Complainant is NZSKI limited of Dunedin, New Zealand, represented by Lane Neave Lawyers, of New Zealand.
Respondent is Aim Solutions Limited of Auckland, New Zealand, represented by Minter Ellison Rudd Watts, of New Zealand.
The disputed domain name <nzski.mobi> is registered with eNom (hereinafter the “Domain Name”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2010. On April 8, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On April 9, 2010, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2010. The Response was filed with the Center on April 28, 2010.
The Center appointed Clive L. Elliott as the sole panelist in this matter on May 7, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant is an incorporated company registered in New Zealand, operating as a tourism operator. It has been the owner of the domain name <nzski.com> since September 15, 2004.
Respondent is an incorporated company registered in New Zealand and operating in the field of developing web portals and websites and providing web-hosting services to, amongst others, tourism and leisure industry operators.
The Domain Name was registered on September 26, 2006.
Complainant states that it holds registered trade marks in New Zealand for the following:
- NZSKI.COM Mt Hutt, Canterbury, New Zealand;
- NZSKI.COM Coronet Peak, Queenstown, New Zealand;
- NZSKI.COM the Remarkables, Queenstown, New Zealand.
Complainant asserts that it is one of the best known tourism operators in New Zealand and that among other activities it operates three of the major ski fields in New Zealand. Complainant states that it has operated the website “www.nzski.com” in conjunction with its ski field business since 1998. It contends that this website is well-known and says, by way of example, that in the year to December 31, 2009 it attracted 1,959,635 visits and 7,068,228 page views. Complainant notes that it also owns and operates the domain name <nzski.co.nz> which it uses as a link to and in conjunction with its <nzski.com> website.
Complainant asserts that it advertises heavily in New Zealand and abroad across a wide range of media and that all its marketing focuses on the “NZSki” brand. Complainant contends that it is publicly known and referred to in New Zealand as “NZSki”. It says that in the past five years it has spent approximately NZ$350,000 per annum on advertising in New Zealand and Australia, with all media directing people to the <nzski.com> domain name. This, Complainant submits, shows that “NZSKI” has been established as a trade mark identifying it by extensive public use over a number of years.
Complainant contends that the Domain Name not only wholly incorporates but is also identical to its “NZSKI” trade mark and is also confusingly similar to its registered NZSKI.COM trade mark and domain name. Complainant argues that its use and extensive promotion of its NZSki brand, and its website “www.nzski.com” and “www.nzski.co.nz” make it likely that members of the public will associate the Domain Name with Complainant or assume that it is the mobile version of the “www.nzski.com” website.
Complainant states that it is not aware of any evidence of Respondent's use or genuine preparations to use the Domain Name for bona fide offerings of goods and services and notes that the Domain Name is not currently in use, despite being registered by Respondent over three years ago. Complainant claims that Respondent's website “www.aimsol.net” makes no reference to “nzski” and states “Welcome to Aim Solutions Limited, a company specializing in Internet solutions for New Zealand businesses”. Complainant asserts that Respondent is a company focused on developing websites for sale.
Complainant argues that as a website development company Respondent should and could have easily checked whether <nzski.com> was available and as such should have been aware of Complainant's interests in the NZSKI trade mark.
Complainant advises that it contacted Respondent offering to buy the Domain Name for US$200 but was told that Respondent would be looking for a figure nearer to NZ$25,000. Complainant submits that this supports the contention that Respondent is in the business of developing websites for sale and that it has acted improperly.
Respondent denies that the Domain Name is identical or confusingly similar to Complainant's registered trade marks and asserts that the New Zealand trade marks that it relies on are either for NZSKI.COM or highly stylized device marks featuring the gTLD in classes 16 and 41. Respondent submits that Complainant's registrations are not for NZSKI alone but for NZSKI.COM and they do not refer to provision of Complaint's specified goods or services over the Internet.
Respondent claims that the rights afforded by registration under the New Zealand Trade Marks Act does not extend to or afford a monopoly in the term NZSKI and submits that NZSKI in the Domain Name is intended to be used descriptively as the host to reference the subject matter of the domain and not as a trade mark. Respondent contends that NZSKI is descriptive of and generic to New Zealand related skiing and associated activities and that as such no one entity could claim a monopoly in NZSKI. Respondent notes by way of example that there are a number of other NZSKI domain names which are currently in use and do not belong to Complainant, such as <nzski.org>; <nzski.org.nz>; <nzski.net>; and <nz-ski.com>; all of which resolve to websites relating to skiing and ski-related activities in New Zealand.
