DRS Reference: 1203
Noel Leeming Group Limited v Pioneer Enterprises Limited
Key words -
Rights in registered trademarks - Unfair Registration - Unfair Use - likely to confuse, mislead or deceive
Noel Leeming Group Limited
PO Box 33470,
Pioneer Enterprises Limited
AG (ANTIGUA AND BARBUDA)
2. Domain Name/s
3. Procedural history
The Complaint was lodged on 14 December 2016 and Domain Name Commission (DNC), notified the Respondent of the validated Complaint on 19 December 2016. The domain/s were locked on 14 December 2016, preventing any changes to the record until the conclusion of these proceedings.
No response was filed.
The Complainant paid Domain Name Commission Limited the appropriate fee on 11 February 2017 for a decision of an Expert, pursuant to Paragraph 9 of the .nz Dispute Resolution Service Policy ("the Policy").
Barry Paterson QC, the undersigned, ("the Expert") confirmed to the DNC on 27 February 2017 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. The Complainant, The Noel Leeming Group Limited, is a wholly owned subsidiary of The Warehouse Group Limited. The Complainant has 77 stores nationwide in New Zealand and is a technology and appliance retailer. In the last financial year its sales exceeded $752 million.
4.2. The Complainant states that it has been trading in New Zealand for over 100 years and that the Noel Leeming brand has been in the market since 1973. It also markets the Bond & Bond brands which have been in the market for many decades.
4.3. The Complainant retails its products both through its 77 stores as well as online through its website www.noelleeming.co.nz.
4.4. As noted below, its registered trademarks cover a wide range of technology and appliances.
4.5. The Complainant owns a significant number of domain names and extensions. They include noelleeming.co.nz, noelleeminggroup.co.nz, noeleeming.co.nz and noelleemingcareer.co.nz.
4.6. The Complainant provided evidence of seven trademarks originally registered in its name but now owned by its parent company and made available for the Complainant's use. Some of these were registered as a result of applications made in 1999 while others have been registered since but before the registration of the Domain Name. It is not necessary to give particulars of all seven trademarks nor of the extensive range of goods and services in respect of which the trademarks have been registered. The relevant trademarks for the purposes of this Complaint include:
- (a) Registered trademark 604794 for the name NOEL LEEMING registered in respect of class 9 of the Nice Classification which includes electric and electronic instruments and apparatus, photographic instruments and apparatus, computers, printers, calculating machines and other similar items.
(b) Registered trademark 604801 registered in respect of class 41 of the Nice Classification which includes the name NOEL LEEMING for education, providing of training, entertainment services, and rental of entertainment and educational equipment.
(c) Registered trademark 714092 for several classes of the Nice Classification which includes a wide range of goods and services including those already referred to and also including the retailing and wholesaling of electrical and electronic instruments, apparatus for lighting, heating, cooking, refrigeration, drying and ventilation (Classes 9, 11, 16, 35, 36, 37, 38 and 41). This is a combined trademark "Noel Leeming www.noelleeming.co.nz". There is also a picture with the Noel Leeming insignia.
(d) Registered trademark 748278 for the name "Noel Leeming" for a similar range of goods and services to those subject to trademark 714092. There is also the Noel Leeming insignia.
(e) Registered trademark 1004460 for the name NOEL LEEMING LIFESTYLE APPLIANCES in respect of machines including kitchen machines, electric food choppers, blenders and many other types of machines together with household appliances (Classes 7 and 11).
4.7. The Respondent has not replied to the Complaint and is registered in Antigua.
4.8. A click-through page of the website of the Domain Name shows related links including Appliances on Sale, Mobile Deals, Laptop, LCD Television, Free Mobile App Software, and Buy a Phone Online.
5. Parties' contentions
5.1. After describing the rights which it asserted, the Complainant's submission was rather economical on facts and stated:
Therefore we believe this registration is unfair due to it be misleading and deceptive."
"We believe the domain www.noelleming.co.nz which advertises links to appliance retailers who are competitive retailers within the New Zealand market is misleading and deceiving customers into believing they are dealing with Noel Leeming Limited or a subsidiary company, or that the website is endorsed by Noel Leeming Limited, which is not the case. This confusion appears to be intentional.
Therefore we believe this registration is unfair due to it be misleading and deceptive."
5.2. No evidence of customers being misled or deceived was provided.
5.3. The Respondent has not provided a response.
6. Discussion and findings
6.1. Under paragraph 4.1 of the Policy, it is necessary for the Complainant to establish:
- 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.
6.2. The Complainant relies upon registered trademarks to establish its Rights. The more significant and relevant ones are referred to above. The Domain Name when both the top and second level domains are ignored is "noelleming". The relevant registered trademarks are NOEL LEEMING, Noel Leeming and www.noelleeming.co.nz. The Domain Name differs from these trademarks in that there is an absence of "e" in the Domain Name, the Domain Name is one word rather than two as it appears in the trademarks, and the Domain Name is in lower case where upper case is used in some of the trademarks.
6.3. In my view, the Domain Name is similar to the Complainant's registered trademarks as the minor differences do not distinguish it from the trademarks. I am satisfied that the requirement of paragraph 4.1.1 of the Policy has been satisfied.
6.4. In respect of the requirement in paragraph 4.1.2 of the Policy, the submission noted above is in effect that the registration of the Domain Name is unfair "due to it being misleading and deceptive". As noted above, the Complainant has not provided evidence that the Domain Name has misled or deceived.
6.5. Unfair Registration as defined in paragraph 3 of the Policy includes a Domain Name which "... 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".
6.6. The definition of Unfair Registration noted above includes that the Domain Name "is likely to be used in a manner which took unfair advantage or was unfairly detrimental to the Complainant's Rights".
Paragraph 5 of the Policy sets out non-exhaustive factors which may be evidence that the Domain Name is an Unfair Registration. Clause 5.1.2 states:
"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."
6.7. The issue is whether the click-through page of the Domain Name's website noted in paragraph 4.8 above is likely to confuse, mislead or deceive people into believing the Domain Name is operated by or otherwise authorised by the Complainant.
6.8. The Complainant is a major retailer of home appliances and electrical goods in New Zealand and deals in home appliances, computers and tablets, phones, televisions, audio equipment and other technology products. The click-through page of the Domain Name's website refers to appliances for sale, mobile deals, laptop, LCD televisions, free mobile apps software and phones. Actual and potential clients of Noel Leeming wishing to contact it will be misled or confused if on an internet search they view the website "noelleming.co.nz" and its click-through page. Most of the products on the click-through page are products supplied nationally by the Complainant. In my view the similarity between the Domain Name and the Complainant's Rights is likely to confuse, mislead or deceive customers who will associate the website and the products with the Complainant.
6.9. The fact that the Respondent has not responded to the Complaint means that it is not necessary to consider paragraph 6 of the Policy which sets out a non-exhaustive list of factors which may be evidence that the Domain Name is not an Unfair Registration.
6.10. I therefore conclude that the Complainant has satisfied the Unfair Registration provisions of the Policy.
I direct that the Domain Name be transferred to the Complainant.
Place of decision Auckland
Date 10 March 2017
Expert Name Hon Barry Paterson QC