Complainant is On-line Digital Solutions Limited t/a Moovabox of St Lukes, Auckland, New Zealand, represented by James & Wells Intellectual Property, New Zealand.
Respondent is Rentacrate NZ Ltd. of Albany, Auckland, New Zealand, internally represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2013. On March 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 27, 2013, the Registrar 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 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2013. The Response was filed with the Center on April 16, 2013.
The Center appointed Clive L. Elliott as the sole panelist in this matter on April 29, 2013. 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. 4. Factual Background
The Domain Name was registered with the Registrar on February 13, 2012. 5. Parties’ Contentions A. Complainant
Complainant states that it is a company incorporated under the laws of New Zealand, originally incorporated on November 14, 1995 and then adopting its present name on July 28, 2000.
Complainant states that it is the owner of New Zealand Trade Mark Registration MOOVABOX in classes 20 and 39 ("Complainant's Trade Mark"), registered on January 11, 2012, and two domain name registrations:
(a) ; registered on June 26, 2011; and
(b) ; registered on June 27, 2011.
Complainant asserts that it first operated a website using Complainant's Trade Mark under the domain names and in December 2011 and its website, which was launched at least 6 weeks before Respondent's registration of the Domain Name, consisted of a page advertising that Complainant's services were "coming soon".
Complainant further asserts that it started publicly advertising for franchisees using Complainant's Trade Mark on or around January 7, 2012, which was approximately 5 weeks before the Domain Name was registered by Respondent.
Complainant says it has continuously used Complainant's Trade Mark in relation to its goods and services, including in the domain names and , since January 2012, prior to Respondent's registration of the Domain Name in February 2012.
Complainant asserts that as a result of its trading and promotional activity it has developed substantial reputation and goodwill in Complainant's Trade Mark within New Zealand such that it believes that it and any similar mark, is exclusively associated with Complainant in the minds of relevant consumers. In support of this it relies on a prize donated to the Chilton Saint James School's Golf Day in September 2012.
Complainant submits that the relevant comparison to be made is with the second-level portion of the Domain Name only – "movabox”, and that the only difference between the Domain Name and Complainant's Trade Mark is that the Domain Name has omitted one letter: movabox vs moovabox, and consequently the Domain Name is confusingly similar to Complainant's Trade Mark, in which Complainant had rights at the date the Domain Name was registered, and in which Complainant continues to have rights.
Complainant contends that the Domain Name is not generic or descriptive of Respondent’s business, but rather is distinctive of Complainant's business. Complainant asserts that Respondent does not have, and has never had, a legitimate right or interest in Complainant's Trade Mark or any similar name or mark and that it is not affiliated with or related to Complainant in any way.
Complainant claims that Respondent is a New Zealand incorporated company and provides relocation goods and services using plastic stackable crates. Complainant asserts that Respondent directly competes with Complainant in Auckland, Wellington and Christchurch.
Complainant goes on to state that it has not consented to, licensed or otherwise authorised Respondent to use Complainant’s Trade Mark or any confusingly similar variation thereof, and nor has it consented to, licensed or otherwise authorised Respondent to register and use the Domain Name. Complainant contends that without the express authorisation of Complainant, Respondent's registration is deliberately taking advantage of Complainant’s reputation and goodwill, as well as infringing Complainant's rights, in Complainant's Trade Mark.
Complainant claims that prior to the date of registration, Respondent has not been commonly known by the Domain Name or any similar name and that the trade mark Respondent uses is RENTACRATE, which does not correspond in any way with the Domain Name.
Complainant asserts that the domain name under which Respondent operates its usual website at does not correspond with the Domain Name, and said website shows consistent use of the RENTACRATE trade mark.
Complainant contents that before any notice to Respondent of the dispute, there is no evidence Respondent used the Domain Name, or a name corresponding to the Domain Name, in connection with a bona fide offering of goods or services, and notes that Respondent registered the Domain Name approximately 7 1/2 months after Complainant registered its domain names and , and approximately one month after Complainant filed its application to register Complainant's Trade Mark in New Zealand.
