.nz Dispute Resolution Service

DRS Reference: 897

Child Cancer Foundation Inc. v Garth Piesse

Key words -

1. Parties

Complainant:

Child Cancer Foundation Inc.
PO Box 152
Auckland
New Zealand
Represented by: Mrs Sue Ironside

Respondent:

Garth Piesse
Domain-For-Sale.co.nz
PO Box 181
Palmerston North
NZ (NEW ZEALAND)
Represented by: Mr Adam Taylor

2. Domain Name/s

childcancer.co.nz ("the Domain Name")

3. Procedural history

3.1 This Complaint entered the Domain Name Commission's (DNC) system on 22/08/13. The Respondent filed a Response to the Complaint on 16/09/13 and the DNC so informed the Complainant on 16/09/13. The Complainant filed a Reply to the Response on 26/09/13. The DNC informed the parties on 14/10/13 that informal mediation had failed to achieve a resolution to the dispute. The Respondent sought leave on 14/10/13 to file a Non-Standard Reply and leave was subsequently granted.

3.2 Mr Clive Elliott QC, was appointed as an Expert, ("the Expert") to determine the Complaint. On 19/11/13 the Expert delivered a decision upholding the Complaint and ordering the transfer of the Domain Name.

4. Appeal

4.1 The Respondent/Appellant (hereinafter "Respondent") subsequently lodged an appeal against the Expert's decision. The Respondent then filed an Appeal Notice. The Complainant/Respondent (hereinafter "Complainant") then filed an Appeal Response.

4.2 On 5/2/14, the Appeal Panel ("the Panel") comprising Andrew Brown QC, the Hon Robert Fisher QC, the Hon Barry Paterson QC was appointed.

5. The nature of this appeal

5.1 As was the case in the first DNC appeal1 , the Panel starts with para 12.1 of the Policy. This provides that the Panel "will consider appeals on the basis of a full review of the matter and may review procedural matters".

5.2 The Panel therefore proceeds to deal with this appeal by conducting a full review of the matter, taking into account the documents before the Expert and the formal Appeal and Response notices filed on appeal and considering whether the decision appealed from was wrong.

6.   (1) Procedure: Impartiality and Independence

6.1 The Respondent comments that through its solicitors, the DNC "has acknowledged doubt as to the impartiality/independence of the Expert and that it would have appointed a substitute Expert had objection been made before the Decision".

6.2 The Complainant strongly contends that the Appeal should be dismissed as the DNC had failed to operate fairly and in good faith. The policy on the Roles and Responsibility at 7.3.1 states that the DNC must operate in a transparent, ethical manner, honouring principles of good faith and fairness.

6.3 The Complainant objects that the Appellant accused the Expert of bias and that the DNC had invited the Respondent to appeal and offered to pay the appeal fee of $7,200. This was then immediately accepted and appealed.

6.4 The Complainant strongly refutes the allegations of bias against the Expert and submits that these were totally unfounded: the Expert ceased to be a partner in Baldwins in 2000, had never represented the Respondent on instructions from Baldwins and had been a member of the independent Bar for over 13 years, latterly as a Queens Counsel. In this regard the Complainant contends that it has been severely prejudiced by the DNC's financing of the appeal which might not otherwise have eventuated.

6.5 As to the permissible scope of this appeal, the Panel accepts that para B8.1 requires an Expert to be impartial and independent and to disclose to DNC any circumstances giving rise to justifiable doubt as to that Expert's impartiality or independence; that an Expert's impartiality and independence is fundamental to the validity of his or her decision; and that the disclosure requirements are a matter of prescribed procedure. It follows that challenges on such matters fall within para 12.1 and, as such, are within the proper scope of an appeal. The fact that in some circumstances the same matters might give rise to a rehearing under para 12.6 of the DRS Policy, and/or judicial review in the courts, is not inconsistent with the right to have them considered on appeal.

6.6 For this ground of appeal the Respondent evidently thought it sufficient to draw the Panel's attention to the DNC's view. In fact under para 12.1 of the DRS Policy the duty of the members of the Panel is to consider such issues itself and uninfluenced by the views of others. With the benefit of hindsight we do not think it good practice for the DNC to comment on the merits of an issue which is likely to come before a Panel. We now approach the question afresh.

6.7 Para B8.1 of the DRS Policy provides:

6.8 Para B8.1 imposes two requirements on an Expert. One is that he or she be impartial and independent. The other is that he or she make appropriate disclosure to the DNC. Although both are important, it is the former that governs the situation when there is an appeal against an Expert's decision based on lack of impartiality and independence. On such an appeal the validity of the decision turns on impartiality and independence, or at least any reasonable apprehension that they might have been lacking. Whether or not the Expert also failed to make adequate disclosure to the DNC is a collateral issue unlikely to affect the validity of the decision. We therefore concentrate on impartiality and independence in themselves rather than disclosure arrangements between Experts and the DNC.

6.9 In our view the requirement in para B8.1 that the Expert be impartial and independent is intended to import the standard common law test for bias. The significant feature of the common law test is that it is not necessary for the complaining party to prove actual bias; it is sufficient if the circumstances, once established by proper inquiry, might lead a fair-minded lay observer to reasonably apprehend that the judge might not bring an impartial mind to the resolution of the instant case: Muir v Commissioner of Inland Revenue 2; and Saxmere Company Ltd v Wool Board Disestablishment Co Ltd.3 Such an approach to domain name procedures would be consistent with the obligation imposed on Experts to disclose "any circumstances giving rise to justifiable doubt as to their impartiality or independence" (para B8.1). It would also be consistent with "breach of natural justice" as a ground for a rehearing (para 12.7.4).

6.10 The first stage in the test for bias is therefore to establish the actual circumstances which have a bearing on any suggestion that the judge was or may be seen to be biased (Muir v Commissioner of Inland Revenue, above and Saxmere v Wool Board, above).

6.11 In the present case it is not disputed that in the proceedings before the Expert the complainant was represented by Sue Ironside of Baldwins, a firm of patent attorneys; that the Expert had been in partnership with Mrs Ironside at Baldwins for seven years until 2000; that in 2000 he moved to practice as a barrister sole; that he took silk as a Queen's Counsel shortly before the case came before him; and that during his 13 years at the independent bar he had been instructed by Baldwins in at least 11 cases.

6.12 The overriding question is whether knowledge of those circumstances might cause a fair-minded lay observer to reasonably apprehend that the Expert might not bring an impartial mind to the resolution of the instant case. In answering that question other decisions and guidelines on the subject can be regarded as context which would be known to the fair-minded lay observer following inquiry into the relevant circumstances.

6.13 Of particular importance is the impartiality conventionally expected and displayed by those judges and others who are called upon to give decisions in a professional capacity. Although there can be no rigid rule to cover all situations, it is well-recognised that as a general rule friendships and professional associations between judges and counsel will not give rise to a reasonable apprehension of bias: see remarks of McGrath J in Saxmere v Woolboard4 ; Wellesley Lake Trophy Lodge Inc v BLD Silviculture Ltd5 ; Taylor v Lawrence 6.

6.14 It is for that reason that no sound objection can normally be made to a judge's previous receipt of instructions to act for or against any party, solicitor or advocate engaged in a case before him or membership of the same Inn, circuit, local Law Society or Chambers: Locabail Ltd v Bayfield Properties7 . The principle has particular application in New Zealand where professional associations and personal friendships are bound to overlap within the relatively small sector of the New Zealand legal community: per McGrath J in Saxmere v Woolboard.8

6.15 Those principles are not confined to sitting judges. They have been extended, for example, to a lawyer sitting as a member of a Disciplinary Tribunal (Carran v NZLPDT9 ) and to a construction adjudicator (Fileturn Ltd v Royal Garden Hotel Ltd10 ).

6.16 Fileturn above, is of particular interest in the present case because for three years the adjudicator had been a director of the firm now representing the claimant in the case before him. Since setting up his dispute resolution practice he had also had 10 cases in which the claimant's firm had appeared before him. Discussing the defendant's attempt to distinguish between judges and adjudicators, the Court said:

6.17 Some useful background can also be derived from the International Bar Association Guidelines on Conflicts of Interest in International Arbitration (2004). The Guidelines create four categories into which cases of potential conflict can be placed:

6.18 Where a situation falls within the Orange List the arbitrator must disclose the relevant facts and circumstances. He or she may continue if the parties do not expressly object within 30 days. Even if a party does object the arbitrator has a discretion whether to continue to act (see Guidelines flowchart at 27).

6.19 The IBA Guidelines have no direct application to Domain Name Experts. However, it is of interest to note that under the Guidelines a prior partnership between an arbitrator and counsel brings the case into the Orange List only if the partnership was within the past three years. The Expert in this case was not a partner of counsel within three years of the Domain Name complaint.

6.20 The IBA Guidelines also provide for inclusion in the Orange List if the arbitrator has been appointed as such by the same law firm more than three times within the past three years. The Expert in the present case had been instructed as counsel by the same firm on at least 11 occasions over the preceding 13 years. However, there is an important distinction between arbitrators and Domain Name Experts in that regard. Whereas it is in the interests of an arbitrator to encourage a party to repeat his or her appointment as arbitrator in the future, Expert appointments do not lie at the will of the parties. They are made independently by the DNC in accordance with a predetermined roster (DRS Policy para B7.2).

6.21 Placed in the circumstances of this Expert, we think that many Experts might well have thought it prudent to notify DNC that there was the potential for a complaint based on lack of impartiality or independence. However we do not think that lack of such disclosure can support a challenge to the decision itself.

