Pet Mania v Petmania [2007] NZDNC 223

[2007] - NZDNC - 223
Transferred ; Complainant's Rights ; Degree of Name Similarity ; CMD ; Unfair Registration - Transferred

The complainant purchased an old business that operated under the name 'Pet Mania', and continued to use the same name. The respondent registered the disputed domain name in 2003 and had managed online sale of pets and associated products on the site. Since the respondent had registered the domain name, the complainant had to operate under another domain name while keeping Pet Mania as its trading name.

The complainant argues for a transfer since it is a well known pet stores on the North Shore and that the respondent was aware of the reputation of the complainant when it registered the domain name, making the registration an unfair registration. No resonse was filed by the respondent.

PET MANIA is not registered but the expert accepted that the new business continued to carry the same reputation from the old business that it had takeover. This meant that the common law rights were intact. The expert found that the domain name and PET MANIA were similar as they were the same two words which was run into one. The expert determined that a space between two words would make them identical. Practically, it would not make a differnece since the two categories will receive the same treatment nonetheless.

Since the domain name was being used in the same line of business that the complainant was in the same geographical location, users are likely to be confused. The respondent was likely aware of the complainant's reputation when it made the registration. Considering these factors, the expert found that the registration was indeed unfair.

Link to NZLII Decision

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