B.O.P. Memorials v Jones & Company Funeral Services [2006] NZDNC 108
[2006] NZDNC 108
Complainant's Rights ; Degree of Name Similarity ; Unfair Registration ; CMD, Transfer
bopmemorials.co.nz - Transferred
The complainant is a partnership owned by the McKenzies. They moved to Mt Maunganui in 1996 and had carried out the headstones business there since. BOP was chosen to represent their wish to service the Bay of Plenty area. BOP MEMORIALS is not a registered trademark.
The respondent registered the domain name in 2000. The respondent had previously approached the complainant in an attempt to amalgamate the businesses together, but the offer was declined. Some time later, the complainant found out that the respondent had registered the domain name.
The complainant claimed to have rights in BOP MEMORIALS and the respondent had acquired the domain name with malicious intent. The respondent was not in the business of monuments, just funerals. The respondent was using the domain name to connect people to the respondent's own business. The respondent did not file a response.
The complainant does not have registered trade mark rights. They claimed to have gained common law rights that distinguished their rights to the name from others. Using the test of 'whether the mark would equally be applicable to any business of the same kind' to determine whether the mark is merely descriptive, the expert is of the opinion that it is. However, due to the extensive use of the name, the expert concluded that it did develop a secondary meaning, which meant that the mark did gain unregistered rights. Even though the evidence is not particularly strong, the expert noted that the threshold for rights is low.
The expert concluded the registration was likely to confuse and mislead users into thinking that the domain owner is operating in connection to the complainant it gave grounds for the finding that there was an unfair registration.