Posted: June 25th, 2015

Discuss the options available to CCL to achieve its aims.

In 2012 Cool Climate Properties Pty Ltd (‘CCL’), a property developer, decides to get into the island resort business. It buys an island off the coast of Victoria and has the island officially renamed “Fantasy Island” pursuant to the Geographic Place Names Act 1998 (Vic).

In 2013 CCP registers the trade mark FANTASY ISLAND, FANTASY ISLAND HOTEL and FANTASY ISLAND RESORT in respect of “resort hotel services” in class 43.

On the island it builds 3 complexes. One complex is a resort hotel, named “Fantasy Hotel”, another is a retail complex named “Fantasy Plaza” and the third is an apartment complex offering 300 apartments for private sale, named “Fantasy Tower”.

During 2014 CCP advertises the retail tenancies in the Fantasy Plaza for lease and the apartments in Fantasy Tower for private sale. CCP spends $20 million on this national print, radio, television and online promotional campaign to promote the new hotel, to sell the apartments at Fantasy Tower and to lease the retail tenancies at the Fantasy Plaza, by reference to the terms, Fantasy Island, Fantasy Towers, Fantasy Plaza, and Fantasy Hotel.

By 2015 the apartments are sold, the retail tenancies leased and the hotel is operating.

CCP now (June 2015) decides that it also wishes to operate a business as a letting agent for the private owners of apartments in Fantasy Tower who wish to let out their apartments for short term holiday rental or longer term lease.

CCP discovers that Ms Clever Cloggs, the owner of 10 of the apartments in Fantasy Tower is operating a business letting out her apartments and also acting as agent for other apartment owners who wish to rent or lease their apartments.

In 2014 Ms Clogs had:

•  registered the business name “Fantasy Tower Apartments”,
•  registered the domain names 
fantasytowerapartments.com.au fantasyislandapartments.com.au fantasyisland.com.au, and
•  obtained the email address “[email protected] 
Starting from January 2015, and during 2015, Ms Cloggs:
• Operates a website to which all three of the above domain names resolve, which

advertises and provides a booking service for the apartments that may be rented or leased though her business, “Fantasy Tower Apartments” A portion of the website is reproduced below.

FANTASY TOWER APARTMENTS

We offer luxurious apartments for short or long term stays in Fantasy Tower at the exciting new resort at Fantasy Island.

3

•  Sets up a Google Adwords account and bids on the keywords “Fantasy”, “Fantasy Island” “Fantasy Island Tower” and “Fantasy Island Hotel”, successful bids causing the advertisement below to appear. 
Fantasy Island 
www.fantasyisland.com.au 
Fantastic accommodation available at Fantasy Island
•  Contracts with a company that offers search engine optimisation to optimise her website’s organic listing on search engines when a user searches for Fantasy Island Hotel. This is achieved by inclusion of multiple copies of the term “Fantasy Island Hotel” in Ms Cloggs’ website’s metatags.
•  Advertises her services in various third party hotel booking websites where the apartments are described as hotel rooms. 
An aggrieved guest of the Fantasy Island Hotel (with no relationship to Ms Cloggs) registers a domain name fantasyislandresortripoff.com.au, which resolves to a website where aggrieved guests, including the registrant of this domain name, post non-defamatory and non- misleading or deceptive, descriptions of unhappy experiences at the resort. 
CCL is unhappy that Ms Clogg’s accommodation business is competing with its hotel business and claims that potential guests are confused between its hotel business and Ms Clogg’s apartment rental business. CCL would like to operate an apartment rental business using or incorporating the name “Fantasy Tower” and would like to prevent Ms Cloggs from using the name Fantasy Tower Apartments in her business. CCL would like the domain names (and email) registered to Ms Cloggs transferred into its name. 
CCL would also like to shut down, or transfer into its name so it can shut down, the domain name fantasyislandresortripoff.com.au.
• Questions & Instruction:
• 
Discuss the options available to CCL to achieve its aims.

Discuss the advantages and disadvantages and possible outcomes of the various options, including the probability of success, citing case law and legislation as appropriate. If you think you would need further information to better answer the question, identify what that information would be, and state why it is needed and how it would be used.

In your answer, consider the different approaches that might be used to achieve CCL’s objectives, and when litigation or another conflict resolution mechanism is considered, analyse the elements of relevant causes of action or complaint (what needs to be proved by a plaintiff/complainant to obtain relief), whether each element can be proven, and whether any defence is likely to apply.

Be succinct, do not waffle, as you have a relatively low word limit. Try to be structured and logical. Issue spotting is a key skill and key component of the mark in this exam. As in many intellectual property areas, outcomes of particular issues are often a matter of judgment on which reasonable persons may disagree, and it is more important to say why you take a particular view and be able to support it, than whether or not the examiner takes the same or a different view. Most of all, follow the late Douglas Adams’ advice, and don’t panic.