Skype Technologies SA v Bellamy Price Mansfield Ltd [2007] NZDNC 150

[2007] - NZDNC -150
Transfer ; Complainant's Rights ; Degree of Name Similarity ; Unfair Registration / - Transferred

The first complainant is a member of the Skype Group which is an internationally used voice chat software. The second complainant is also a member of the group that holds the intellectual property rights of Skype across the world. It holds in New Zealand the trade mark SKYPE.

The first domain name was registered in 2005, and the other in 2006. The complainant attempted to purchase the first domain name from the respondent, but the negotiation fell through with the respondent demanding a significant amount. No attempt was made for the second domain name.

The complainant claims the respondent's registration was unfair since it is confusingly similar to the complainant's company name and trademark.

The expert found that both complainants were owners of the registered SKYPE mark and common law rights had been gained through long consistent uses of the name, and the domain names are similar to the trademark.

The expert held that the complainant provided the following evidence:

1) a demand for US$50,000 for the transfer shows that the domain names were obtained for the purpose of selling or for blocking purposes;

2) there is also evidence in the email between the respondent and the complainant that the respondent was aware of the trademark and the complainant when the respondent stated it set up the domain name 'without any help from Skype'.

This was found to be sufficient for a finding of unfair registration.

Link to NZLII Decision

DNC news