Waikato Business News June/July 2021

6 WAIKATO BUSINESS NEWS June/July 2021
‘So much potential
in social enterprise’
Business is one of the best vehicles to unleash the creativity
needed for change, a Waikato impact leader told a Hamilton
audience.
Impact Hub Waikato
co-founder and director
Nanise Ginnen said the
current state of capitalism has
created some major problems
socially and environmentally.
“But on the flip side of that,
it has also driven some amazing
innovation and creativity.
At heart, I firmly believe that
business is one of the best vehicles
for us to achieve change.
“And I think that's probably
at the core of what
motivates me.”
Ginnen was a panel member
at the Vision 2020 event,
held at the Meteor, and focused
on change in a post-Covid
world.
Ginnen said she has been
involved in the Hub’s work,
not only in its central Hamilton
co-working space, but also in
the wider Waikato region and
her home town, Tokoroa.
“We've done a little bit of
work there with entrepreneurs
and I'm really looking forward
to the next phase of that development.
“I think there's so much
potential in social enterprise,
but I do think, as a community
of people - I mean everyone
in this room I think are interested
in social enterprise - we
could be doing more to pull us
together and think about some
of the ways that we could be
collaborating to make a bigger
impact.”
Fellow panellist Harvey
Brookes, executive director of
the Waikato Wellbeing Project,
voiced a similar sentiment.
“To be human is to be entrepreneurial,
and is to be creative.
It's just who we are. And
so I just can't see that going
away. The question is, in what
direction do we harness that?
“I just want to help create a
system where that innovation
and that entrepreneurship can
be directed in a way which is
better for us and better for the
planet and better for people.”
He said his concern was
with finding root causes - “getting
down underneath the iceberg
and saying, ‘what's really
going on here?’
“And I think, if we do that,
as well as growing this amazing
innovation ecosystem, then
we have every chance of a better
world.”
Ezra Hirawani, founder of
Nau Mai Ra - “New Zealand's
first kaupapa Maori power
company” - said his firm’s
goal is to alleviate or eliminate
energy hardship.
He said it is wrong that
electricity is traded as a commodity.
“I don't think anyone
should have the ability, or the
power to deny a mother the
ability to feed a family. I just
think that that's wrong.”
He said the company was
driven by “the three Ts: our
tupuna, our tangata and our
tamariki”.
“We believe that money
follows good ideas. And that if
you focus on your idea, then all
that other stuff will just come.
“There's people that are out
there that we didn't know were
out there that struggle to have
efficient energy to heat their
homes. And so what we take
for granted other people have
to fight for. So I'd love to work
with everyone in the spirit of
manaakitanga to eliminate
some of those social inequities
that are created through commercial
businesses.”
The fourth member of the
panel, Hamilton City Council
head of procurement Igor
Magud, said wellbeing was
core to his organisation’s
approach. “This is really about
connecting - connecting the
supply side and demand side.
If we're the ones that have
the demand, for me, a huge
component of my job is to
increase the accessibility.
Audience members are all attention
Harvey Brookes and Nanise Ginnen
“I really hope to improve
the visibility of what we need,
making sure that our community
has an option to see that,
and to be able to respond to it.”
Impact Hub Waikato is
a part of a worldwide network
focused on building
entrepreneurial communities
for impact.
The event featured a keynote
presentation via video
linkup from Impact Hub
Global executive director
Gabriela Gandel.
Vision 2030 is a quarterly
event series organised
by Impact Hub Waikato and
aimed at bringing together
thought leaders, practitioners
and experts, to search for
potential barriers, opportunities
for collaboration and
means to accelerate.
Flat as... Jet Charge denied .nz domain name
Domain name complaints
involving .nz domains
have become something
of a rare beast. In 2011, eleven
decisions were issued under the
.nz Dispute Resolution Service
Policy (DRSP). So far this year,
only one has been issued. The
decision is an interesting one,
however, and serves as a timely
reminder to businesses to futureproof
their domain name rights.
The subject domain name
was jetcharge.co.nz. The parties
to the complaint were Jet
Charge Pty Ltd and a Mr Russell
Shepherd, an Australian resident.
More about them shortly.
Under the .nz DRSP, a complainant
has to establish two
things: first, that it has rights in
respect of a name or mark which
is identical or similar to the subject
domain name; and, second,
that the subject domain name, in
the hands of the registrant, is an
“unfair registration”.
A complainant can demonstrate
‘rights’ in a name or mark
by presenting sufficient evidence
of use of a name or mark
or evidence of a registered trade
mark. An “unfair registration”
means a registration which ‘was
registered or otherwise acquired
in a manner which, at the time
INTELLECTUAL PROPERTY ISSUES
> BY BEN CAIN
Ben Cain is a Senior Associate at James & Wells and a Resolution
Institute-accredited mediator. He can be contacted at 07 957 5660
(Hamilton), 07 928 4470 (Tauranga) and benc@jaws.co.nz.
when the registration or acquisition
took place, took unfair
advantage of or was unfairly
detrimental to [a complainant’s
rights]’, or ‘a registration which
has been, or is likely to be, used
in a manner which took unfair
advantage of or was unfairly
detrimental to [a complainant’s
rights]’.
