QUIX New Zealand Limited v Hinge Services Central Ltd [2012] NZDNC 789

[2012] - NZDNC - 789
Dismissed - Rights ; Complainant's Rights

quix.co.nz - Dismissed - Rights

The three complainants are all related and operated under the mark QUIX in the plumbing business. The mark was registered in 2008. The complainant provided evidence that there was no registration at the time of QUIX in the same class of business as the complainant was in. In 2010, when the business made their website, they discovered that the disputed domain name had been registered. There was no website set up under the domain name.

The respondent registered the domain name in 2002 and, while there was no website set up, the domain name was used to centralise all the mails into the company. The respondent had demonstrated that it had used the word "Quix" in its business.

There had been a significant history of confusion from the customers of the parties and emails were frequently sent to the wrong person.

The complainant claimed that it had a registered trade ark for QUIX and the registration by the respondent is an unfair registration. The complainant relied on evidence of misleading and deceptive conduct from the respondent. The respondent claimed that the complainant did not have rights in QUIX at all. The respondent had used the mark since 1999 and held rights to all use of the mark in New Zealand. They also counterclaimed that the complainant's trade mark rights had been illegally obtained since the respondent had obtained unregistered rights in the mark. On top of this claim, they also alleged that the complainant's domain name was falsely registered and amounted to an unfair registration.

The mark is registered. Despite the complaint from the respondent, once a trademark is registered, the expert is not in the position to second-guess the registration. A separate application should be made to the Commissioner of Trade Marks if the respondent is insistent in getting the registration revoked.

The expert did not think that the registration was unfair at the time of the decision. The first limb of registration failed since the complainant did not have rights to the mark at all when the respondent registered the domain name. The second limb was not met since there was no evidence of the respondent using the domain name and taking unfair advantage of the complainant's rights.

Paragraph 5.2 holds that failure to use a disputed domain name is not necessarily indicative that a domain name had been unfairly registered. This was not a case where the mere holding of the domain name could be considered unfair. Since the respondent has been using QUIX in trade to some degree, it was not inconceivable that the respondent might have a future legitimate use for the domain name. Only the opposite can lead to a finding of unfair registration.

The expert noted that a limited number of incidences of conduct falling under paragraph 5.1.2 does not mean that the complainant has succeeded in proving that there was an unfair registration. The expert had to consider all other factors and weigh them against the incidences that fell under paragraph 5.1.2. The wrongly addressed emails did not yet amount to something being detrimental to the complainant.

Link to NZLII Decision


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