DRS Decision 1211

.nz Dispute Resolution Service DRS Reference: 1211

Nexia International Limited; v Shane Plummer

Key words – Names identical to registered marks – Unfair Registration – offer to lease name – blocking registration

Non-standard submission – Expert’s directions

1. Parties

Complainant:

Nexia International Limited;
2nd Floor
Sixty Circular Road
Douglas
Isle of Man

Represented by Scott Moran of Duncan Cotterill, Solicitors, Wellington

Respondent:

Shane Plummer
No Address provided other than an email address and “Australia”

2. Domain Name/s

nexia.co.nz nexia.nz

3. Procedural history

3.1. The Complaint was lodged on 27 February 2017 and Domain Name Commission (DNC), notified the Respondent of the validated Complaint on 28 February 2017. The domain/s were locked on 27 February 2017, preventing any changes to the record until the conclusion of these proceedings.

3.2. No Response in standard form was received by the Domain Name Commission. However, on 11 April 2017, the Respondent filed a non-standard submission.

3.3. The Complainant paid the Domain Name Commission Limited the appropriate fee on 07 April 2017 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 12 April 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. Non-standard submission

4.1. On 11 April 2017, the Respondent filed a non-standard submission. He also requested that the Expert send the case to be mediated.

4.2. On 13 April 2017, after considering the first paragraph of the parties’ non-standard submissions in accordance with paragraph B12.2 of the Policy, and to ensure that this case was considered and determined in accordance with the rules of natural justice and the provisions of the Policy, the Expert issued the following directions:

(a) pursuant to paragraph B12.2 of the Policy, the DNC shall email to the Complainant the Respondent’s non-standard submission;

(b) by 3 May 2017, the Complainant may submit a reply to the Respondent’s non-standard submission. The reply must comply with the requirements of paragraph B5.1 of the Policy;

(c) in view of the Respondent’s non-standard submission, and the need for the Complainant to be given an opportunity to respond to the Respondent’s non-standard submission, the time for the delivery of the Expert’s decision in this case is extended pursuant to paragraph B15.2 of the Policy to 17 May 2017.

(d) the Expert has no jurisdiction to order a mediation of this dispute, as require by the Respondent and therefore declines to so order.

4.3. The DNC emailed the Expert’s directions to the parties. The Complainants filed a reply to the Respondent’s non-standard submission on 3 May 2017.

5. Factual background

5.1. The Nexia Group has been operating internationally since 1971 using the Nexia branding on its online business letters and websites. It is a worldwide network of independent accountancy and consulting firms. It has owned the Domain Name since 1995.

5.2. Nexia (NZ) Limited (“Nexia NZ”) was incorporated in New Zealand on 24 July 2003. It forms part of the Nexia Australia component of the Complainant, Nexia International Limited (“Nexia International”) which was incorporated in the Isle of Man on 4 April 1991 and in Jersey on 10 April 1991. The Nexia Group operates in 115 countries and its 2015 fee income was some USD3.2 billion.

5.3. The Complainant, Nexia International, owns a registered EU trademark EU003129591 for the word NEXIA which was filed on 11 April 2003 and registered on 1 July 2003. It had previously owned United Kingdom trademarks for NEXIA which have now expired but which had been filed on 23 May 1991.

5.4. Nexia International is the owner of an Australian registered trademark for NEXIA filed on 9 March 2011 and registered on 8 July 2013.

5.5. Nexia International is the owner of New Zealand registered trademark No. 1048892 for NEXIA with a deemed registration date of 10 August 2016. Nexia International had been the owner of New Zealand registered trademarks for NEXIA with a deemed date of registration of 28 May 1991. These marks expired on 29 May 2013. A Christchurch company, Nexia Christchurch Limited, is connected to the Nexia Group and uses the Domain Name .

5.6. The Disputed Domain Name was registered by the Respondent on 13 October 2014. The Disputed Domain Name was registered by the Respondent on 8 October 2004.

5.7. In his non-standard submission, the Respondent provided no postal address, despite a request from the Domain Name Commission on 28 February 2017 to provide one. Nor did he provide a physical address to the Registrar when he registered the Disputed Domain names in 2004 and 2014. Then only information noted by the Registrar concerning the Respondent was “Registrant Contact” Australia, “Registrant Contact Postal Code” 3000, “Registrant Contact Country” New Zealand, “Registrant Contact Phone” +6177777777 and “Registrant Contact” . None of this information reveals the Respondent’s postal address. One would have expected a Registrar to require a postal address to be nominated at the time of registration and for the Respondent to have provided one in his Response.@hotmail.com>

5.8. According to website data produced by the Complainant, the Respondent appears to be a New Zealand-educated professional with experience in the IT industry. However, in his non-standard submission, he claims to be the director of a New Zealand company called Nexia Limited which he says is a property management company.

5.9. Neither of the Disputed Domain Names currently resolves to an active website.

5.10. On 10 August 2016, a representative of Nexia ANZ communicated with the Respondent about taking over the name. The Respondent said that that name was currently in use and not for sale but that he would lease the Domain Name to the Nexia Group for 10 years for AUD2,500 per year. After that time, it would be transferred to Nexia.

5.11. The Complainant alleged that the Respondent had been employed by Nexia Australia in Melbourne around the time of registration of and that he had been involved in registering all Nexia-related IT subscriptions using the Nexia ANZ email address. In his non-standard submission, the Respondent denied he was employed by Nexia and that he did not manage administration for Nexia. The material about the Respondent annexed to the Complaint which are clearly biographical details prepared by him, shows him claiming to have been employed by Nexia Australia in Melbourne for a year in 2003-4.

