DRS Decision 1187

.nz Dispute Resolution Service

DRS Reference: 1187

New Plymouth District Council v Chris Pulford

Key words -

Domain name

newplymouthnz.co.nz

Identical or similar trade mark or name

Geographical identifier - identical - generic - descriptive

Rights

Legitimate non-commercial or fair use - criticism and commentary

Unfair registration

Unfair use - fair registration - likely to confuse, mislead or deceive - unfairly disrupting the business of the complainant

1 Parties

Complainant:

New Plymouth District Council
Liardet Street
Private Bag 2025
New Plymouth 4342
NEW ZEALAND

Represented by: Katrina Brunton
Customer and Regulatory Solutions Manager
New Plymouth District Council

Respondent:

Chris Pulford
68 McGiven Drive
RD1
New Plymouth
NEW ZEALAND

Self Represented

2 Domain Name

2.1 newplymouthnz.co.nz (the "Domain Name")

3 Procedural history

3.1 The Complaint was lodged on 17 August 2016. The Domain Name Commission (DNC) notified Respondent of the validated Complaint on 18 August 2016. The domain was locked on 18 August 2016, preventing any changes to the record until the conclusion of these proceedings.

3.2 Respondent filed a Response to the Complaint on 11 September 2016 and the DNC so informed Complainant on 21 September 2016. Complainant filed a Reply to the Response on 26 September 2016. The DNC informed the parties on 19 October 2016 that informal mediation had failed to achieve a resolution to the dispute.

3.3 Complainant paid Domain Name Commission Limited the appropriate fee on 08 November 2016 for a decision of an Expert, pursuant to Paragraph 9 of the .nz Dispute Resolution Service Policy ("the Policy").

3.4 Clive Elliott Q.C, the undersigned, ("the Expert") confirmed to the DNC on 16 November 2016 that 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 New Plymouth District Council is a body corporate duly constituted under the Local Government Act 2002.

4.2 Respondent resides in New Plymouth. He registered the Domain Name on October 10, 2003.

5 Parties' contentions

5.1 Complainant

5.1.1 The New Plymouth District Council (the "Council" or "Complainant") owns a number of domain names including ("Complainant's Domain Name") which resolves to Complainant's primary website ("Complainant's Website"). The Council owns six other domain names which also link to Complainant's Website.

5.1.2 The Council has been using Complainant's Website for at least 13 years. Complainant's Domain Name is said to be printed on all Council forms, letterhead, invoices, business cards and advertising material.

5.1.3 On 27 June 2016, it came to the Council's attention that the website resolving to the Domain Name ("Respondent's Website") contained offensive material, an unauthorised photograph of a Council employee and potentially defamatory comments about a Council employee and former Council employee.

5.1.4 The Domain Name is identical to Complainant's Domain Name apart from the .com and is an unfair registration in the hands of Respondent given the nature of the content on Respondent's Website and is likely to have an adverse effect on the Council's business.

5.1.5 On 29 June 2016, Complainant wrote to Respondent requesting him to remove the offensive content and photograph from Respondent's Website within 24 hours and cease and desist from posting offensive material on the said website about the Council and its employees.

5.1.6 On 1 July 2016, Respondent telephoned Complainant in response to the 29 June letter and stated that he had no intention of removing the content and was not going to desist from using the Domain Name.

5.1.7 On 4 July 2016, it came to Complainant's attention that Respondent had redirected the website to pornographic material on another website, there being no blocker to prevent any person under 18 years from accessing the material which is obscene and extremely offensive.

5.1.8 On 12 July 2016, Complainant wrote to the Registrar (Freeparking Ltd) advising them of the situation and Complainant's concern that Respondent's Website was likely to cause confusion given the Domain Name was so similar to Complainant's Domain Name. Complainant requested that the Registrar temporarily block Complainant's Website, and redirect it to Complainant's Website or provide a blocker to age restrict access. As at 16 August 2016, Complainant had not received a response from Freeparking and the Domain Name was still directed to pornographic material.