Respondent disputes Complainant's allegations that it has operated a website at “www.nzski.com” since 1998 and states that that website was originally owned by The Mount Cook Group Ltd., which also owned the New Zealand trade mark registrations referred to in Complainant's submissions, as well as owning and operating Coronet Peak and The Remarkables ski fields. Respondent claims that The Mount Cook Group Ltd. then sold the trade mark registrations, domain name and ski fields to Complainant in or about 2002. Respondent also argues that out of the 23 ski fields in New Zealand, only three of these belong to Complainant and that these three are referred to by their geographical names, i.e. Coronet Peak, The Remarkables and Mt Hutt, and not by reference to Complainant or NZSKI. To support this allegation Respondent attaches a printout from a google search using the term “The Remarkables”.
Respondent acknowledges that the Domain Name is not currently in use. However, it contends that the delay in developing the Domain Name has not been deliberate and this has been due to several factors, including its need to continually develop its principal web portal “www.travelplanner.co.nz” as it primary source of revenue; short staffing and serious staff health issues, unique requirements of .mobi domains, and performance issues with web developers. Respondent contends that a delay in developing the domain is not atypical of Respondent and states by way of example that its web portal EventsNZ, whilst registered in May 2000, did not launch until January 2010.
Respondent denies that it is a company focused on developing websites for sale as asserted by Complainant and states that its home page at “www.aimsol.net” makes no reference to the sale of domains. Respondent asserts that it is in the business of registering domains and developing them into web portals and websites relating to the travel and leisure industry for its own use and financial gain and claims that the creation of the .mobi TLD presented an opportunity for it to extend its existing web-based operations to mobile platforms and transfer existing subject specific content to the .mobi TLD.
Respondent claims that the Domain Name was registered with the genuine intention of developing a website with skiing and ski-related content for mobile devices and states that it has previously successfully developed web portals and websites hosting general tourism, travel and leisure information, from which it has subsequently taken subject specific content to create dedicated websites and web portals.
Respondent asserts that it is not in the business of developing sites for sale and has never sold a domain, nor developed websites or web portals for third parties. Respondent submits that it does develop websites and web portals for its own use, and generates revenue through sale of advertising to third parties. Respondent notes that Complainant has previously used Respondent's web portals, websites and services to advertise its own services. Respondent states that Complainant approached it to sell the Domain Name and not the other way around and that Respondent considered that the counter-offered purchase price of NZ$25,000 was fair, after taking into account Respondent's likely development costs, goodwill and Respondent's revenue projections based on its experience with its other web-based operations.
Respondent asserts that Complainant and Respondent are not competitors and that the Domain Name was not registered by it to disrupt Complainant's business or in an intentional attempt to attract for commercial gain Internet users to Respondent's web site or other on-line locations. That is, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location of a product or service on Respondent's web site or location.
The Policy requires a complainant to show that the domain name in issue is identical or confusingly similar to a trade mark in which it has rights. It is common ground that Complainant holds registered trade marks in New Zealand for a number of trade marks, all of which contain the essential feature NZSKI.COM, along with other geographical designations related to the particular well-known ski fields concerned (“the Trade Marks”). These comprise Mt Hutt in Canterbury; and Coronet Peak and The Remarkables in Queenstown. As noted above, Complainant asserts that it is one of the best known tourism operators in New Zealand and that it is well-known for operating three of the major ski fields in New Zealand. It has also operated the website “www.nzski.com” in conjunction with its ski field business since in or about 1998.
It is clear that Complainant has some degree of protectable rights in the Trade Marks. A fundamental question however is the nature and extent (legitimate reach) of those rights and in particular whether Complainant has protectable rights in a trade mark (as claimed) or whether the particular term or words are descriptive or generic in the particular category concerned.
Firstly, Respondent questions Complainant's assertion that it has operated a website at “www.nzski.com” since 1998, noting that the website and the Trade Marks were originally owned by The Mount Cook Group Ltd. There is nothing in this point and it is reasonable to infer that Complainant has acquired, through some purchase, all rights which The Mount Cook Group Ltd owned.
