Cybersquatter gets BLACK WATER RAFTING removed from register

New Zealand

A Uniform Domain Name Dispute Resolution Policy (UDRP) complaint involving the domain name 'blackwaterrafting.com' has resulted in the removal of the BLACK WATER RAFTING trademark from the New Zealand trademarks register, highlighting the dangers of choosing marks with descriptive connotations.

The phrase 'black water rafting' was first coined by one of the defendant company's directors in 1984 to describe a commercial operation involving floating through caves on inner tubes or other flotation devices. In 1998 the defendant's application to register the phrase as a trademark was granted.

In August 2000, in response to the plaintiff's acquisition of 'blackwaterrafting.com', the defendant filed a complaint under the UDRP. The plaintiff failed to respond within the prescribed time limit and an order was made assigning the domain name to the defendant.

The plaintiff then commenced proceedings in the New Zealand High Court seeking an order under the Trademarks Act 1953 that the mark be expunged from the register on the basis that the words 'black water rafting' are merely descriptive of an activity and lack the necessary distinctiveness to justify registration. After considering a large amount of evidence from both parties, the court agreed, concluding that the phrase constitutes a generic term for such activities.

The court placed little weight on the fact that most of the evidence considered was not directed at people who were actual or potential purchasers of the services, or that four of the six operators in New Zealand never actually used the phrase in connection with their business. It preferred instead to focus on how the mark would be perceived by average members of the public. While this approach may not be legally correct (the test under the act requires the court to look at whether members of the trade use the mark descriptively), it is both predictable and fair, and accords with proposed amendments to the act being considered by Parliament.

Having determined that the words are descriptive and generic, the court ordered that the trademark be removed from the register.

Ian Finch, James & Wells, Auckland

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