5.1.9 Complainant considers that the Domain Name registration as it stands is an unfair registration, and submits Respondent has registered the Domain Name primarily for the purpose of unfairly disrupting the Council's business.

5.1.10 Complainant advises it launched a new website on August 23, 2016 and is concerned that members of the public may inadvertently access Respondent's Website instead of Complainant's Website. It asserts that the Domain Name is likely to confuse, mislead or deceive people or businesses into believing that it is registered to, operated by or otherwise connected to Complainant.

5.1.11 Complainant considers that the Domain Name is being used and is likely to be used in a manner unfairly detrimental to the Council's rights.

5.1.12 Finally, Complainant states that on 16 August 2016 it submitted an online Content Complaint Form to the Department of Internal Affairs (via netsafe.org.nz) regarding the content of the pornographic and objectionable material on Respondent's Website requesting that the content be removed from the website.

5.2 Respondent

5.2.1 In response, Respondent states that he has owned the Domain Name for approximately 13 years and during the majority of this time Respondent's Website has been re-directed to various business interests that he has had including a bed and breakfast business based in New Plymouth.

5.2.2 Respondent advises that the Domain Name was chosen as it includes the city that his business activities are based in. Respondent considers that Complainant does not have any rights to the Domain Name as it is location based and not descriptive of Complainant's services, nor is it alike to any other local government domains.

5.2.3 Respondent asserts that he has had the Domain Name included on various business stationery over the years and at times he has also re-directed the address to local events and charities, claiming that it is a 'location' based theme.

5.2.4 Respondent accepts that he has recently had a difference of opinion with Complainant over several staff members and as a result he redirected the Domain Name. Respondent denies that he is the owner or author of the objectionable content.

5.2.5 Respondent disputes the suggestion that Complainant has suffered disruption to Council business because of the redirection of the Domain Name and believes the Council are attempting to bully him and have the Domain Name stripped from him.

5.3 Complainant's Response

5.3.1 Complainant disputes Respondent's claim that Complainant has no rights to the Domain Name as the Domain Name is location based and not descriptive of Complainant's services, nor is it alike to any other local government domain, and says further that the Domain Name is identical to Complainant's Domain Name apart from the addition of .com.

5.3.2 Complainant rejects Respondent's claim that he has never had content on Respondent's Website, as on 27 June 2016, it came to Complainant's attention that Respondent's Website contained offensive material, with an unauthorised photograph of a Council employee and potentially defamatory comments about a Council employee and former Council employee. Complainant states that when they requested Respondent to remove this content by telephone and in writing, Respondent stated that he had no intention of removing the content and was not going to desist from using the Domain Name.

5.3.3 Complainant confirms that it has been dealing with Respondent on a separate matter involving its Animal Control Team, but denies the allegation that its staff are corrupt. Complainant says further that its staff have been working with Respondent for some time to resolve the issues and during this time offensive material, an unauthorised photograph of a Council employee (taken by Respondent) and potentially defamatory comments about a Council employee and former Council employee were posted on Respondent's Website.

5.3.4 Complainant also refutes Respondent's claims that there was no disruption to Council business based on the redirection of the Domain Name. Complainant submits that the redirection of the Domain Name to offensive material, initially Council employees, and then to pornography has caused considerable disruption to Council business. The launch of the new Council website was delayed by approximately 1 to 2 months because of the content on Respondent's Website, as the Council was initially concerned that members of the public may get confused if they inadvertently accessed Respondent's Website instead of Complainant's Website and read offensive material about a Council employee and former Council employee. Once the Domain Name was redirected to pornographic material, the Council was particularly concerned that persons under 18 years may inadvertently access pornographic material when searching for Complainant's Domain Name.

5.3.5 Complainant asserts that significant staff time has been spent trying to deal with Respondent on both his initial complaint regarding the Animal Control Team and then the information on his website as well as with the Domain Name Registrar (Free Parking) and the Department of Internal Affairs.

