STIEF V Family First NZ [2015] NZDNC 1125

[2015] - NZDNC -1125
Dismissed ; Complainant's Rights ; Unfair Registration - Dismissed - Rights

The complainant is a not-for-profit organisation that aims to improve sexual health in New Zealand. The complainant conducted surveys and decided that the best name for their information website was "Justthefacts". The complainant had registered iterations of the domain name and had filed an application for trade mark registration, of which no decision had been made at the time of the decision.

The respondent is an organisation concerned with the rights of the family. The website that they operate does not refer to the complainant's website, but had the same name but a different top-level domain.

The complainant alleged unfair attempt of passing off and benefitting from their goodwill. They allege that the respondent registered the domain name to benefit from the extensive effort to spread awareness of their website to increase foot traffic. The respondent claimed that the registration and use of the domain name are legitimate, non-commercial, and fair. They claimed that the domain name is generic and it had not acquired a secondary meaning. The complainant submitted that the lack of trademark registration is not detrimental to their claim.

There are no registered or common law rights on JUSTTHEFACTS. The domain name is not referring to anything specifically (and certainly not for the sexual health education) so it cannot be held exclusively by the complainant. The registration of the domain name was only a month before the domain name was disputed. That was found not to be long enough to establish a reputation for an unregistered trade mark right.

Link to NZLII Decision

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