DRS Decision 223

.nz Dispute Resolution Service

DRS Reference:     223  

Pet Mania v Petmania

Key words -

Domain Name

petmania.co.nz ("the Domain Name")

Identical or similar trade mark or name

Unregistered mark - well-known mark - trade name - similar

Unfair registration

Unfair registration - likely to confuse, mislead or deceive

1.                  Parties

Complainant:

Pet Mania (Auckland) Limited

(per Ms Anna Gervai)

45 Clyde Road

Browns Bay

Auckland

New Zealand

Respondent:

Terra Yi

Petmania

29 Raymond Terrace

Northcote

North Shore

Auckland

New Zealand

2.                  Domain Name/s

petmania.co.nz ("the Domain Name")

3.                  Procedural history

3.1             The Complaint was lodged on 22 August 2007 and InternetNZ, through the Office of the Domain Name Commissioner, notified the Respondent of the validated Complaint on 27 August 2007.  The domain/s were locked on 22 August 2007, preventing any changes to the record until the conclusion of these proceedings.

3.2             There was no response filed by the Respondent.

3.3             The Complainant paid InternetNZ the appropriate fee on 28 September 2007 for a decision of an Expert, pursuant to Paragraph 9 of the InternetNZ Dispute Resolution Service Policy ("the Policy").

3.4             Hon. Robert Fisher QC, the undersigned, ("the Expert") confirmed to InternetNZ on 28 September 2007 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             In about 1991 a now defunct company, Pet Mania Ltd, began operating a retail pet store at 45 Clyde Road, Browns Bay, on the North Shore of Auckland using the name "Pet Mania". 

4.2             On an unspecified date in 2003 that business was purchased by a newly incorporated company, the present Complainant, Pet Mania (Auckland) Ltd.  The Complainant has operated the business at the same address, under the same name "Pet Mania", ever since.  The vendor company, Pet Mania Ltd has since been struck off.

4.3             The Respondent, Terra Yi lives at 29 Raymond Terrace, Northcote, also on the North Shore of Auckland. On 21 April 2003 she registered "petmania.co.nz" as the Domain Name with InternetNZ.  She has since used the website for the online sale of pets and associated products. Her website is self-described as "the untimate [sic] place to find all the information you need about pets and also we provide venue [sic] for people to trade their pet and its related goods".

4.4             Upon taking over the Browns Bay business the Complainant decided to register "petmania.co.nz" as its domain name.  Finding that the Respondent had already registered that name, the Complainant instead registered the name "madaboutpets.co.nz". It has since used that domain name as its business website for the sale of pets and associated products. It has used "petmania@paws.co.nz" as its email address and "Pet Mania" as the trading name of its business.

5.                  Parties' contentions

5.1             The Complainant argues that the Domain Name should be transferred to it on the grounds that its own business is very well known as one of the oldest and the biggest pet stores on the North Shore;  that there is a high likelihood that the Respondent was aware of the Complainant's business and business name when she registered the Domain Name given that she was also a resident of North Shore; that the Respondent's use of the Domain Name is an infringement of registered trade marks under the Trade Marks Act 2002; and that the Respondent's use of the Domain Name is likely to mislead and cause deception contrary to the Fair Trading Act 1986.

5.2             The Respondent has not advanced any argument or case in opposition to the Complainant's case.

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 InternetNZ. Critical portions of the Policy for present purposes are these:

"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 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 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             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).

7.                  (a) Rights in respect of a name or mark

7.1             I accept that by the time the Respondent registered the Domain Name in 2003 there already existed a pet retail business with an established reputation associated with the name "Pet Mania".

7.2             No evidence has been advanced by the Complainant to support its claim that it has rights in that name under the Trade Marks Act 2002.  Nor is it established that the Complainant was the company which had the established reputation when the Respondent registered the Domain Name. Strictly speaking at that time it was the now defunct vendor company Pet Mania Ltd which had built up that reputation.

7.3             However I am prepared to assume that when the Complainant purchased the business, it continued to operate it from the same address, with a significant overlap in staff, business systems, business sources and customer lists. I am accordingly prepared to assume that there was  sufficient continuity to entitle the Complainant to regard itself as the successor of an unregistered trade mark for the purposes of a common law action for passing off (see Tot Toys Ltd v Mitchell [1993] 1 NZLR 325 at 348, 349).  It accordingly had, and continues to have, common law rights in the name "Pet Mania".

7.4             I am also prepared to assume that for the purposes of the Fair Trading Act 1986 there was sufficient association between the name "Pet Mania" and the business acquired by the Complainant to make it misleading or deceptive conduct for another person to use that name in the same line of business in circumstances which would falsely convey the impression that the user of the name had some form of association with the original business. The Complainant accordingly had and has a statutory right in the name in the limited sense that it could bring a civil action claiming compensation for a breach of obligations under that Act.

7.5             For those reasons I accept that at the time when the Respondent registered the Domain Name, and at present, the Complainant had and has rights in respect of the name "Pet Mania". 

8.                  (b) Identical or similar

8.1             The second requirement is that the Complainant show that the Domain Name is "identical or similar" to the name or mark in respect of which the Complainant has rights.

8.2             In the present case the Domain Name "petmania.co.nz" is not identical to the name "Pet Mania" but it is undoubtedly similar.  For this purpose the suffixes ".co.nz." are immaterial.  The word "petmania" is simply the same two words run into one. 

9.                  (c) Unfair registration

9.1             The Policy includes a non-exhaustive list of factors which may be evidence of unfair registration (paras 5.1.1 to 5.1.5).

9.2             The material factor in the present case is "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".

9.3             There is no direct evidence that the Respondent's use of this Domain Name has confused, misled or deceived.  However, the Domain Name and the name of the Complainant's business are being used in the same line of business.  Although geographical location is normally less significant in businesses conducted online, it seems a reasonable inference that at least a substantial proportion of those customers on the North Shore of Auckland who are making all or part of their pet purchases online would associate the commercial source with the Complainant's business.

9.4             I am also prepared to conclude from the established commercial history of the Complainant's business, and the joint location on the North Shore of Auckland, that the Respondent was aware of the use of the name in that business at the time that the Respondent registered the Domain Name and that she was aware of the likelihood that there would be indirect benefits to her new online business in misleading at least some purchasers into thinking that the two businesses had a common commercial origin.

9.5             I conclude that in terms of para 5.1.2. there are circumstances demonstrating that the Respondent is using the Domain name in a way which is likely to confuse, mislead or deceive people into believing that the Domain Name is connected with the Complainant.  I also conclude that the Respondent's registration was an unfair one for the purposes of para 5 of the Policy.

10.             Decision

10.1         The complaint is upheld.  I direct that the disputed Domain Name "petmania.co.nz" be transferred to the Complainant.

 

Place of decision          Auckland  

Date                               02 October 2007

Expert Name                 Hon Robert Fisher QC

 

Signature