Auckland court limits use of domain name in Europe

New Zealand

In Containerlift Services Ltd v Maxwell Rotors Ltd (CIV2003-404-3108), the Auckland High Court has issued an injunction blocking the use of the domain name 'containerlift.com' in the United Kingdom and other areas of Europe.

Steelbro New Zealand manufactures self-loading trucks, which are sold in the United Kingdom and other areas of Europe by Containerlift Services under the name containerlift. Maxwell Rotors, a New Zealand manufacturer, registered the domain name 'containerlift.com'. Containerlift Services brought an action before the Auckland High Court to prevent Maxwell Rotors from using the domain name, even though (i) Containerlift Services does not operate in New Zealand, and (ii) the domain name was registered in the United States.

The Auckland High Court granted an interim injunction in August preventing Maxwell Rotors from using the domain name. The court rejected Maxwell Rotors' contention that the name 'containerlift' is generic, finding instead that Containerlift Services had built up a reputation and goodwill, which was likely to be damaged by Maxwell Rotors' use of the domain name. Maxwell Rotors filed an action seeking an injunction to limit the ban to the regions where Containerlift Services had a reputation and goodwill (ie, the United Kingdom and other areas of Europe). The court has now issued another decision upholding Maxwell Rotors' action.

This decision seems to indicate that if an applicant can prove reputation in any jurisdiction, it may be able to obtain an injunction from a New Zealand court banning third-party use of a domain name in that jurisdiction. This may lead to New Zealand becoming a forum of choice for domain name disputes, regardless of the actual location in which the applicant built up its reputation.

Interestingly, the question of how the decision will be enforced seems to have been left for Maxwell Rotors to solve.

Edwin Hamilton, Baldwin Shelston Waters, Wellington

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