Decision 1125

.nz Dispute Resolution Service

DRS Reference: 1125

Sexually Transmitted Infections Education Foundation Ltd (STIEF) v Family First NZ

Key words - Unregistered mark - generic - no registered or common law trademark - no rights for Complainant in disputed domain name

1. Parties

Complainant:

Sexually Transmitted Infections Education Foundation Ltd (STIEF) 
C/- Claire Hurst
946 Whangaruru North Rd
RD4 Hikurangi 0184
New Zealand
(Represented by Mr Brett Crockett, Croc Consulting Ltd)

Respondent:
Family First NZ 
P O Box 276133 
Manukau Manukau 2241
New Zealand
(Represented by Mr Bob McCoskrie)

2. Domain Name/s

www.justthefacts.org.nz

3. Procedural history

3.1. The Complaint was lodged on 14 September 2015 and Domain Name Commission (DNC), notified the Respondent of the validated Complaint on 15 September 2015. The domain/s were locked on 15 September 2015, preventing any changes to the record until the conclusion of these proceedings.

3.2. The Respondent filed a Response to the Complaint on 22 September 2015 and the DNC so informed the Complainant on 25 September 2015The Complainant filed a Reply to the Response on 05 October 2015. The DNC informed the parties on 05 November 2015 that informal mediation had failed to achieve a resolution to the dispute.

3.3. The Complainant paid Domain Name Commission Limited the appropriate fee on 17 November 2015 for a decision of an Expert, pursuant to Paragraph 9 of the .nz Dispute Resolution Service Policy ("the Policy").

3.4. Sir Ian Barker QC, the undersigned, ("the Expert") confirmed to the DNC on 20 November 2015 that s/he knew of no reason why he could not properly accept the invitation to act as expert in this case and that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

4. Factual background

4.1. The Complainant is Sexually Transmitted Infections Education Foundation Ltd (STIEF). It is a not-for-profit organisation which has the aim of improving the sexual health of all New Zealanders. It is funded by the Ministry of Health through Health Boards.

4.2. In 2014, the Complainant developed a website with the aim of helping young people, in particular Maori and Pacifika youth, to find information and advice on sexually-transmitted infections and sexual health generally. The developer of the website consulted with young people over a period of six months and decided that the best name for the website was "Justthefacts".

4.3. The Complainant registered the domain names , , and on 19 January 2015. The website accessed by was launched in May 2015. There were national press releases and extensive link-building with sexual health organisations and clinics nationwide. There has been investment in time from a national network of health professionals in the area to ensure delivery of a national resource to the target audience. The website offers extensive information about a range of sexually-transmitted diseases plus advice on sexual health.

4.4. The Complainant claims that the website accessed by its registered domain names provides non-judgmental and accurate information on sexually-transmitted infections. Its professional advisory group is said in the Complaint to regard the website as providing credible information on sexually-transmitted infections. Information on the website has been distributed nationwide to over 8,000 health professionals and organisations.

4.5. Although nothing was said in the Complaint about a trademark, the Response and the Complainant's subsequent Reply indicated that the Complainant had made application to the Intellectual Property Office of New Zealand ("IPONZ") to register JUSTTHEFACTS as a trade mark on 2 September 2015, although no decision has yet been made on the application for registration. The disputed domain name was registered by the Respondent on 10 June 2015, some six weeks after the public media launch of the Complainant's website.

4.6. The Respondent is an organisation concerned with the rights of the family. There was no indication in the Response of its legal status. However, looking at its website, it appears that it had been given charitable status which status was subsequently revoked. By a decision of the High Court given on 30 June 2015 (reported as (2015) NZHC 1493), the Charities Board was instructed by the Court to reconsider the Respondent's application for the registration as a charity. No information was supplied by the Respondent as to whether the Charities Board had reconsidered the application and if so, what was the result of that reconsideration.

4.7. The High Court judgment also disclosed (not included in the information supplied to the Expert) that the Respondent was incorporated under the Charitable Trusts Act 1957 on 1 April 2006. This means that the domain name Registrar was correct in accepting the registration of the disputed domain name, despite the lack of any indication from the name of the Respondent indicating incorporation, such as the word "limited" or the word "incorporated". The above information was found by the Expert by searching the Respondent's website and the judgment of the High Court.