6. Parties’ contentions

(a) Complainant

6.1. The Complainant has rights in the various trademarks as set out above.

6.2. The registration of the Disputed Domain Names is unfair. The Disputed Domain Names are identical to the registered trademark NEXIA.

6.3. The Disputed Domain Names were registered by the Respondent in bad faith in circumstances indicating that the name would be registered to a Nexia entity. Likewise, the other Disputed Domain Name which was registered soon after names with the sole suffix .nz, became able to be registered.

6.4. The Disputed Domain Names to not resolve to active websites and never have done so. They are being retained by the Respondent for the purposes of renting for valuable consideration.

6.5. The Disputed Domain Names are likely to mislead or confuse internet users who could well think the Disputed Domain Names are registered to and hosted by a member of the Nexia Group. The Nexia Group requires the Disputed Name Names for its business.

(b) Respondent

6.6. The Disputed Domain Name is needed by the Respondent for a planned delivery of on-line services for his property management company. No details of the proposed use or any preparations therefor were given.

6.7. Nexia NZ, is a holding company with no staff and the request for transfer is from Nexia Australia. Similar industry-structured companies have their web and email addresses under an international company. The Complainant should use a more appropriate domain name.

6.8. Nexia is a common name used in many countries and is not exclusive to the Complainant.

6.9. The Respondent asked the Panel to view a number of websites which show use of the name NEXIA unconnected with accounting services.

(c) Complainant’s Reply

6.10. The Respondent’s non-standard Response carries a number of irrelevant matters e.g. that NZ Nexia has no staff and is a holding company. The Complainant addressed only relevant issues.

6.11. The Respondent was employed by an accountancy firm in Melbourne, Alexander & Spencer in 2003-4. This firm was a member of Nexia Australia under licence from Nexia International. In 2004, the firm changed its name to Nexia Alexander & Spencer and later to Nexia ASR. In 2012, it became Nexia Melbourne and later Nexia Australia. The Respondent’s statement of experience annexed to the Complaint shows him employed by Nexia Australia in (2003-4 (1 year))”.

6.12. The Respondent presented a Certificate of Incorporation from the New Zealand Registrar of Companies showing that his company Nexia Limited was incorporated on 15 March 2017, some four weeks after the Complaint was filed with DNC.

6.13. The Respondent claimed that the Domain Name is being used misleadingly when it redirects to due to a merger in April 2016 between RSM New Zealand and Nexia’s Auckland operations. This is an interim solution and that the name will be transferred to Nexia Group.

6.14. The Complainants object to a suggested compromise offer of the Respondent’s to transferring to the Respondent because the Respondent would still have access to the more popular Domain Name.

6.15. The Respondent has not supplied any evidence of a legitimate connection between himself and the disputed domain names. No information about his company’s trading activities is provided. The Respondent has not used or made demonstrable preparations to use the Disputed Domain Names in connection with a genuine offering of goods or services before becoming aware of the Complaint.

6.16. The websites which the Respondent asks the Expert to view are irrelevant and deal with completely different topics from accounting services.

6.17. The Respondent has not explained why the Disputed Domain Names have been passively held.

7. Discussion and findings

7.1. The dispute is governed by the following relevant portions of the Policy:

  • 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

    4.1.2 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 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 correspondent 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 Registrant as the Registrant of thee Domain Name;”

7.2. In order to support a complaint 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 Respondent (para 4.1.2).

Each of these elements is addressed below.

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

(a) 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.

(b) 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 primary question is whether some disadvantage or detriment occurs in relation to Complainant’s Rights.

(c) Complainant must 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 Respondent.

(d) The Complainants own separate trade mark registrations for the NEXIA Mark in New Zealand and elsewhere.

(e) The Respondent does not dispute these assertions.

On this basis, the Expert is satisfied that Complainant has established sufficient Rights in respect of a name or mark which is identical to the Domain Name.

7.4. Identity or similarity (Para 4.1.1 of Policy)

(a) The Complainant’s Mark and the Domain Name both contain, as an essential part, the word “Nexia”. The mark and the disputed domain names are identical.

(b) This ground is thus established.

7.5. Unfair registration (Para 4.1.2 of Policy)

(a) The Expert needs to be satisfied that the Respondent has registered or otherwise acquired the Domain Name primarily for certain purposes.

(b) The primary question under Rule 4.1.2 of the Policy is whether the Domain Name, in the hands of Respondent, is an Unfair Registration.

7.6. The Disputed Domain Names must imply that there is some authorisation from the Complainant for the use of the Complainant’s trademark NEXIA. Also, that the offer by the Respondent to rent the Disputed Domain Names for a considerable sum indicates that the registration of the Disputed Domain Names was designed to make money for the Respondent from this registration. Particularly this is so when one domain name has been inactive for 13 years.

7.7. The Respondent says nothing about his motivation for registering the disputed domain name in 2004. He was then employed by Nexia or its predecessor accountancy firm. The name is fairly distinctive and has a worldwide reputation for accounting and management services. The Respondent’s failure to give an explanation for the choice of name indicates registration in bad faith. Particularly so when one of the domain name has been inactive for 13 years.

7.8. The Respondent’s claim that the disputed domain names are for a property investment company are weak. No evidence was provided of any preparations for such use or indeed any proof of the operation of a property company. These failures point to a somewhat lame defence to a claim of a blocking registration.

7.9. The Respondent has conceded in effect that his registration of was not justified when he offered, as a compromise, to transfer this name to the Complainants.

8. Decision

8.1. The Complainant has made out its case for relief under the Policy. Accordingly, the Disputed Domain Names, and are to be transferred to the Complainant or its nominee.

Place of decision Auckland

Date 12 May 2017

Expert Name Hon Sir Ian Barker QC

Signature