Domain Name Resolution – a summary of decisions

Introduction

The Office of the Domain Name Commissioner (DNC) is responsible for the management of the .nz domain name registration system. As domain names are registered on a first in, first served, basis, disputes arise as to whether the registrant of the domain name is in fact the true owner of the domain name. The Domain Name Resolution Service (DRS) was set up by the DNC to resolve such disputes.

The DRS operates three levels of dispute resolution. A Complainant makes a written complaint and the Respondent (the domain name registrant) is given an opportunity to respond. Assuming a response is received, the Complaint is initially dealt with through mediation. If the Respondent does not file a response (which happens reasonably often) or mediation fails to resolve the dispute, an Expert is appointed to decide the matter. Decisions of an Expert can be appealed to a panel of three Experts.

Decisions are made according to the DRS Policy and Procedure (the Policy) which is available at the website of the DNC . In order for a Complainant to succeed it is necessary to prove that the Complainant has rights in a name which is identical or similar to the domain name and that the registration of the domain name by the current Registrant is unfair. The Policy defines "rights" and "unfair registration" and includes a non-exhaustive list of factors which may indicate that a registration is "unfair".

From the initiation of the DRS on 1 June 2006 through to 8 October 2007, 122 complaints have been received. Of these 122 complaints, 77 were found to be valid and 20 have proceeded to an Expert determination. In 15 cases the Expert ordered that the domain name be transferred to the Complainant. In one case the Expert ordered that the domain name be cancelled and four of the Complaints have been dismissed. No decisions have been appealed to the panel of Experts. Thus, in 80% of the cases determined by an Expert, the result has been in favour of the Complainant.

Summary of Decisions

In Intercity Group (NZ) Ltd v Traction Group Ltd, the Expert held that the Complainant had rights in the name INTERCITY. The Respondent claimed that it planned to use the domain name intercity.co.nz to host a website in a field which was related to the services for which the Complainant had registered the trade mark. Therefore, the Expert held that the domain name was likely to be used in a manner which would take advantage of or be unfairly detrimental to the Complainant’s rights.

In BOP Memorials v Jones & Co Funeral Services and NZ Aerial Mapping Limited v Terralink International Limited, the Complainants were held to have rights in relation to the domain names bopmemorials.co.nz and nzaerialmapping.co.nz respectively as the descriptive names had acquired secondary meanings which identified the Complainants. In both cases, the Respondent was aware of the Complainant and used the site in relation to the same or closely related industries in a manner likely to confuse or deceive or to take unfair advantage of the Complainant’s reputation.

Similarly, in Pet Mania v Petmania, the Complainant was held to have rights in the name PETMANIA. The Respondent used the domain name petmania.co.nz to host a site trading in the same industry as the Complainant’s business and the Expert accepted that the circumstances indicated that the Respondent would have been aware of the Complainant’s business. The Expert considered the registration to take unfair advantage of the Complainant’s rights and use of the domain name to be likely to confuse, mislead or deceive consumers into thinking that the respective businesses were connected.

In Pacific Bereavement Solutions (NZ) Ltd v Clive Cooper and Andrew Breaker; Joy Cooper v Greg Noice; Kiwispy Limited v Richard Gustin trading as Everlast and Monarch Natural Health v DLE Investments there was some relationship between the Complainant and the Respondent, such as employment. In the first three cases the Respondent had registered the domain name in its name or transferred the domain to its name, contrary to the agreement between the parties. In Monarch an ex-employer registered the domain name to cause detriment to an ex-employee’s new business. In all four cases, the registration in the name of the Respondent was held to be unfair.

In Barfoot & Thompson Ltd v Domain Admin; Seek Ltd v Domain Admin and Skype Technologies SA v Bellamy Price Mansfield Ltd, the Complainants were held to have rights in the well known marks, BARFOOT, SEEK and SKYPE respectively. In Barfoot and Seek, the Respondents’ sites hosted links to other sites including some which operated in the same industries as the Complainants. In Skype the Respondent used the site to sell goods relating to the Complainant's area of business. In each case the action of the Respondent was held to be likely to mislead or deceive consumers, and/or to take unfair advantage of the Complainant’s rights.

Likewise in Thai Airways International Public Company Limited v E-Promote and KBB Music v Bonfire Development, the Complainants were held to have rights in the names THAI and KBB MUSIC respectively and these were deemed to be similar to the domain names thaiairwarys.co.nz and kbb.co.nz. The Respondents used the websites to host links to sites which operated in the same fields of activity as the Complainants. Therefore, the Respondents’ registrations were held to be likely to confuse, deceive or mislead consumers into believing that they were connected with the Complainants.