6 Discussion and findings

6.1 The dispute is governed by the Policy issued by the office of the Domain Name Commissioner on behalf of DNC. The relevant portions of the Policy for present purposes are as follows:

 

  • "3. Definitions ...

    Unfair Registration means a Domain Name which either:

    (i) 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 the Complainant's Rights; OR

    (ii) has been, or is likely to be used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

    4. Dispute Resolution Service

    4.1 This Policy and Procedure applies to Respondents when a Complainant asserts to the DNC according to the Procedure that:

    4.1.1 The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

    4.1.1 The Domain Name, in the hands of Respondent, is an Unfair Registration.

    5. Evidence of Unfair Registration

    5.1 A non-exhaustive list of factors which may be evidence that the Domain Name is an Unfair Registration is set out in paragraphs 5.1.1 - 5.1.5:

    5.1.1 Circumstances indicating the Respondent has registered or otherwise acquired the Domain Name primarily:

    (a) for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

    (b) as a blocking registration against a name or mark in which the Complainant has rights; or

    (c) for the purpose of unfairly disrupting the business of the Complainant; or

    5.1.2 Circumstances demonstrating that the Respondent is using the Domain Name in a way which is likely to confuse, mislead or deceive people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;

    5.1.3 The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under.nz or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

    5.1.4 The Complainant can demonstrate that the Respondent has knowingly given false contact details to a Registrar and/or to the DNC; or

    5.1.5 The Domain Name was registered arising out of a relationship between the Complainant and the Respondent, and the circumstances indicate that it was intended by both the Complainant and the Respondent that the Complainant would be entered in the Register as the Registrant of the Domain Name;"

6.2 In order to support a complaint Complainant must satisfy three elements:

6.2.1 Rights in respect of a name or mark (para 4.1.1);

6.2.2 Identity or similarity between that name or mark and the Domain Name (para 4.1.1); and

6.2.3 Unfair registration in the hands of Respondent (para 4.1.2).

7 Decision

7.1 Rights in respect of a name or mark (Para 4.1.1 of Policy)

7.1.1 In terms of assessing whether Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name the Expert must consider the wording of the Policy.

7.1.2 The expression "Rights" is referred to in the definition of "Unfair Registration" in paragraph 3 of the Policy. It is directed to a Domain Name which "took unfair advantage of or was unfairly detrimental to Complainant's Rights" in some way. The principal issue which needs to be determined is whether some disadvantage or detriment occurs in relation to Complainant's Rights.

7.1.3 Complainant must first establish the requisite Rights in order to establish that some form of disadvantage or detriment is likely to occur through the existence or use of the Domain Name by the Respondent.

7.1.4 Complainant asserts that it owns a number of domain names. These include Complainant's Domain Name, which resolves to Complainant's Website. Complainant also asserts that it owns six other domain names which presumably link to Complainant's Website, but without clearly identifying the domain names. Complainant did invite the Expert to visit a number of sites and the Expert infers that these websites resolve to the said domain names.

7.1.5 Complainant asserts that it has been using Complainant's Website for at least 13 years. Again, it is unclear whether this use has been in conjunction with Complainant's Domain Name and throughout the 13 year period. Further, Complainant asserts that Complainant's Domain Name is printed on all Council forms, letterhead, invoices, business cards and advertising material. It provides some evidence of a sample letterhead and sample business card. However, these are undated. Again, it is unclear from the Complaint whether the Complainant's Domain Name has been used continuously in this manner for 13 years or less.

7.1.6 It is incumbent on Complainant to establish the requisite Rights. One might have expected Complainant to have better articulated the basis upon which it claims to have Rights in the Domain Name. In the online forms available to Complainant on the DNC website is the prominently stated requirement to "Describe the Rights you claim in the name(s)". Further, complainants are advised that: "You should support your arguments with as much evidence as possible."

