DRS Decision 1191

.nz Dispute Resolution Service DRS Reference: 1191

NZ Directories IP Limited v Domforce Ltd

Key words -

Registered mark - unregistered mark - well-known mark - Unfair registration - unfair use -likely to confuse, mislead or deceive - pattern of registration- unfairly disrupting the business of the complainant - blocking registration - presumption of unfair registration - respondent having no connection with name or trade mark

1. Parties

Complainant:

NZ Directories IP Limited
Level 2, 604 Great South Road, Ellerslie,
Auckland
New Zealand

Respondent:

Domforce Ltd
Suite 508,
Marina Towers
Newtown
Barracks Road
Belize City
BZ (BELIZE)

2. Domain Name/s

wisesmaps.co.nz

3. Procedural history

3.1. The Complaint was lodged on 01 September 2016 and Domain Name Commission (DNC) notified the Respondent of the validated Complaint on 05 September 2016. The domain/s were locked on 05 September 2016, preventing any changes to the record until the conclusion of these proceedings.

3.2. No response was received.

3.3. The Complainant paid Domain Name Commission Limited the appropriate fee on 13 October 2016 for a decision of an Expert, pursuant to Paragraph 9 of the .nz Dispute Resolution Service Policy ("the Policy").

3.4. Robert Fisher QC, the undersigned, ("the Expert") confirmed to the DNC on 20 October 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. For many years the Complainant and its associated companies have sold maps, street directories and guidebooks under the name "Wises". A widespread commercial reputation and goodwill resulted. The reputation has been supported by the trademark "WISES" which was registered in 2000 for "publications, maps, directories, guide books". Other trademarks combining the word "WISES" with words designating those products were also registered. In 1997 the complainant registered the domain name "Wises.co.nz".

4.2. The Respondent operates from an address in Belize. There is no evidence to suggest that it conducts business in New Zealand or has any firm connection with New Zealand other than to register domain names here. There is no evidence to suggest that it has a business of any kind other than to register domain names and use them for pay per click (PPC) landing pages through a German domain name Registrar.

4.3. On 1 March 2015 the Respondent registered the domain name, wisesmaps.co.nz. Following registration the Respondent parked the domain name with a domain name parking service provider to generate a PPC landing page. Internet users who enter the domain name in the address bar of their browser are directed to a list of related links. The related links click through to advertisements for on-line maps offered at websites in competition with the Complainant.

5. Complainant's contentions

5.1. The Complainant contends that it has rights in the mark WISES and its associated names, that wisesmaps.co.nz is similar to its mark, and that in the hands of the Respondent the domain name is an unfair registration.

5.2. As to unfair registration the Complainant alleges that its well-known name was registered primarily for the purposes of selling, as a blocking registration, and for the purpose of unfairly disrupting the Complainant's business. It also points to a pattern of similar registrations by this Respondent.

5.3. The Complainant further says that the use to which the Respondent is putting the domain name through the PPC landing page is likely to confuse, mislead or deceive. Finally the Complainant says that the Respondent must have been aware of the Complainant's interest and reputation in the "WISES" brand when the Respondent registered the domain name.

6. Respondent's contentions

6.1. The Respondent has not filed any response.

7. Discussion and findings

7.1. The dispute is governed by the Policy issued by Domain Name Commission Ltd on behalf of InternetNZ. Critical portions of the Policy for present purposes are:

 

  • 3. Definitions …

    Rights includes, but is not limited to, rights enforceable under New Zealand law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business.

    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

    4.1.2 The Domain Name, in the hands of the 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 that 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;

    5.2 Failure on the Respondent's part to use the Domain Name for the purposes of email or a website is not in itself evidence that the Domain Name is an Unfair Registration.

    6. How the Respondent may demonstrate in its Response that the Domain is not an Unfair Registration

    6.1. A non-exhaustive list of factors which may be evidence that the Domain Name is not an Unfair Registration is set out in paragraphs 6.1.1 - 6.1.4:

    6.1.2 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. It will be seen that to support a complaint of this kind the Complainant must satisfy three elements:

 

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

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

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

8. Rights in respect of a name or mark

8.1. The Complainant has demonstrated rights in the name "WISES" including the right to associate that word with maps. In the case of the registered trademark the class for which the mark is registered includes maps. In the case of the common law rights in that name, the commercial reputation is associated with the offer of maps for sale.

9. Identity or similarity between the name or mark and the domain name

9.1. The domain name registered by the Respondent represents a combination of the Complainant's trademark and a reference to the goods or services for which the Complainant uses the mark. In those circumstances, the name or mark in which the Complainant has rights can be regarded as "similar to" the domain name for the purposes of para 4.1.1 of the Policy.

10. Unfair registration in the hands of the Respondent

10.1. The Policy contains a non-exhaustive list of factors which may be evidence of unfair registration (paras 5.1.1 to 5.1.5). This case represents something of a tour of the ways in which a registration may be or become unfair for those purposes.

10.2. First, there is the fact that at the time of registration a simple Google search would have made the Complainant's reputation in the WISES brand obvious and that the Respondent' has parked the domain name with a PPC landing page leading to the Complainant's competitors. That combination warrants the inference that the purpose of the registration was threefold: to sell the domain name to the Complainant (Policy 5.1.1(a)), and in the meantime to incentivise the Complainant to purchase by using the domain name as a blocking registration in the meantime (para 5.1.1(b)) and to unfairly disrupt the business of the Complainant (para 5.1.1(c)).

10.3. Secondly, the fact that the PPC site redirects internet users to competitors in the same field justifies the conclusion that the Respondent is using the domain name in a way which is likely to confuse, mislead or deceive people into believing that there is an association between the domain name and the Complainant (para 5.1.2).

10.4. Thirdly, the evidence is that the Respondent has unfairly registered other popular domain names. Examples are misspellings of popular domain names such hearld.co.nz (a misspelling of nzherald.co.nz), quontas.co.nz (a misspelling of qantas.co.nz) and warehousestationary.co.nz (a misspelling of warehousestationery.co.nz). It is a reasonable inference that the Respondent has engaged in a pattern of registrations where the domain names registered by the Respondent correspond to well-known names or trademarks in which the Respondent has no apparent rights (para 5.1.3).

10.5. Fourthly, it is a reasonable inference that the Respondent has deliberately chosen a name similar to that of the Complainant with a view to its exploitation through confusion. This too is a recognisable form of unfair registration: see DRS615 EHarmony, Inc v Craig Cooper, 24.2.2011.

10.6. All three of the elements required for a successful complaint are satisfied.

11. Decision

11.1. The complaint is upheld. The disputed domain name "wisesmaps.co.nz" is to be transferred to the Complainant or its nominee.

Place of decision Auckland

Date 31 October 2016

Expert Name Hon Robert Fisher QC

Signature