Complainant submits that Respondent has not registered the Domain Name in connection with a bona fide offering of goods or services, and that Respondent is not making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain, but is in fact misleadingly diverting consumers to Respondent's website. Complainant claims that Respondent's website is a commercial website offering household and commercial relocation services in competition with Complainant.
Complainant believes Respondent heard of Complainant's arrival in the marketplace and deliberately registered the Domain Name in a blatant attempt to divert trade to Respondent.
Complainant contends that the Domain Name was registered and is being used by Respondent in bad faith because whilst Complainant registered its and domain names in June 2011, and Complainant's Trade Mark in January 2012, Respondent did not register the Domain Name until February 2012. Complainant further contends that Respondent's registration of the Domain Name is part of a pattern of conduct engaged in by Respondent to register domain names using a confusingly similar name to Complainant's Trade Mark. B. Respondent
Respondent denies the allegations contained in the Complaint, and states that the Domain Name registered under Respondent is the subject of an Intellectual Property Agreement between Sienna Group (2008) Limited and Respondent, predating the incorporation of Respondent and registration of the Domain Name.
Respondent advises that under the provisions of this Intellectual Property Agreement, ownership of the Domain Name is vested in Sienna Group (2008) Limited.
Respondent asserts that Complainant does not operate anywhere outside of New Zealand, and points out that the top level domain .com has legal significance in identifying the source of goods and services provided by Complainant.
Respondent also asserts that Complainant’s Trade Mark contains descriptive and generic terms and therefore the Domain Name does not create a trade mark infringement.
Respondent notes that Complainant is asserting that any entity using the terms "moving" or "move", "boxes" or "box" infringes upon Complainant’s Trade Mark, yet Respondent advises that it provides services including the generic terms "moving" and "boxes" and has been providing its moving box services prior to its registration in 2009 and well before registration of Complainant’s Company, Trade Mark and domain names of .
Respondent advises it is the registrant of several domain names that include the terms and/or variations of the terms "box", "move" and "moving", and also advises that prior to Respondent’s product release into the market there had been no similar product or service (hiring of moving boxes and related services) available anywhere in New Zealand. Respondent also advises that prior to Respondent’s development of the unique franchise system, providing the hire of moving boxes and associated services in New Zealand, no similar franchise system existed anywhere else in the world at that time.
Respondent submits that despite Complainant being aware of the registration of the Domain Name by Respondent since April 12, 2012 when its legal representative wrote to Respondent claiming right to the Domain Name, Complainant has done nothing to pursue a claim in relation to the Domain Name or alleged Trade Mark infringement in 12 months.
Respondent asserts that Complainant has done little to promote its company, and combined with the relatively short period Complainant has operated in New Zealand, Complainant has failed to develop any form of substantial reputation, fame, distinction or goodwill in Complainant’s Company or Trade Mark in New Zealand. Respondent alleges that Complainant is only able to provide limited services in three areas of New Zealand.
Respondent asserts that it has have been operating a moving box hire service prior to its company registration on June 6, 2009 and since then throughout New Zealand and more than three years before registration of Complainant’s Company, Trade Mark or domain names, and that Respondent is often referred to as the "Moving Box Guys".
Respondent asserts that it is well recognised in the market place, has been well established and developed considerable goodwill with franchises, and providing services in nearly all main centres of New Zealand.
Respondent advises that it, including the owner of the Domain Name (Sienna Group (2008) Ltd) has over the last 15 months or so, been developing additional service offerings with the intention of utilising a number of its registered domain names under its ownership in association with such services, and have made considerable preparations, including capital expenditures to this end.
Respondent denies that the Domain Name was registered in bad faith, refutes the arguments made by Complainant, and states further that it has a bona fide service offering which includes the hire of moving boxes. It also refutes the allegation that the Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration(s) to Complainant, as the alleged owner of the trademark or service mark, or to a competitor of Complainant, for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the Domain Name.
Respondent denies that the Domain Name was registered in order to prevent Complainant from reflecting their Trade Mark in a corresponding domain name and, in connection therewith, Respondent has not engaged in a pattern of such conduct.
