Descriptive names, marks and domain names under the .nz Disputes Resolution Service
The Dispute Resolution Service (DRS), managed by the Domain Name Commission (DNC), deals with disputes regarding the registration of domain names in the .nz domain space. Since its inception in June 2006, the DRS has dealt with a number of disputes regarding either an allegedly descriptive domain name, or based on Rights in an allegedly descriptive name or mark. This article discusses the extent to which a Complainant can rely on Rights in a descriptive name or mark and how the DRS Policy and Procedure (the Policy) protects the legitimate use of descriptive domain names by Registrants.
The DRS is governed by the Policy, which provides that in order to succeed a Complainant must establish that:
1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
2. The Domain Name, in the hands of the Respondent, is an Unfair Registration.
The issue of descriptiveness is relevant to both establishing Rights in a name or mark and to establishing that the Domain Name in the hands of the Respondent is an Unfair Registration.
Rights
The definition of Rights in the Policy includes the statement that “a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business”. However, this does not necessarily preclude a Complainant from relying on a seemingly descriptive name or mark. Numerous decisions of the DRS have held that a name or mark is not wholly descriptive if it has acquired a secondary meaning designating the Complainant rather than merely describing the nature of the Complainant’s goods or services. For example, see B.O.P. Memorials v Jones & Company Funeral Services (DRS Case No. 108). The onus is on the Complainant to establish, in appropriate cases, that its mark has acquired a secondary meaning.
A Complainant’s claim that it has Rights in a name or mark is usually established by providing evidence of a trade mark registration and/or use of a name or mark. The application that a name or mark must not be wholly descriptive is discussed below in relation to each manner of establishing rights.
Where the Complainant has a registered trade mark for the mark in question, a challenge that the mark is wholly descriptive will not succeed. This is because to be registered the mark must have overcome the hurdle in section 18 of the Trade Marks Act 2002 which provides that the Commissioner must not register a trade mark that has no distinctive character or which may serve in trade to designate a characteristic of the relevant goods or services. This principle applies to both registered word trade marks and registered composite trade marks. In the case of the latter, it applies even though the words in the mark may not have been eligible for registration on their own as the question is whether the mark as a whole is wholly descriptive. For example, see First Direct Limited v Eva Romanowska (DRS Case No. 420).
Therefore, the allegation that a mark is wholly descriptive would usually arise where a Complainant relies only on use of a name or mark. In all cases where a Complainant relies solely on use of a trade mark, the Complainant must provide evidence to establish that it has acquired rights in the name. However, a Complainant relies on Rights in a name or mark that tends towards to descriptive end of the spectrum, the amount of evidence required to be filed by a Complainant is increased. See, The Country Channel Limited v The Country Channel Limited (DRS Case No. 334 – Appeal). The information and evidence provided by the Complainant must establish that the name or mark has acquired a secondary meaning designating the Complainant. See B.O.P. Memorials v Jones & Company Funeral Services (DRS Case No. 108).
It is noteworthy that in general the threshold to establish Rights under the Policy is not high, and the quantity and quality of evidence of use that a Complainant is required to provide to establish Rights is relatively low. Thus despite the increased onus when a Complainant is relying on a descriptive mark, the evidence that a Complainant is required to provide to establish that a mark has acquired a secondary meaning is still less than would be required in a similar forums, such as obtaining a trade mark registration based on acquired distinctiveness under section 18(2) of the Trade Marks Act 2002 or establishing reputation in an action for passing off.
Nonetheless, Complainants should be careful to provide as much information about use and supporting evidence as is possible. Despite the low threshold, Experts in a number of cases have commented disapprovingly on the lack of evidence filed and the obvious lack of legal assistance in preparing complaints. See for example, Auckland Airport v Dave Burghardt (DRS Case No. 291) and NZ Aerial Mapping Limited v Terralink International Limited (DRS Case No. 172).
Unfair Registration
The Policy provides that a Respondent may demonstrate that a Domain Name is not an Unfair Registration by establishing that the “Domain Name is generic or descriptive and the Respondent is making fair use of it in a way which is consistent with its generic or descriptive character”.
There are two main situations where a Registrant would rely on this part of the Policy, as follows.
First, if a Complainant establishes that a name or mark is not wholly descriptive because it has acquired a secondary meaning, a Registrant can argue that it is making fair descriptive use of the domain name.
The second situation is where a Complainant relies on Rights in a registered composite trade mark that contains descriptive words which are similar or identical to the domain name. As noted above, a Complainant can rely on such a mark to establish Rights as the mark as a whole is not wholly descriptive, even though the Complainant may not have been able to obtain a registration for the words alone. However, in such a case the Respondent may be able to have the Complaint dismissed by establishing that the Respondent makes fair descriptive use of the domain name. See for example, Dive! Tutakaka Limited v Janet MacFarlane (DRS Case No. 471) in which this was argued unsuccessfully.
Conclusion
A Complainant cannot rely on Rights in a name or mark that is wholly descriptive but can rely on Rights in a descriptive name or mark if it has acquired a secondary meaning designating the Complainant. Where a Complainant relies on use of an allegedly descriptive mark, sufficient evidence must be filed to establish this secondary meaning. To protect legitimate use of a Domain Name by a Respondent, a registration will not be an Unfair Registration if the Respondent is making legitimate use of it in accordance with its descriptive character.
Naomi Hand - September 2011