4.8. On the Respondent's website is an article or review written by Dr Miriam Grossman, a physician, author, public speaker and media commentator. She is a critic of what she calls the "sex education lobby" and claims that this "lobby" promotes sexual licence instead of sexual health. She provided her article entitled "Sexuality Education in New Zealand - a Critical Review" to the Respondent in June 2013.

4.9. Without going into the details of the review, Dr Grossman, whose qualifications are in paediatrics and adolescent psychiatry, paints a more conservative approach to sexual morality and sexual activity by the young than does the content provided on the Complainant's website. The Respondent's website makes no reference to the Complainant's website but it uses the same name "justthefacts" but with the .org.nz suffix. .

5. Parties' contentions

(a) Complainant

5.1. The Complainant alleges an unfair attempt by the Respondent to pass off its website as the Complainant's website and to leverage the extensive marketing and communications strategy which the Complainant has implemented to build its brand awareness. The Complainant claims the right to the justthefacts.org.nz domain name in order to prevent the Respondent and others from "piggy backing" on the Complainant's endeavours.

5.2. The Complainant asked the Respondent to transfer the disputed domain name to it but the Respondent declined, claiming that its website provides some prudent facts which are not on the Complainant's website.

5.3. The Complainant maintains that the Respondent's action in registering the disputed domain name is to acquire website traffic through domain name confusion.

(b) Respondent

5.4. The Respondent claims it is making a legitimate, non-commercial and fair use of the domain name in order to disseminate Dr Grossman's views. The domain name is generic. While some descriptive words and phrases can be recognised as trademarks through acquiring a secondary meaning, that is not the case here. The Complainant launched its website only in May 2015 - about a month before the registration of the disputed domain name. One month of public use is insufficient for the phrase to have acquired common law trademark status.

5.5. The registration was not unfair because the disputed domain name is being used as a genuine offering of goods and services, namely the publication of a bona fide review of sexuality education in New Zealand. Any claim by the Complainant that the Respondent's website is politically motivated is "defamatory and unsubstantiated". Dr Grossman is an internationally-renowned expert on sexuality amongst youth and her views are entitled to respect.

5.6. The Respondent has not acquired the disputed domain name for the purpose of selling, renting or otherwise transferring it. It is neither a "blocking" registration nor one unfairly disrupting the business of the Complainant in a way likely to confuse, mislead or deceive people into believing that the domain name is registered to, operated or authorised or otherwise connected with the Complainant.

(c) Reply

5.7. In its Reply, the Complainant mentioned for the first time its application to IPONZ for a trademark. It submitted that this case does not hinge on whether the disputed domain name is trademarked. It sees the Respondent's registration as an opportunity for the Respondent to pass itself off as, to divert traffic from and to "ride on the coattails" of the Complainant's initiative, thereby promoting its own views on sexuality education. The disparate views presented by the two websites can be a cause of considerable conflict and confusion for the public. Dr Grossman's article has no relevance and the publication of contradictory information at the disputed domain name does not constitute a fair use or legitimate use. The registration of the disputed domain name is an attempt by the Respondent unfairly to disrupt the Complainant's business.

6. Discussion and findings

6.1. The Complainant is required to prove that it has met the requirements of paragraph 4 of the Policy, namely:

  • "6..1.1 The Complainant has the rights in respect of a name or mark which is identical or similar to a domain name"; and

    6.1.2 The Domain Name in the hands of the Respondent is an unfair registration".

6.2. The Expert must therefore first decide whether the Complainant has rights in respect of a name or mark which is identical or similar to the domain name.

6.3. Whilst the disputed domain name is identical to a domain name of the Complainant (apart from the suffix), there can be no tenable claim that the Complainant has any registered trademark rights. The Complainant has only recently applied for a trademark and in the view of this Expert, there could well be difficulties in obtaining registration because of section 18(1) of the Trade Marks Act 2002 ("the Act"). That is not for the Expert to decide but for IPONZ to decide.

6.4. Section 18(1) of the Act provides as follows:

  • "(1) The Commissioner must not register -

    (a) a sign that is not a trade mark:

    (b) a trade mark that has no distinctive character:

    (c) a trademark that consists only of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services, or other characteristics of goods or services:

    (d) a trade mark that consists only of signs or indications that have become customary in the current language or in the bona fide and established practices of trade."