6.22 Nor do we think that there was a lack of impartiality or independence in the present case or that the circumstances, once established by proper inquiry, might have led a fair minded lay observer to reasonably apprehend that the Expert might not bring an impartial mind to the resolution of the domain name complaint. It follows that the challenge to the Expert’s decision on this ground fails.

7.   (2) Rights

7.1 It is important to start with a clear statement of what the Complainant claims as Rights. These are:

7.2 In its Reply the Complainant augmented these details and exhibited selected extracts from a book called "No Journey Made Alone - 35 Years of the Child Cancer Foundation".

7.3 It sought to rebut claims by the Respondent by showing that some links returned by the Google search of "child cancer" were indeed to it. It further claimed that a reference to International Child Cancer Awareness Month was irrelevant as this was not a New Zealand-based initiative.18 As to the Respondent's reference to a third party organisation, the "National Child Cancer Network", the Complainant stated that this was founded by and maintained a strong association with the Complainant and therefore reinforced a connection to and reputation of the Complainant rather than descriptiveness as claimed.19

7.4 In his decision, the Expert's findings on the issue of Rights were as follows.

7.5 Evidence indicated that the term "child cancer" was apt for use to describe a "child with cancer" but that other terminology was also available. The Complainant, the Child Cancer Foundation, was clearly well established and well-known in New Zealand as the organisation responsible for the interests of children who have cancer and require care. In this regard the term Child Cancer is descriptive, even highly descriptive.20

7.6 Questions raised by the Complaint were:

7.7 While the matter was not without difficulty "on balance", the Expert found that the Complainant had done enough to show that the term "child cancer" was not wholly descriptive, based on the following factors:25

7.8 The Expert went on to find26 that, while the Respondent asserted that CHILD CANCER was both descriptive and generic, he had not provided evidence that entities other than the Complainant had used the name or trade mark in a significant way in the health sector. Nor had the Respondent elaborated on why an entity might not be able to acquire protectable rights in a term over time, notwithstanding its descriptive meaning.

7.9 Accordingly, the Domain Name was not wholly descriptive of the goods or services of the Complainant and the Complainant had sufficient rights in respect of a name or mark which was identical or similar to the Domain Name.27

7.10 In relation to the Expert's findings at [7.1.13], based on the Complainant's "extensive and ongoing use of the term CHILD CANCER the Respondent contends:

7.11 As to the Expert's finding that CHILD CANCER is "emphasised" under the Complainant's trade marks, the Respondent contends that rights cannot be extracted from an entirely non-descriptive term in a registered trade mark simply by increasing the font size.

7.12 The Respondent states that it is not clear what the Expert meant by the term "along these lines" in its finding at 7.1.13.3 (quoted earlier). The Respondent states that there was evidence of New Zealand organisations using CHILD CANCER in their name e.g. national child cancer network. There is also World Child Cancer Charitable Trusts.

7.13 As to the finding at 17.1.13.4 of the Decision, the Respondent states that the Expert appeared to reject the Complainant's claim of synonymity but invoked "association". The Respondent asserts that "undertakings" are inevitably 'associated' with descriptors of the goods/services they supply. Microsoft is associated with "computers". That is an entirely different issue from whether a descriptor can, or has come to, distinguish the undertaking from others".

7.14 As to paragraph 7.1.14, the Respondent asserts that not only was the term CHILD CANCER incapable of becoming distinctive but also that even if it was, the term was at the descriptive end of the continuum and required a high level of secondary evidence as outlined in the Decisions 10828 and 84629 . It was asserted that the Expert had failed to address this.

7.15 In relation to the issue of rights, the Complainant contends:

7.16 As to the Respondent's contention that other entities were using CHILD CANCER, the Complainant stated that the Appellant had provided no evidence that other entities "have used the name so extensively" to denote their activities in this way and in any event the Complainant had demonstrated acquired distinctiveness.

7.17 The issue of descriptive names arises in two separate points in the Policy:

Under para 4.2 of the Policy, the Complainant is required to prove to the Expert/the Panel, on the balance of probabilities, that it has Rights in respect of a name or mark which is identical or similar to the domain name. The definition of Rights, however, excludes from consideration "a name or term which is wholly descriptive of the Complainant's business".

At a second stage the Policy also makes provision for generic or descriptive domain names - as opposed to wholly descriptive names or terms. Amongst the non-exclusive list of factors which may be evidence that a domain name is not an Unfair Registration, is the following:30

7.18 The Panel proposes therefore to consider first whether the Complainant has demonstrated any Rights in CHILD CANCER FOUNDATION or CHILD CANCER. As an ancillary part of this, it will consider whether "CHILD CANCER" is excluded as being wholly descriptive. It will then consider whether the Rights are identical or similar to the Domain Name.

7.19 In the present case, the evidence as to Rights put forward by the Complainant shows the following: