Sienna Group (2008) Ltd v Eco Move (NZ) Limited [2014] NZDNC 963

[2014] - NZDNC - 963
Dismissed ; Complainant's Rights - Dismissed - Rights

The complainant owns a New Zealand trade mark for ECO MOVE, which was registered in 2013. The disputed domain name was registered in 2011. The predecessor of respondent registered the same mark in Australia in 2010 and started operating an Australian version of the domain name in early 2011. The NZ company of respondent was incorporated in 2013, four months before the trade mark was registered by complainant. The respondent did not register its trade mark in NZ, nor did complainant register its trade mark in Australia. The complainant alleged that it had traded with across three major cities in NZ and planned to expand further in NZ. The respondent established a franchise operation in 2013 in Auckland, with claims of licensing deals for the use of the trade mark.

The complainant claimed that the domain name was not generically descriptive and it was similar to the complainant's trade mark. The respondent's registration aimed to divert sales so it was an unfair registration. The complainant claimed that it was also an unfair use of the domain name that took advantage of complainant's rights. The respondent alleged that it was the first user of the name and it had used it in good faith. The complainant had not provided proof of use of the mark, which showed that complainant was acting in bad faith.

There is a registered trade mark right on ECO MOVE. Although the expert found the Domain Name to be identical to complainant's trade mark, the expert did not find an unfair registration. The complainant had registered a NZ trade mark after the identical trade mark was registered by respondent in AU. The respondent did trade under its trade mark after registration. There was no evidence that complainant had operated under the registered trade mark name, distinctive of the other trade mark RENTACRATE that it owned. The respondent had shown genuine intention to begin business in NZ, only failing to register the trade mark in NZ.

The expert stated that the dispute service was not appropriate as a platform to resolve trade mark dispute. That is best left for the courts to decide. The main purpose of the court is to decide on whether there had been an unfair domain name registration or use.

Link to NZLII Decision

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