v Sonya Jane [2010] NZDNC 516

[2010] - NZDNC - 516
Transferred ; Complainant's Rights ; Unfair Registration ; CMD - Transferred

The complainant purchased an information security business in 2007 from Limited which included the intellectual property of the business, most of which were based on the unregistered trademark SECURITY ASSESSMENT.

There was an agreement between two trusts to open an Australian branch of Limited, which shut down before the purchase occurred and its rights to the trade marks and the trading name were removed. The ex-employees of the Australian branch went on to form another competing company.

The party that entered into agreement with the Australian branch entered into an agreement with Pty Limited not to redirect the registered domain names that the party had registered when employed by , which included the disputed domain name. The domain name was contracted to remain parked. The domain name was then active at the time of the decision and redirected to the competing business and the complainant argues unfair registration.

The complainant argued the respondent had registered the domain name unfairly as they had no rights to the trademark being used. The respondent was using the domain name to unfairly disrupt the business of the complainant and divert users from the complainant.

It was found that the complainant had shown it had acquired distinctiveness through use of SECURITY-ASSESSMENT and that it was identical to the domain name.

While the complainant did not have any rights in the mark when the domain name was first registered, the expert considered the matter as to whether there was unfair registration through uses that took unfair advantage of the complainant's rights. The use was found likely to mislead or deceive visitors into thinking that the domain name is in association with the complainant. Since the domain name links to another business that is very similar to the business ran by the complainant, it increased the likelihood of confusion. It does not matter that the user would realise that they are on a different site immediately after clicking through. This is still an instance of being misled and is sufficient to meet the requirement.

Link to NZLII Decision

DNC news