7.1.7 Further, the online forms stress the importance of providing supporting documents, including a tick box to remind the complainant that they need to include evidence of use of the unregistered mark or name and/or reputation in the unregistered mark or name. Finally, parties are reminded that previous decisions are published and that these can help parties formulate their case. These statements on the DNC website stress the importance of a complainant adequately formulating its case and providing supporting evidence.

7.1.8 Complainant has largely overlooked this advice and guidance. Instead, it seems that Complainant has assumed that because it represents the ratepayers of New Plymouth and operates under or by reference to a domain name which incorporates the place name "New Plymouth" that that establishes the requisite Rights.

7.1.9 While "New Plymouth" might accurately describe the District Council which provides local government services to residents of the greater New Plymouth area, it might equally well describe a separate business or civic entity which operates in the city of New Plymouth. Indeed, Respondent asserts that he has owned the Domain Name for approximately 13 years and during the majority of this time has used the Domain Name on a website which has from time to time been re-directed to various business interests in New Plymouth, including a bed and breakfast business based in the city.

7.1.10 The question of whether a party might have rights in a descriptive term particularly one having geographical significance, has been considered in a number of earlier DRS decisions. In Auckland Airport v Dave Burghardt (DRS Decision 291) which related to the domain name the Expert noted a number of similarities between the DRS Policy and the Uniform Dispute Resolution Policy (UDRP). He observed that the cases reviewed indicated that for a complainant to have rights in an unregistered mark, similar to the one in issue in this present proceeding, it must function as a trade mark.

7.1.11 The Expert went on to note that an unregistered mark must perform the function of distinguishing the goods or services of one person in trade from the goods or services of any other person in trade. In doing so he relied on the UDRP decision in Brisbane City Council v Warren Bolton Consulting Pty Ltd (Case No. D2001-0047). In Brisbane City Council the Panel summarised the relevant principles as follows: The legal authority of a geographic area does not, as a matter of principle, have an exclusive right to a name or that area. However, in certain circumstances, the legal authority of a geographical area might, depending on the actual facts, have a trade mark right in the name of that area. The Expert agrees with and adopts this approach in the present proceeding.

7.1.12 In Auckland Airport the Expert dismissed the complaint on the basis that no evidence had been advanced to show distinctiveness. Further, it was found that the complainant had failed to establish that the unregistered mark AUCKLAND AIRPORT was distinctive of the complainant or that the mark served to distinguish the complainant's mark from those of other undertakings.

7.1.13 In the present case, there is very little, if any, reliable evidence to show that Complainant's Domain Name i.e. is distinctive of Complainant or that it serves to distinguish Complainant's mark, name or business from those of other undertakings. Indeed, putting the.com/.nz distinction to one side, it is apparent that both Complainant and Respondent have, for or during the past 13 years, used concurrently a domain name comprising "newplymouthnz". This suggests that rather than distinguishing Complainant from other undertakings the term in fact denotes different entities residing or operating in the geographical area of New Plymouth. This is the antithesis of a term which is distinctive or is capable of distinguishing one entity from another.

7.1.14 In Western Bay of Plenty Tourism & Visitors Trust, Jarrad Carroll v Wayland Mark Warner (DRS Decision 1088) the complainant asserted registered and unregistered trade mark rights in the terms TOURISM BAY OF PLENTY and BAY OF PLENTY TOURISM. In that case the Expert dismissed the complaint, stating at [6.17]:

Given the highly descriptive nature of both BAY OF PLENTY TOURISM and TOURISM BAY OF PLENTY, the fact there is no evidence that the Complainant uses either of these phrases standing alone, and the absence of any information on the scale and duration of its use of its combination trade marks on promotional and other material, the Expert finds that the Complainant has not proved on the balance of probabilities that it has unregistered trade mark rights in either term.

7.1.15 In the present case Complainant has, in the absence of any real information on the scale and duration of its alleged use and as to the distinctiveness of Complainant's Domain Name, failed to prove, on the balance of probabilities, that it has Rights in its unregistered name "newplymouthnz".