Telecom IP Limited v E-Promote and YPG IP v E-Promote both concerned instances of typo-squatting. The Complainants were held to have rights in the names FERRIT and TELECOM; and WHITE PAGES and YELLOW PAGES respectively. These marks were held to be similar to the domain names www.ferrit.co.nz and tellecom.co.nz; and yelllowpages.co.nz, whitepages.co.nz and witepages.co.nz. The Respondents were using the sites to host links to sites in competition with the Complainants. In each case the Expert held that these were clear examples of typo-squatting and that the use of the domain names by the Respondent was likely to confuse, deceive or mislead consumers into believing that the sites were connected with the Complainant.

In all of the aforesaid cases, the domain name was transferred to the Complainant.

In TeachNZ, Ministry of Education v David Powell, the Expert held that the Complainant had rights in the name TEACHNZ and the Respondent’s use of the domain name took unfair advantage of the Complainant’s rights by redirecting traffic to another website for which the Respondent received a commission. However, the domain name was cancelled rather than transferred, as a third party also appeared to have rights in the mark (evidenced by trade mark registration) and therefore, the Expert could not determine who had better rights in the name.

In Fleet & Partners Ltd v Fleet Partners Pty Ltd; Mountain Buggy Trademarks Limited v Campbell Gower; Harcourts Group Ltd v Petrov Sergei and TradeFree Ltd v AdNet.co.nz, the complaints were dismissed. In Fleet Partners, the Expert held that the Complainant had rights in the name but that the use by the Respondent was legitimate within a different industry to which the Complainant had rights. In Mountain Buggy the Respondent had not made any use of the domain name. In Harcourts Group the complaint was made in the name of a subsidiary but the contract between the parent and the subsidiary companies clearly stipulated that the subsidiary gained no rights in the trade marks associated with the business. As such, the Complainant did not have rights in the domain name. In TradeFree the evidence showed that the Complainant had acquired no rights in this name TRADEFREE at the time which the Respondent registered the domain name tradefree.co.nz.

Comment

In order to succeed a Complainant must prove that it has "rights" in a name which is identical or similar to the domain name and that the registration of the domain name in the name of the Respondent is an "unfair registration", within the meanings set out in the Policy.

The threshold to prove rights appears to be quite low and is not limited to rights which are enforceable in law. Registered or common law trade mark rights are evidence of "rights", but are not necessary to prove "rights". In Thai Airways International Public Company Limited v E-Promote the Expert, Mr Warwick Smith, stated the following at page 7:

"… the Expert is mindful of the decisions of the appeal panels in the United Kingdom which have held that the requirement under the Policy to demonstrate "rights" is not a particularly high threshold test. See, for example, the decision of the appeal panel in Seiko UK Limited v Designer Time/Wanderweb; Nominet Case No DRS 00248. As this Expert noted in the New Zealand DRS case bopmemorials.co.nz (New Zealand DRS No. 108), the purpose of the Policy is primarily to provide a quick and relatively cheap means of obtaining redress in circumstances of abusive or otherwise unfair registration of a domain name, and the level of proof required cannot reasonably be expected to be at the level which would be necessary to support a court claim for passing off, or an application to register a trademark based on distinctiveness acquired through years of use."

It is also not necessary for the name to be highly distinctive. A Complainant can prove "rights" in a descriptive name, so long as the name has acquired a secondary meaning and identifies the Complainant through its use of the name (See: BOP Memorials v Jones & Co Funeral Services and NZ Aerial Mapping Limited v Terralink International Limited).

Turning to the question of whether a registration is "unfair", simply holding a domain name registration is not enough, even though the registration may be inconvenient to the Complainant. The Policy includes a non-exhaustive list of factors which may indicate that a registration is "unfair". The decisions issued thus far show that the following may prove that a registration is unfair: use of the domain name in a manner which would constitute trade mark infringement or passing off, or plans to use the domain in this manner; hosting links to sites operating in an industry in which the Complainant has rights, or a similar industry; redirection through the domain name to the Respondent’s website or another website for gain; and/or typo-squatting so as to divert custom from the Complainant. The Policy also contains a presumption of unfairness where it is shown that there is a pattern of the Respondent holding unfair registrations. The need to show that a registration is unfair balances the low threshold to prove that a Complainant has rights in a name.

Finally on a practical note, the decisions thus far show the importance of applying in the name of the correct entity in the case of related entities, that is, in the name of the entity which has rights in the name (see: Harcourts Group Ltd v Petrov Sergei but cf: Kiwispy Limited v Richard Gustin trading as Everlast) and filing full submissions prior to mediation as it will not be possible to add to these should mediation fail and the matter proceeds to an expert determination (see: Fleet & Partners Ltd v Fleet Partners Pty Ltd). It may also be advisable to keep a screenshot of the Respondent’s website prior to filing a complaint in case changes are subsequently made to the site (see: KBB Music v Bonfire Development).

Naomi Hand - October 2007