June 2009

01 Jun 2009

Domain Name Dispute – Watch it on the Country Channel

The Dispute Resolution Service (DRS) for New Zealand domain names is relatively new. It was implemented in June 2006, and since then it has received over 160 valid complaints. Domain names are registered on a first-in, first-served basis, and there is no requirement for registrants to show that they have any rights in the particular name they register. However, another business can challenge a registration if it can show that it has prior rights in a name or mark that is similar to the domain name registered, and that the registration is unfair according to the DRS Policy.

The DRS offers three tiers of resolution: informal mediation (with a qualified mediator), expert determination, and an appeal to a panel of three experts. Of the 160 complaints received since June 2006, the majority were either withdrawn or settled at mediation. Only around 50 complaints proceeded to expert determination - and until March this year, no expert's decision had been appealed. This article looks at the first domain name dispute to come before an Appeal Panel - The Country Channel Limited v The Country Channel Limited (DRS No. 334, 30 March 2009).

The Country Channels

The Complainant, British company The Country Channel Limited (CCUK), launched its Internet television channel on the website www.countrychannel.tv in June 2006. Its free web broadcast service focused on wildlife, farming and lifestyle programmes, and was available worldwide. 

The Respondent, New Zealand company The Country Channel Limited (CCNZ), registered the domain name www.thecountrychannel.co.nz on 9 June 2008. It was to provide a television channel called "The Country Channel" on Sky Television, but claimed that it did not know of CCUK's name when selecting its own name. The dispute actually began when a representative of CCNZ contacted CCUK requesting content to fill its schedule - and asked to be contacted via her email address, @thecountrychannel.co.nz. 

After investigating, CCUK lodged a complaint with the DRS, contending that the CCNZ's registration of thecountrychannel.co.nz was unfair as it would cause confusion in the marketplace and limit its own business development in New Zealand.

Expert Determination

CCUK had trade mark registrations in Britain, but none in New Zealand - which meant that any rights it claimed in New Zealand were based solely on its reputation. At expert determination, the Expert decided that CCUK did have sufficient reputation in New Zealand in the words "Country Channel", and that therefore CCNZ's registration was unfair in terms of the DRS Policy. The Expert ordered the domain name to be transferred to CCUK.

Decision of the Appeal Panel

CCNZ appealed the Expert's decision, asserting that CCUK had not proved that it had rights in the name "Country Channel" at the date of registration. Although CCUK's website was available around the world, there was no evidence that CCUK actually had any reputation or viewers in New Zealand. 

The Appeal Panel confirmed that the key issue was whether the CCUK had established, on the balance of probabilities, that it had rights in the name "Country Channel" at the date that the domain name was registered. The Appeal Panel also emphasized that where a name tends towards descriptiveness, then it is particularly important for a complainant to have evidence showing its pre-existing reputation or awareness of its name in New Zealand. 

CCUK's evidence showed that 88% of its viewers lived in the United Kingdom, and 12% in other countries around the world - but there was no evidence that any of these were based in New Zealand. CCUK did have correspondence from several viewers demonstrating confusion between the two Country Channels, but these post-dated the registration date. On this basis, the Appeal Panel held that it was "obliged" to find that there was no real evidence of CCUK's reputation in New Zealand. It reversed the Expert's decision and directed that no action be taken in relation to the domain name thecountrychannel.co.nz. 

Strategy for Establishing Rights

The Appeal Panel's decision must be correct - and yet many business people will be uncomfortable with the result. The decision highlights the need to ensure any evidence of reputation is examined to extract material which is relevant to the New Zealand nature of the dispute. Importantly, it also illustrates the desirability of having New Zealand trade mark registrations to protect the name of your business, especially for companies (both overseas companies and local companies) who have a limited reputation in New Zealand.

In this case, if CCUK had had a trade mark registration in New Zealand that pre-dated CCNZ's domain name registration, it would have probably succeeded in establishing its rights to "The Country Channel" and been able to seize the domain name from CCNZ. For overseas companies contemplating entering the New Zealand market, the benefit of having a registered trade mark to crystallize its rights is well worth the, usually, very manageable costs of achieving trade mark registration. 

Author

Earl Gray

Partner - Intellectual Property

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