At the end of May 2011, New Zealand's Dispute Resolution Service Policy (DRSP) for .nz domain name registrations celebrated its fifth birthday. In that time, 76 complaints have resulted in transfer orders for the subject domain name(s), while 13 complaints were dismissed by experts.
At face value, this statistic indicates that the odds of winning are overwhelmingly in favour of complainants - so why did 'the 13' fail?
This 'Did you know' looks briefly at the first reason why some of these complaints were dismissed: the failure to prove rights in an identical or similar name.
Refresher: what a complainant needs to prove
For a complaint to succeed, you must prove that:
- You have rights in respect of a name or mark which is identical or similar to the disputed domain name; and
- The disputed domain name, in the hands of the registrant, is an unfair registration, meaning the domain name:
- was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to your rights; or
- has been, or is likely to be, used in a manner which took unfair advantage of or was unfairly detrimental to your rights.
To maximise your chances of success, it is critical your complaint addresses each of the elements in (a) and (b)(i) or (ii) above. It is also critical that your argument in respect of these elements is substantiated wherever possible by way of supporting evidence. To further maximise your chances of success, you must also address any defences which the domain name registrant (the respondent) may put forward (see our May 2011 ' Did you know').
Woolaway Construction Limited v Te Pari Products Ltd : an example of unproven rights
The decision of Expert Paterson in Woolaway Construction Limited v Te Pari Products Ltd (DRS Ref.607, 17 March 2011) concerning the domain name farmquip.co.nz is a recent example of a complainant not proving rights in a name.
The Complainant, Woolaway Construction Ltd, claimed that it and a company on whose behalf it was acting, Farmquip Limited, had rights in the name FARMQUIP which was identical to the domain name. The Complainant claimed those rights arose out of the reputation and goodwill the two businesses had built up in the name since May 2010, although it subsequently changed this to June 2010. The Complainant further claimed its rights arose out of an application1 to register the trade mark FARMQUIP.
The Respondent, Te Pari Products Ltd, claimed it belonged to a "Global Livestock Equipment Group", to which both an Australian company, "Arrow Farmquip", and an Argentinian company, "Farmquip Argentinia" also belonged. The Respondent claimed that the phrase "farmquip" was not unique to the Complainant as a result of this overseas use, and that it registered the domain name to preserve the possibility of future global branding for it as part of the Global Livestock Equipment Group.
In finding that the Complainant had not established either registered or unregistered rights in an identical name, the Expert relied on two principal factors: first, the factual timeline in the dispute, and, second, the fact that company incorporation does not give rise to rights in a name.
The factual timeline was this:
- the Complainant's associated company, Farmquip Limited, was incorporated on 14 May 2010;
- the domain name was registered on 20 May 2010;
- the Complainant filed its trade mark application on 1 June 2010;
- the Complainant commenced marketing activities to build up its reputation in June 2010.
On this timeline, the Expert found that the Complainants could not have built up a reputation or goodwill in the name by 20 May 2010 - ie within 6 days of Farmquip Ltd being incorporated. Consequently the Complainant could not rely on rights arising from a common law or unregistered trade mark as there was no unregistered trademark which had achieved reputation in fact. Further, the Complainant could not rely on its trade mark application because this post-dated the date the domain name was registered.
The Expert went onto to consider whether the Complainant could rely on any right arising from the incorporation of Farmquip Limited:
The only possible right which the Complainants could have had at 20 May 2010, on the evidence produced, was any right which would arise from the incorporation of FL. However, in the circumstances of this case, registration of a company name does not in itself give rise to a Right. In some circumstances, it may be a factor to be taken into account in establishing the existence of an unregistered common law mark or trade name but the incorporation of a company six days before the registration of the Domain Name can not in itself give a Right.
Thus it was that from the evidence presented by the Complainant, the Expert found that the Complainant, and Farmquip Limited, did not have rights in the name FARMQUIP at the date of domain name registration. Consequently, the Expert did not have to go on and consider whether the Respondent's registration of the domain name was in fact unfair.
What the complainant should have done
Had the Complainant done more to establish its rights, for example by filing its trade mark application on the same day Farmquip Limited was incorporated, it is possible the Expert would have ultimately found in the Complainant's favour. Of course, the best course of action would have been to register the domain name on the same day Farmquip Limited was incorporated.
As it is, the domain name farmquip.co.nz now (at the time of writing) diverts to the aforementioned Australian company's URL and website, http://www.arrowfarmquip.com.au/ and the Complainant has had to satisfy itself with a .co registration: http://www.farmquip.co/.
1 In most jurisdictions patent applications are subjected to an examination process to determine whether the subject matter is novel and inventive. The terms "application", "pending" or "patent application" are used to describe the status of the application up to grant.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
James and Wells is the 2010 New Zealand Law Awards winner of the Intellectual Property Law Award for excellence in client service.