In 2006 the Domain Name Commissioner established the Dispute Resolution Service, aimed at providing an alternative to court for domain name disputes.
While over 90% of the complaints which have proceeded to hearing have been successful, the unsuccessful complaints show that it is important to get your evidence right. Looking at it from the other perspective, the best way to lose a case is to underestimate the process and fail to provide sufficient relevant evidence.
The DRS system
Prior to the introduction of the DRS system complainants needed to take an action for passing off and breach of the Fair Trading Act 1986 in the District Court or the High Court, or in the High Court if the claim also relied upon infringement of a registered trade mark. The DRS system was introduced in light of concerns about the cost of bringing such cases.
The DRS has become an attractive option to complainants because it has specific policy rules for determining disputes, a relatively short procedure and well-qualified and respected decision-makers sitting as Experts. This combination of factors also means that it is usually much cheaper than court proceedings.
In 2009 I wrote an article for the New Zealand Law Journal examining the first two and half years of operation of the DRS. I found that the system appeared to be working well and had found favour with complainants, who were complaining to the DRS rather than referring disputes to the courts.
One my key conclusions was that a recurrent theme with unsuccessful complaints was the failure to instruct New Zealand counsel with appropriate specialist expertise. In some cases this had a direct impact on the outcome, in that complaints were rejected which would otherwise have succeeded. Unfortunately a recent DRS decision illustrates that the same mistakes are still being made by some complainants.
Wellingtongolfcenter.co.nz
Wellington Golf Centre Limited v Ricky Faesen Kloet (DRS no. 846) related to the domain name www.wellingtongolfcenter.co.nz. The Complainant company was incorporated on 2 December 2010 had registered the domain www.wellingtongolfcentre.co.nz two days later. Its competitor registered the domain name at issue in April 2011.
The Expert found that the name ‘wellingtongolfcentre’ (which the Complainant relied upon as establishing its rights) was quite descriptive, and that in light of this the Complainant needed to provide sufficient evidence to show that the name had been so associated in the minds of a significant number of consumers, that it has acquired a secondary meaning and that is not therefore wholly descriptive of the goods and services provided by the Complainant. In this regard the case was similar to the previous DRS decision of BOP Memorials v Jones & Company Funeral Services (DRS no. 108).
The Complainant in Wellington Golf Centre was not legally represented and its evidence appears to have been deficient, as the Expert described the information provided by the Complainant about its business as being “minimal”. In particular, there was “no evidence offered of expenditure on promoting the business name nor any evidence from members of the public or users or potential users of the Complainant’s services as to how the business name is perceived or understood”.
The Expert concluded that in the absence of such evidence, it was not possible to say that the Complainant’s business had acquired a secondary meaning so as to exempt its domain name from the category of being wholly descriptive of the Complainant’s business. Even though the Respondent had not filed any material in opposition to the complaint, the complaint was rejected.
Comment
Descriptive trade marks (both registered and unregistered) can be relied upon and protected under the DRS and in court. To do so, however, a complainant must show that the name is taken by members of the public as being associated with the relevant trader’s business in particular, as occurred in the BOP Memorials DRS case. This requires supporting evidence.
The Wellington Golf Centre case illustrates two points:
1. Where your business is based on a descriptive trading name or trade mark, it can be difficult to prevent your competitors from adopting similar or identical names.
2. Complainants need to obtain legal assistance when making domain name complaints, and in particular to ensure that the evidence filed with the complaint is relevant, in a proper form and sufficient to prove the claim. If complainants fail to do so they risk losing the complaint, writing off the $2,000 + GST filing fee (and management time associated with pursuing the matter) and being no closer to retrieving the disputed domain name.
Further information
I have acted for successful complainants on DRS complaints, including the case regarding www.intercity.co.nz.intercity.co.nz (which was the first DRS case to be heard). I also acted for a successful respondent regarding an Australian domain name complaint. Please contact me if you would like any further information regarding domain name disputes.