The complainant offers canine detection services and had registered a service mark including the name and a paw icon. The respondent is a New Zealand company whose director is also the director of another company that is the only competitor of the complainant in New Zealand. The two parties entered into a joint venture in 2010 where the complainant offered services under the Night Zoo (NZ) Detector Dogs mark. The venture has expired since then. The respondent registered the domain names between 2014 and 2015.

The complainant has argued that the domain names are identical/similar and the domain names were registered after the venture ended on a bad note. The disputed registrations are alleged to be blocking registration against the complainant's rights with the intention to disrupt the complainant's business.
The respondent claimed that the registration is for their promotion of the brand Night Zoo (NZ) Detector Dogs. They also claimed that the complainant had missed out on the Preferential Registration Eligibility (PRE) period for the .nz domain (only available to them because they registered the, which expired in 2015.
The complainant's counter-response was that they were not aware of the PRE but maintained that failure to pursue it would not bar a complaint. Additionally, there was no evidence of the Night Zoo brand.

NZ DETECTOR DOGS is a registered trade mark and is identical to the domain name. The expert found that there was an unfair registration. The expert also noted that failure to register the names within the PRE is irrelevant and is not a bar to a complaint being filed for the transfer of registration.

Link to NZLII Decision

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