7.1.16 In the Day of Plenty Tourism case, the Expert went on to consider whether the terms BAY OF PLENTY TOURISM and TOURISM BAY OF PLENTY were wholly descriptive. She concluded they were and that even if the complainant did have registered and/or unregistered rights in these terms, that it could not rely on those rights.

7.1.17 In the present case, the Expert considers that the term "newplymouthnz" is similarly wholly descriptive insofar as it describes in a direct fashion the geographical area or city New Plymouth, located in the country of New Zealand (NZ).

7.1.18 The Expert notes that through extensive use Complainant may perhaps be able to achieve some degree of distinctiveness in the term "newplymouthnz" but in the absence of any real evidence or properly directed submission on the point, Complainant has failed to establish such distinctive-ness at this time. Accordingly, the Expert is not satisfied, on the balance of probabilities, that Complainant has established Rights in respect of a name or mark which is similar to the Domain Name.

7.2 Is the domain name in the hands of the Respondent an unfair registration?

7.2.1 Given the above it is not necessary for the Expert to consider whether the Domain Name is an unfair registration. However, for the sake of completeness and in case the Expert is wrong on the issue of Rights, had the Expert found that Complainant had the requisite Rights he would have been minded to find in Complainant's favour.

7.2.2 In Yellow Holdings Ltd v Eurobelt Ltd DRS Decision 1116, on appeal, a Panel of Experts unanimously dismissed the appeal. At [13.18] to [14.8] the Panel provided a summary of both "Initial Unfair Registration - Initial UR" and "Use Unfair Registration - Use UR" principles. The Panel stressed at [13.18 (a)] that "Where reliance is placed on para 5.1.1 to establish unfair registration, the focus lies solely on the respondent's purpose at the time of registering the domain name". That must be correct. In the present case, there can be no basis for questioning Respondent's bona fides in registering and using Respondent's Domain Name 13 years ago.

7.2.3 The Panel went on to say at [14.3], in relation to "Initial UR" that although the Policy does not expressly define the word "use", the context suggests that it contemplates the active use of a domain name as a name, identifier or internet address and that the provision contemplates "use" of the domain name in a way that places it in active competition with the complainant's intellectual property.

7.2.4 Had it been necessary to apply these principles to the present situation, even though Respondent may have registered and used Respondent's Domain Name in good faith initially, the Expert would have taken the view that the situation had altered materially in 2016. In the Expert's view Respondent's recent conduct, including placing pornographic images on Respondent's Website and/or redirecting the Domain Name to one or more sites that contain pornographic material, as set out in paragraphs 5.1.7 and 5.1.8 above, would have amounted to use of the Domain Name. That is, in a manner which, in the Expert's view, would be unfair (in the sense of unfairly disrupting its business) and which would have placed Respondent in active competition or conflict with Complainant's Domain Name (its intellectual property).

7.2.5 Further, the posting of or re-direction to pornographic material would arguably be unconnected in a meaningful or material sense with criticism of, for example, council employees. It is more in the nature of an act of online revenge or "naming and shaming". In this Expert's view it would be unlikely to attract the benefit of paragraph 6.2 of the Policy as the use of the Domain Name in this particular way would not be in relation to a site operated solely in criticism of the Council.

7.2.6 Therefore, the Expert notes that had it been necessary to do so, on the basis that Complainant had established it had the requisite Rights the Expert would have found that, on balance, Respondent's recent use of the Domain Name, as set out in paragraphs 5.1.7 and 5.1.8 above, was unfair and was detrimental in relation to Complainant's Rights. However, absent the requisite Rights, Complainant is not entitled to the remedy it seeks.

8 Decision

8.1 For the reasons set out above Complainant has failed to satisfy the first limb of the test under the Policy and the Complaint is dismissed.

Place of decision: Auckland

Date: December 9, 2016

Expert Name: Clive Elliott Q.C.

Signature