The DRSP contains examples
of what might constitute an
unfair registration: two examples
are registering a domain
name to stop a rights holder
from registering it (i.e. a ‘blocking’
registration), and registering
a domain name primarily for the
purpose of unfairly disrupting
the business of a rights holder.
These two examples featured in
the jetcharge.co.nz decision.
Back to the story: the complainant,
Jet Charge Pty Ltd,
was/is an Australian company
incorporated in June 2014
providing installation, servicing
and delivery services for
electric car charging stations
in Australia under and by reference
to the trade mark JET
CHARGE. Jet Charge also
provides charging stations and
accessories, and associated firmware
and software for charging
electric cars using the JET
CHARGE mark. Its website is at
www.jetcharge.com.au.
Jet Charge owns New Zealand
trade mark registration no.
1131753 which covers the trade
mark JET CHARGE in classes
9, 37 and 42. The application for
the mark was filed with IPONZ
on 7 October 2019 and claimed
priority back to 27 May 2019.
The goods and services of the
registration reflect Jet Charge’s
business as described.
The respondent was Russell
Shepherd, an Australian resident
associated with a direct competitor
to Jet Charge in Australia
called EVolution Australia.
Mr Shepherd registered
jetcharge.co.nz on 16 July 2017
- approximately two years
before the priority date of Jet
Charge’s New Zealand trade
mark registration. Mr Shepherd
claimed he had “interests, business
operations and premises”
in New Zealand and intended
“to make use of the Domain
Name for the purposes of further
extending his business interests
in New Zealand”.
Between June 2019 and
May 2020, Jet Charge tried
unsuccessfully to persuade Mr
Shepherd to transfer the registration
to it. Having failed,
Jet Charge filed the domain
name complaint.
Before the Expert, Jet Charge
contended that it had registered
and unregistered rights in the
jetcharge.co.nz domain name,
and that Mr Shepherd’s registration
was ‘unfair’ because he
did not have any “legitimate
interest in, or use for, the registration
or use of the words “Jet
Charge” either as a trade mark
or a domain name”, because
he registered the domain name
to disrupt Jet Charge’s business,
and because his retention
of the domain name, despite
requests to cancel or transfer
it to Jet Charge, meant he was
using it as a blocking registration.
(Jet Charge also contended
that a temporary re-direction of
jetcharge.co.nz to evolutionaustralia.com.au
was ‘very likely
to confuse, mislead or deceive
people’ but this argument is
not relevant to the point of
this article.)
In reply, Mr Shepherd
pointed out the two years
between registration of the
domain name and Jet Charge’s
trade mark in New Zealand,
and asserted, among other
things, that:
(a) The complaint was “an
opportunistic attempt
[by Jet Charge] to obtain
the domain name by
force which demonstrates
poor planning and
a sense of entitlement by
[Jet Charge]”; and
(b) That having “…“a (belated)
trade mark” and desires
to extend its business
operation into New Zealand
should not give [Jet Charge]
a right to the JET CHARGE
name in [New Zealand].
Applying the DRSP to the evidence,
the Expert found that
Jet Charge had rights in JET
CHARGE New Zealand by virtue
of its trade mark registration;
however, the Expert did not find
that Jet Charge had unregistered
rights – i.e. it had reputation and
goodwill – in JET CHARGE
in New Zealand before or after
the domain name was registered
because it had failed to file “any
meaningful evidence” supporting
its assertion of rights.
Even though it had rights
in JET CHARGE, the Expert
found that Mr Shepherd’s registration
– and continued registration
– of jetcharge.co.nz was not
‘unfair’. The reasons why again
came down to evidence – or
rather the lack of it. Jet Charge
failed to prove that when Mr
Shepherd registered the domain
name, Jet Charge had any rights
in the JET CHARGE trade
mark in New Zealand. It also
failed to prove that, when he
registered the domain name, Mr
Shepherd had any knowledge
of Jet Charge’s future plans for
expansion into New Zealand.
Jet Charge also failed to prove
it had an interest in using the
JET CHARGE mark in New
Zealand.
The domain name is not currently
being used by Mr Shepherd
or EVolution Australia. If
Mr Shepherd decides to use it in
the future, however, Jet Charge
could lodge another complaint
in an effort to retrieve it. For
now, though, Jet Stream must
find another domain to use.
The crucial lesson for businesses
to take home from this
article is that – as Mr Shepherd’s
comments highlighted – if the
future expansion of your business
potentially requires you
to register a domain name in
another country, take whatever
steps are necessary as soon as
possible to register that domain
name. Such steps might include
obtaining a trade mark registration
in a country of interest,
even if it is unlikely you will use
that trade mark in that country
for a few years.
If the future
expansion of your
business potentially
requires you to
register a domain
name in another
country, take
whatever steps are
necessary as soon as
possible to register
that domain name.
(The other lesson is that if
you are going to make a complaint
under the DRSP, make
sure you file enough of the right
evidence…)