Respondent denies that the Domain Name was registered by Respondent primarily to disrupt Complainant's business, in an intentional attempt to attract for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location. Respondent claims that Advanced Web Statistics for Respondent between January 1, 2012 and March 1, 2012 verify that the total web traffic to the Domain Name accounted for only 0.8% of the total traffic to Respondent’s website for the period.
Respondent claims that the Domain Name is not confusingly similar among Internet users as to the origin of goods and services offered under Respondent’s trademark and that of Complainant’s Trade Mark, and that given Respondent’s extensive trading history, established goodwill and registration of its trademark several years prior to Complainant’s registration of the Trade Mark and domain names, Respondent requests the Panel to make a finding of reverse Domain Name Hijacking. 6. Discussion and Findings A. Identical or Confusingly Similar
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 a registered trade mark in New Zealand. Complainant provides evidence that it is the owner of New Zealand Trade Mark Registration MOOVABOX in classes 20 and 39. The mark was registered on January 11, 2012. Complainant has also registered the domain names on June 26, 2011 and on June 27, 2011.
In addition, Complainant asserts that it advertised for franchisees using Complainant's Trade Mark on or around January 7, 2012. This means that Complainant registered its domain names and Complainant's Trade Mark and used the said Trade Mark in the course of trade prior to registration of the Domain Name.
It is clear that Complainant has some degree of protectable rights in Complainant’s Trade Mark. 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.
Evidence is provided as to the manner in which Complainant uses Complainant’s Trade Mark on its website. For example, under the heading "What is Moova Box?" The following explanation is provided:
"Moovabox is a convenient, affordable and eco-friendly alternative to cardboard moving boxes.>
We deliver the boxes to you, you pack-up and move and we'll pick up the empty boxes from your new place!"(Emphasis added)
Elsewhere on Complainant’s website the following statement is made by reference to the boxes:
“Made of durable, recyclable plastic; Moovaboxes stand up to stacking and rainy days much better than typical cardboard moving boxes." (Emphasis added)
Finally, on Complainant’s vans and its website its stylised Moova Box logo is depicted. This contains, as an essential element, the stylised word "BOX" accompanied by the strapline or phrase "Reusable Rental Moving Boxes".
It is therefore apparent that Complainant regards the term "moving boxes" as one apt to describe its recyclable plastic boxes, which offer a practical alternative to cardboard boxes. It further appears that notwithstanding registration of the Trade Mark MOOVABOX Complainant consciously and repeatedly uses the term "moving boxes" to refer to the purpose of the boxes or alternatively a necessary and desirable characteristic - that they are suitable for moving/when people move. Accordingly, there is merit in Respondent’s argument that Complainant’s Trade Mark contains descriptive terms.
It is also to be noted that Complainant has registered MOOVABOX, no doubt consistent with its use of a cow in its advertising and emphasis on the word “Moo”. This represents a misspelling and play on words i.e. in relation to the word "move". However, Respondent uses the normal descriptive English word "move" as part of the Domain Name. Complainant’s Trade Mark and the Domain Name are thus not identical.
While the Panel has discussed the manner in which Complainant’s Trade Mark has been registered and used for purposes of the above enquiry under the Policy the question is whether Complainant’s Trade Mark is either identical or confusingly similar to the Domain Name. In doing so, it is not appropriate to take into account the way in which Complainant and Respondent actually use the trade mark or Domain Name in issue. That may however be a relevant consideration under other grounds, a matter picked up below.
As noted above, the Panel considers that there is some merit in Respondent’s argument. Even though Complainant has rights in Complainant’s Trade Mark they are likely to reside in the specific rendition. “Moovabox” and “movabox” are certainly similar. Given that the gTLD “.com” is likely to be downplayed in any comparison there is a risk of confusion. However, for the reasons which follow, the Panel considers that the risk is relatively low. This issue is necessarily context specific and it has a bearing on the other grounds, discussed below.
Further, the Panel notes that Complainant allowed Respondent to use the Domain Name for a period of 12 months. No explanation is provided for the delay in bringing this Complaint. What is relevant for present purposes is that there is no evidence that during this 12 month period any consumers were actually confused. No doubt if they had been, Complainant would have raised this.
However, on the basis of a comparison of “Moovabox” and “movabox”, while not identical, Complainant’s Trade Mark is confusingly similar to the Domain Name. Accordingly, Complainant has established the first ground. B. Rights or Legitimate Interests
It is common ground that Respondent is a legitimate business operating in the same field as Complainant and is a direct competitor of Complainant. Respondent indicates that it is the registrant of several domain names that include the terms and/or variations of the terms "box", "move" and "moving", and that prior to Respondent’s product release into the market there had been no similar product or service (hiring of moving boxes and related services) available anywhere in New Zealand. Respondent indicates it intends to continue to operate a business in providing the hire of moving boxes and associated services in New Zealand and is entitled to do so under or by reference to the Domain Name.
Given the descriptive connotations involved with the terms "box", "move" and "moving" and the use of these terms in a descriptive sense by Complainant and for the reasons discussed in the paragraph immediately above, the Panel is of the view that it would not be unreasonable for a competitor in this particular industry to want to use the above terms in order to provide a bona fide offering of goods and services under Policy paragraph 4(c)(i). In particular, Respondent asserts that it has and intends to continue to use the Domain Name to describe its rugged, reusable moving boxes for hire, just as Complainant does. To that extent the Panel infers that the Domain Name is apt for this particular use and is equally reflective of the services Respondent intends to provide. The Panel finds this explanation reasonable and plausible under the circumstances.
The well-known cautioning in Hornsby Building Information Centre Pty Ltd v. Sydney Building Information Centre Pty Ltd (1978) 140 CLR 216 at 229 is apposite in the present situation and is a statement of general principle, applicable to trade marks, trade names and domain names alike:
“There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of the like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. … The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe …”
As courts in various jurisdictions have repeatedly stated, care has to be exercised where one party attempts to acquire exclusive rights in eloquently descriptive words and phrases. In refusing to transfer the domain name it was noted:
“The question has to be answered to some extent by asking whether the Respondent has the right to use the words “nude” and “scape” to describe its pornographic services. That is, quite apart from whether the Complainant may have rights in these or similar words. It seems to the Panel that there is a reasonably good argument that the Respondent should have a right to use these common English words to describe its pornographic services. Otherwise, parts of the English language would soon be acquired and removed from common use by those wishing to name their businesses or describe their services.”
See America Online Inc. v. Media Dial Communications,WIPO Case No. D2001-0799.
For these reasons the Panel accepts that Respondent had and has a legitimate interest in using the terms "box", "move" and "moving" to describe its business and moving box rental business and in using the Domain Name. The Panel also notes that there is no evidence of confusion, notwithstanding use of the Domain Name by Respondent for a period of 12 months. This suggests that the Domain Name is operating to describe Respondent’s business and is unlikely to "ordinarily mislead the public" in the way described in the Hornsby Building Information Centre case.
The ground is thus not made out. C. Registered and Used in Bad Faith
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 it is unlikely that Complainant has exclusivity in New Zealand in the terms "box", "move" and "moving" in so far as the provision of "moving boxes" is concerned. Notwithstanding the existence of Complainant’s Trade Mark, 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 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.
While Complainant and Respondent are clearly direct competitors and may have some past history together that will need to be a matter for another forum and another day. In terms of the Policy the Panel is not satisfied that, other than the apparent similarity of Complainant’s Trade Mark and the Domain Name, that Respondent intended or intends to use the Domain Name for any of the purposes identified in paragraph 4(b) of the Policy.
Accordingly, the Panel is unable to find that the Domain Name was registered and used in bad faith. Reverse Domain Name Hijacking
Respondent contends that due to its trading history, established goodwill and registration of its trademark several years prior to Complainant’s registration of Complainant’s Trade Mark the Panel should make a finding of reverse domain name hijacking. However, even though Respondent is an established player in the removals business it has traded under the Rentacrate name.
There is no basis for a finding of reverse domain name hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
Likewise, the claim of reverse domain name hijacking is rejected.
Clive L. Elliott
Sole Panelist
Date: May 24, 2013
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