Secondly, Respondent argues that the Trade Marks are for NZSKI.COM or highly stylized device marks and that “nzski” in the Domain Name is intended to be used descriptively as the host to reference the subject matter of the domain and not as a trade mark.
Thirdly, it contends that NZSKI is descriptive of and generic to New Zealand related skiing and associated activities and that there are a number of other “nzski” domain names which are currently in use and do not belong to Complainant. These are said to include <nzski.org>; <nzski.org.nz>; <nzski.net>; and <nz-ski.com>. Respondent claims that all of the domain names resolve to websites relating to skiing and ski-related activities in New Zealand, but are unconnected with Complainant.
The focus of Respondent's argument is thus that the term “nzski” is essentially common to the category and should not be monopolised by any individual trader.
The Panel considers that there is some merit in Respondent's argument. Even though Complainant has rights in the Trade Marks they are likely to reside in the specific rendition. <nzski.mobi> is very similar but not identical to <NZSKI.COM>. Given that the gTLDs “.com” and “.mobi” are likely to be downplayed in any comparison there is still a risk of confusion. However, for the reasons set out above the Panel considers that the risk is relatively low. The Panel also considers that this issue is necessarily context specific and that it has a bearing on the other grounds, discussed below.
Accordingly, Complainant makes out this ground, but only by a narrow margin.
Respondent asserts that the Domain Name was registered with the genuine intention of developing a website with skiing and ski-related content for mobile devices. In support of this it indicates that it has previously developed web portals and websites hosting general tourism, travel and leisure information. Mr. Neil Pownall a director of Respondent has provided a statutory declaration which sets out in some detail Respondent's business activities and aspirations. He also provided an explanation for the delay in launching a website under the Domain Name. This evidence is thus directed at the central issue of whether Respondent's actions are legitimate or otherwise. There is no reason to doubt this evidence.
Given the descriptive connotations involved with the term “nzski” and its use in other similar domain names of other parties involved in the same or similar industry, and for the reasons discussed in the paragraph immediately above, the Panel finds that Respondent intended to use the Domain Name for a bona fide offering of goods and services under Policy paragraph 4(c)(i). In particular, Respondent asserts that it plans to use the Domain Name to develop a website with skiing and ski-related content for mobile devices and that the Domain Name is reflective of the services it intends to provide. The Panel finds this explanation reasonable and plausible.
For these reasons it is found that the ground is not made out.
Having concluded that Respondent intends to use the Domain Name for a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i), permits a finding that there was no bad faith registration or use under Policy paragraph 4(a)(iii).
Speculation in domain names may under certain circumstances point towards bad faith, for example, when the main purpose is to extract money from the mark owner or from a competitor. However, in the present case the evidence suggests that Complainant does not have exclusivity in New Zealand in the term “nzski”, in so far as the provision of skiing and ski-related activities is concerned. One reason for this is likely to be because “nzski” is a contraction of the description “New Zealand skiing”. Notwithstanding the existence of the Trade Marks, Complainant has not established that it has exclusive rights to use the term. The UDRP was designed to take into account that common and legitimate users of rights would have to learn to share Internet space. The general purpose of the UDRP is not to privilege the first of many mark or name users to seek redress, but instead to prevent any mark or name owner from being particularly and purposefully harassed and targeted.
The Panel sees no indication, other than the similarity with Complainant's Trade Marks, that Respondent intended to use the Domain Name for any of the purposes identified in paragraph 4(b) of the Policy. The Panel considers Respondent's actions in offering to sell the Domain Name to Complainant for what may have appeared to Complainant to be an inflated amount without at least some indicia of valuation to be somewhat questionable. However, it has weighed that consideration against all other considerations including that the Trade Marks contain the term “nzski.com” and the Domain Name will not prevent Complainant from reflecting the term “nzski.com” or its Trade Marks online, particularly as it already has the <nzski.com> domain name.
Finally, even if some degree of confusion may result, that does not appear to the purpose for which Respondent registered the Domain Name. Respondent has made no known attempt to interfere with Complainant's business, or attract users for commercial gain, or pass itself off as NZSKI limited.
Accordingly, the Panel is unable to find that the Domain Name was registered and used in bad faith.
For all the foregoing reasons, the Complaint is denied.
Clive L. Elliott
Dated: May 24, 2010