News
Bell Gully succeeds in first New Zealand internet dispute service claim
The holder of a disputed domain name has been ordered to hand over the internet address in a decision on the first claim lodged with New Zealand's new domain dispute service.
The Hon. Sir Ian Barker, QC has ordered Tauranga-based Traction Group Limited to transfer the address www.intercity.co.nz to passenger coach service company, InterCity Group, ruling it had been unfairly registered.
Bell Gully lodged a claim of behalf of InterCity Group with the newly established Dispute Resolution Service, set up under the auspices of the Office of the Domain Name Commissioner (DNC). The process allows an appointed expert to decide on disputes around domain name addresses outside the court system.
The claim was the first lodged with the Domain Name Commissioner when the new service came into force on June 1 this year. Several others were subsequently lodged and have been ruled on.
Acting for InterCity Group, Bell Gully partner Alan Ringwood and senior solicitor Kevin Glover submitted that the transport company's rights resulting from its registered trade mark (INTERCITY) and its extensive reputation in the INTERCITY name meant that registration of the domain name www.intercity.co.nz by Traction Group amounted to an "unfair registration".
In response, Traction Group argued that it had not registered the domain name in bad faith and intended to use it at some point in the future for a website focusing on events and attractions linking nearby cities. It submitted that InterCity Group was instead guilty of reverse domain name hijacking.
The Hon Sir Ian Barker, QC, the Expert appointed by the DNC to hear the dispute, agreed that InterCity Group had rights to the word INTERCITY, and that the trade mark was identical to the disputed domain name.
Traction Group's argument that its proposed tourism website was not going to compete with InterCity Group's road transportation business was simplistic, the Expert ruled, because "road transportation is an essential ingredient of tourism".
The INTERCITY trade mark was well-known throughout New Zealand as representing the major provider of internal public transport, Sir Ian Barker said.
Claims by Traction that a tourism website under the disputed domain name would not lead to confusion with InterCity Group's business were incorrect "since transportation within New Zealand between cities is an integral part of tourism. Many tourists need to know how they can get from one city to another by public transport".
A person accessing Traction's proposed website, if and when it materialised, would be confused into thinking that the website had some connection with InterCity Group's transportation services. Sir Ian Barker also noted that Traction had held the disputed domain name for at least three years without taking any apparent steps to develop a website. While not in itself evidence of an unfair registration, the passive holding was a factor to be considered alongside others.
Bell Gully's Kevin Glover says the new Dispute Resolution Service procedure provides an effective alternative to issuing court proceedings for some domain name disputes. "While it's not going to be appropriate in all cases, it means that New Zealand legal advisors are now able to consider another important tool to help individuals and businesses to resolve these disputes."
Alan Ringwood, who leads Bell Gully's intellectual property practice, says the result is encouraging for businesses wishing to protect the intellectual property in their names and valuable trade marks. "It is pleasing to see the Expert taking a sensible and robust view of the issues under this new procedure."
For more information, please contact:
Josephine Gallagher
Communications Manager
Bell Gully
64 9 916 8664 or 021 190 3185
Kevin Glover
Senior Associate
