Sex Education - domain name face-off

SEXUALLY TRANSMITTED INFECTIONS EDUCATION FOUNDATION LTD (STIEF) v FAMILY FIRST NZ DRS 1125 (7/12/2015 EXPERT BARKER)

Domain Name Commission Dispute Resolution Service

The Domain Name Commission (DNC) Dispute Resolution Service enables conflicts about the registration of “.nz” domain names to be adjudicated by an Appointed Expert.

DNC’s Dispute Resolution Policy requires a complainant seeking to obtain the transfer of a domain name registered by a third party to establish:

a) rights in a name identical or similar to the domain name in dispute; and

b) that the registration is unfair.

One way that a complainant can show that a registration is unfair is by demonstrating that the respondent is using the domain name in a manner which is likely to confuse, mislead or deceive people into believing that the domain name is registered, operated or authorised by, or otherwise connected with, the complainant. Conversely, one way that the respondent can show that the registration is not unfair is by establishing that the domain name is generic or descriptive.

The parties and the conflicting domain names

The Sexually Transmitted Infections Education Foundation (STIEF) is a not for profit organisation funded by the Ministry of Health, established to improve the sexual health of New Zealanders. One of its initiatives was to create a website aimed at young people, in particular Māori and Pacifica, to provide information and advice regarding sexually transmitted diseases and sexual health generally. The developer of the website consulted with young people over a period of six months and decided that the best name for the website was “Justthefacts”. In January 2015, STIEF registered the domain names, “www.justthefacts.co.nz” and “www.justthefacts.nz”, and set up a website using those domains. The website was launched in May 2015. There were national press releases and extensive link building with sexual health organisations and clinics worldwide.

STIEF’s website had endorsement from a national network of health professionals to ensure that the website would reach its target audience and information on STIEF’s website was distributed to over 8,000 health professionals and organisations.

Family First NZ is a conservative Christian organisation. Its stated objectives are to seek to influence public policy affecting the rights and protection of families and promote a culture that values the family. On 10 June 2015, some six weeks following the public media launch of STIEF’s website, it registered the domain name “www.justthefacts.org.nz”.

The website consists of a PDF, the first page of which comprises the following graphic:

Family First

The following pages lead to an article by Dr Miriam Grossman which criticises what she calls the “sex education lobby” and claims that this lobby, rather than promoting sexual health, encourages sexual licence. The content and views expressed in Dr Grossman’s article are far more conservative with respect to sexual health and differ greatly to that on STIEF’s website. Family First’s website does not refer to STIEF’s website in any way other than using “justthefacts” in the domain name but with a differing suffix “org.nz”.

The complaint

STIEF filed a complaint with the DNC seeking the transfer of the “www.justthefacts.org.nz” domain name to it on the basis that Family First’s website was an unfair attempt to pass off its website as STIEF’s website and to leverage the extensive marketing and communications strategy which it had implemented to build its brand awareness. STIEF subsequently revealed it had a pending New Zealand trade mark application for its name. Although not referred to in the Expert’s decision, the application was for the device mark:

Just The Facts

STIEF further submitted that Family First’s website was created to divert traffic from STIEF’s website and that the disparate views provided by the two websites could be a cause for considerable confusion and conflict for the public with the consequence that the use of Family First’s domain name did not constitute a fair or legitimate use.

In defence, Family First claimed that STIEF’s domain name was generic and that although some descriptive words and phrases can be registered as trade marks through acquiring a second meaning, that is not the case here.

The decision

The Expert first considered whether STIEF had rights in respect of the expression “JUSTTHEFACTS”. Noting that STIEF did not hold any registered trade mark rights, the Expert observed that registration of a domain name about one month before the disputed domain name was not a long enough period in which to establish a reputation for an unregistered trade mark right.

The Expert commented that STIEF could well encounter difficulties in obtaining registration due to section 18(1) of the Trade Marks Act 2002, which prevents the registration of nondistinctive trademarks.

Citing examples from a cursory internet search, the Expert said the expression “JUSTTHEFACTS” could relate to everything and anything. Therefore, it was difficult to see how, without reference to sexual health or sexually transmitted diseases in the domain name, the words “Just the facts” could give any indication of the contents of a website to an internet user. Referring to Jacob J in British Sugar plc Chambers Robertson & Sons Limited (1996) RPC 281, in the Expert’s view, it was not possible for STIEF to have rights in the domain name when it has acquired no distinctive character and is essentially generic. If something preceded the domain such as: “Sexual health – just the facts” that might be sufficient to differentiate the domain name, but, in the Expert’s view, “Just the facts” had no distinctive character.

The Expert went on to say that while STIEF did not have to show that it had a trade mark, registered or at common law, because the words “Just the facts” were so broad and could be used in a host of different situations they were incapable of having the necessary distinctiveness required, stating: “Asked about what a ‘just the facts’ website should be about, the average person would not think immediately of sexuallytransmitted diseases but would ask ‘the facts about what?’.” The Expert concluded that even though Family First quite clearly registered the disputed domain name to publish contrary views on this issue of public importance, in this aspect of public health, “there could well be room for robust debate and the presentation of different approaches. The Respondent is entitled under free speech principles to express its view”.

Accordingly, the Expert directed that the disputed domain name remain with Family First.

Commentary

With the greatest respect to the findings of the Expert, the decision does raise some interesting questions regarding the Expert’s conclusions in relation to distinctiveness. The threshold for a complainant to establish that it has rights under the Policy is relatively low (refer BOP Memorials v Jones & Company Funeral Services (DRS 108)). In the writer’s view, the inclusion of words like “sexual health” in the domain name, as suggested by the Expert, would be equally objectionable for being descriptive. The fact that the words in question, “Just the facts”, make no reference to the character or kind of goods in question does the reverse and meets the distinctiveness threshold. Support for this view may be taken from the fact that STIEF’s trade mark application has now been accepted by IPONZ for registration. Although the application is for a device mark, “JUST THE FACTS” is the, if not a, dominant component of the device.

Secondly, the Expert’s reference to the entitlement of Family First under free speech principles to express its views, appears to overlook the fact that by using an identical name (excluding “.org.nz”), without some flag to indicate that the website used under the domain name expressed contrary views to those contained in STIEF’s website, is likely to be taken by an internet user as the legitimate and well-publicised website of STIEF.

Thirdly, and without having the benefit of reviewing the precise scope of evidence before the Expert, the Expert’s finding that the six week interval between the publicised launch of STIEF’s website was an insufficient period for it to have established a reputation may be debatable when one considers passing off cases such as Keg Restaurants Ltd v Brandy’s Restaurant Tavern Ltd (1983) 1 NZIPR 453 where a successful plaintiff had not yet launched its product at the relevant date but the mark had nonetheless achieved a reputation through pre-launch promotion.

Finally, the case highlights the desirability for a business of not only selecting a distinctive trading name or mark, but also having the name registered as a trade mark at the same time as it obtains a matching domain name for its website which, for most enterprises, is a “must have” these days. Had STIEF adopted this approach there could be little room for argument about it having successfully crossed the double hurdles of establishing rights in respect of the domain name and that the Family First’s website was likely to confuse or mislead users into believing that its website was the website of STIEF.

Alex McDonald is an Auckland barrister specialising in intellectual property law. She can be contacted at alex@amcdonald.co.nz or on 09 361 5665.

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