A ground-breaking decision in the High Court has effectively spelled the end for domain name pirates in New Zealand. Justice Baragwanath made an interim ruling in the Auckland High Court that anyone who appropriates a company name for domain name registration is likely to have to return it to the rightful owner.
Oggi Advertising sued Auckland businessman Cameron McKenzie and Wellington-based domain name registry Domainz over the registration of the oggi.co.nz domain name to McKenzie.
McKenzie was ordered to hand the domain name over to Oggi Advertising. McKenzie registered the domain name last year originally to a Ron Towitt and then to an Elliot Oggi (the latter with Canadian telephone, fax, email and address), both of whom appear not to exist. Last year Oggi spent $10,000 preparing to launch a Web site but the domain name had already been registered to a company called Combined Concepts whose contact was Ron Towitt.
Justice Baragwanath applied the English case Marks & Spencer Plc v One in a Million Limited which said, “The Court will not countenance any … pre-emptive strike of registering companies where others have the goodwill in those names and the registering party demands a price for the changing of the names”.
Solicitor Gervais Laird, of Oggi’s law firm Baldwin Shelston Waters, says: “In terms of what this judgement means for other domain name cases Justice Baragwanath has sent some fairly clear directions. At the least it would certainly be looked at, if not followed, by any other High Court judge when making a similar decision.”
Oggi managing director Gordon Fryk-berg says it’s too early to say whether Oggi will take the case any further.
“My agenda has always been to get our domain name back. Whether the case goes to trial depends on whether we get the costs we want from the parties involved.”
Domainz, which registered the domain name to McKenzie and which is also being sued by Oggi, is hoping the case will go ahead. Domainz says it has spent approximately $15,000 preparing a legal defence to Oggi’s accusation that it conspired with McKenzie by taking his registration. However, the interim decision does not apply to Domainz.
“This is really nothing to do with Domainz,” says Domainz chief executive Patrick O’Brien. “It should have been an action between the person who registered the name and the person who believes they have the right to that name. We’ve gone to a lot of expense in terms of finance and time and now Oggi say they have got what they wanted, so why did they drag us into the argument in the first place?
“We allocate names on a first-come, first-served basis. Customers are telling us that they want a fast and cost-effective service but that wouldn’t be possible if we had to investigate everyone who wants to register a domain name.
“Companies have to be aware that if they have a brand or name that is of value they should get on and register it.”
O’Brien says Domainz was not named in a similar case settled out of court last year when Domain Name Trading registered names featuring the trade names Sanyo, Fuji-Xerox and Cadbury.
Oggi has also spent around $15,000 so far, says Frykberg, “and we’re not interested, as Domainz appears to be, in a ridiculous test case which would never have to happen if they had done their job properly in the first place.”
McKenzie says he acted as an agent for Elliott Oggi whom he met on the Internet. He says Oggi had not settled his bill and presented an invoice addressed to Combined Concepts, care of Mr Elliott Oggi, Department of Physics, University of Western Ontario, Canada for $325. He says he had written to Elliott Oggi seeking guidance over the problem but had not received any response.
Oggi Advertising claimed in its case that Elliott Oggi was fictional and an enquiry to the University of Western Ontario found that no such person existed there. Oggi noted that the registration details were changed to Elliott Oggi just four days after legal action proceedings were served. The former registration details of “Ron Towitt” appeared to be a pun on “we’re on to it”. In the Combined Concepts Invoice the word’s “On to it” appear under McKenzie’s name.