6.5. Registration of a domain name about one month before the disputed domain name, is not a long enough period in which to establish a reputation for an unregistered trademark right. As was said by the Expert in Hytools NZ Ltd v Neville Stuart (DRS 941) at paragraph 7.4:

  • "A complainant will have rights in a name enforceable by an action for passing off if he establishes a "reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with [the name] under which his particular goods or services are offered to the public, such that [the name] is recognised by the public as distinctive specifically of the plaintiff's goods or services" (Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 (HL) at 499). The name in such circumstances may otherwise be described as a common law trade mark."

6.6. Although the Complainant does have a right to the domain name it appears to the Expert that this simple registration cannot justify exclusive rights to that name because the expression "JUSTTHEFACTS" can relate to any topic at all. There is no indication in the Complainant's domain name that the JUSTTHEFACTS website deals with sexual health issues.

6.7. A mere cursory search of the Internet, typing into the search engine the expression JUSTTHEFACTS, will display a whole range of subject- matters accessible under that expression. For example, the Wright Bros Aeroplane Co in the United States: changes in warning signs on the Kaimai Range Road: an editorial in the weekly magazine, "NZ Listener", entitled "Just the Facts, Guys" discussing purchases of New Zealand farms by foreigners. These are just three examples taken at random from sites relating to the common expression - i.e., "Just the Facts". The website at justthefacts.com is that of a United States corporation, "Just the Facts Inc." which claims to provide "unique research solutions for Sound Decisions".

6.8. One could doubtless discover all sorts of situations where somebody wishes to explain a situation, sometimes a contentious one, by using the aphorism "just the facts" to introduce a topic. For example, see the "just the facts" site of the tobacco company, Philip Morris International at .

6.9. So it is difficult to see how, without any reference in the domain name to sexual diseases or sex education, the expression "just the facts" informs the internet user as to what the content of this website might be about.

6.10. Accordingly, it is not possible to hold that the Complainant has rights in a disputed domain name which has acquired no distinctive character and which is essentially generic. If there were something preceding the domain such as: "sexual health - just the facts" that might be sufficient to differentiate the domain name. There is just no distinctive character.

6.11. As was said of a trademark by Jacob J in British Sugar plc Chambers Robertson & Sons Limited (1996) RPC 281 305.

  • "What does devoid of distinctive character mean? I think the phrase requires consideration of the mark on its own, assuming no use. Is it the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trade mark? A meaningless word or a word inappropriate for the goods concerned (North Pole for bananas) can clearly do so. When a common laudatory word such as "Treat" is, absent use and recognition as a trade mark, in itself, (I hesitate to use the word from the Act but the idea is much the same) devoid of any inherently distinctive character."

6.12. The Complainant does not have to show that it has a trademark - whether a registered or a common-law mark - but must show it has rights in respect of a name. The generic nature of the expression "just the facts" cannot show that element of distinctiveness which the name must have. Asked about what a "just the facts" website should be about, the average person would not think immediately of sexually-transmitted diseases, but would ask "the facts about what?"

6.13. Accordingly, the Expert considers that the Complainant has no rights under Paragraph 6.1.1 of the Policy. The disputed domain name "justthefacts" is so broad and so capable of being used in a multitude of situations that it cannot possibly have the necessary distinctiveness.

6.14. This is so, even though the Respondent obviously registered the disputed domain name so as to put forward a contrary emphasis on a topic of public importance. In this aspect of public health, there could well be room for robust debate and the presentation of different approaches. The Respondent is entitled under free speech principles to express its view.

6.15. The Respondent does not wish to sell the disputed domain name and make a profit out of selling the disputed domain or to have the public confuse its activities with those of the Complainant. It makes no reference to the Complainant's material in its website although it clearly does not agree with some of the Complainant's views. A brief perusal of the two websites will show how different the two approaches are.

7. Decision

7.1. Given the above finding, it is not necessary to consider whether the domain name constitutes unfair registration. On this topic, the Expert notes that one of the non-exhaustive factors which may be evidence that a domain name is not an unfair registration is in paragraph 6.1.2 of the Policy:

  • "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."

7.2. The Expert must direct that the disputed domain name remain with the Respondent.

Place of decision: Auckland

Date: 7 December 2015

Expert Name: Hon Sir Ian Barker QC

Signature: