Protection of goodwill in domain names internationally: The Containerlift decision

In the Containerlift case, the tort of passing off was used to prevent a New Zealand company from engaging in conduct that would infringe the rights of an English company in the UK and Europe, notwithstanding the fact that the English company had no goodwill or reputation here.

In Containerlift Services Ltd & others v Maxwell Rotors Ltd & another, an English company successfully obtained an interim injunction in the Auckland High Court against a New Zealand competitor, in order to prevent the New Zealand company from using a .com domain name offshore.

Containerlift Services operated a fleet of trucks in the UK which were fitted with a special lifting mechanism which enabled containers to be loaded and unloaded. It had built up reputation and goodwill in Europe, and operated the website "containerlift.co.uk".

Maxwell Rotors is a New Zealand company which also manufactures container loading equipment. It proceeded to register the domain name "containerlift.com".

Containerlift Services sued Maxwell Rotors in New Zealand for passing off and breach of the Fair Trading Act. The case was unusual because Containerlift Services had no reputation or goodwill in New Zealand, and was suing Maxwell Rotors in New Zealand to protect the name "Containerlift" in the UK and Europe.

Because Maxwell Rotors are resident in New Zealand, Containerlift Services was entitled to sue Maxwell Rotors here. An interim injunction was sought to restrain Maxwell Rotors from using the name "Containerlift".

There are precedents for New Zealand courts restraining New Zealand defendants from engaging in improper conduct offshore.

In this case, the Court found that the requirements for the issue of an interim injunction had been made out in relation to the passing off cause of action, and ordered Maxwell Rotors to stop using the name "Containerlift" until further order of the Court. (Having decided to grant the injunction in relation to passing off, the Court found it unnecessary to determine whether an injunction should also issue under the Fair Trading Act.)

The order prevented Maxwell Rotors from continuing to use the "containerlift.com" domain name anywhere, in order to protect the rights of the plaintiffs to the "Containerlift" name in Europe.

Enquiries and information

For more information on domain name infringement, please email or call Alan Ringwood on 64 9 916 8925.