Tauranga-based educator Gary Benner has been ordered to stop using open source educational platform MOODLE and to surrender domain names featuring that name. The High Court also cancelled his registration of the MOODLE trade mark ruling Mr Benner obtained registration in bad faith.
Mr Benner was ruled to be both in breach of the Fair Trading Act and liable in the tort of passing off when he set up business using the MOODLE name after an earlier one year licensing agreement ended in 2005.
Based in Perth, MOODLE was set up in 1999 by Martin Dougiamas. He told the High Court nearly fifteen million online courses are now offered on the MOODLE platform by over 101,000 providers: universities, corporations and government departments. In New Zealand, some 330 registered sites use MOODLE platform software.
The High Court was told Mr Benner signed up in September 2004 to use and host the MOODLE service. Responding to MOODLE inquiries seven months later, Mr Benner acknowledged only one customer had been signed up achieving a royalty of less the $125. Mr Benner did not pay an annual renewal fee when due. The licensing agreement lapsed.
A decade later, Mr Dougiamas learnt of a website controlled by Mr Benner using the MOODLE logo and New Zealand registered domain names containing the MOODLE name. A ‘cease and desist’ letter was sent. Mr Benner remodelled his website. It no longer referred to the MOODLE platform but instead purported to be a website relating to a hybrid breed of dog produced by breeding a Maltese with a miniature poodle; home page for New Zealand Moodle Breeders. Several months later, references to MOODLE reappeared on the website. Threatened again with legal action, Mr Benner said he held trademark rights to the name. The court was told Mr Dougiamas registered MOODLE as a trademark in New Zealand back in 2006. Registration lapsed in July 2016 when payment of renewal fees was inadvertently overlooked. In what was described as an opportunistic move, Mr Benner moved immediately to register the trademark in his own name. Justice Venning cancelled his registration. MOODLE’s owners are entitled to recover any profits Mr Benner made through unauthorised use of the name.
Mr Benner did not appear in court to defend MOODLE’s claims.
Dougiamas v. 123 Internet Ltd – High Court (22.06.18)
18.130