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    Domain Name Disputes

    Author: Harkness Henry & Co       

    In New Zealand, all the domain names ending in .co.nz, .org.nz, and .ac.nz are originally held by the New Zealand Internet Registry Limited, which trades as Domainz. Domainz is owed by the Internet Society of New Zealand Incorporated, a non-profit society established to manage New Zealand's domain names responsibly. Domainz was delegated this task by a global body responsible for the domain name system worldwide. Domainz does not have any statutory basis to manage domain names. Whether other entities can establish domain name distribution companies in New Zealand is currently a matter of debate.

    Domainz allocates the domain names purely on a first-come-first-served basis. It does not check to see whether granting a domain name to an individual would infringe someone else's rights or goodwill. It can, however, refuse to register domain names that contain offensive terms.

    Evicting Cybersquatters

    Cybersquatting is the practice of registering a well-known company domain name and offering to sell it back to the company.

    If you can prove that you have an established goodwill in a particular name or have a proprietary interest in a name by way of a trade mark, you can bring a claim against the person or corporation using the name, alleging that the use is in the breach of the Fair Trading Act 1986, or that the use amounts to the civil wrong of passing off. If the name is a registered trade mark, an action can also be taken under the Trade Marks Act 1953 seeking an injunction and damages.

    In Qantas Airways Limited v The Domain Name Company Limited (2000) 1 NZECC 70-005, the defendant registered the domain name qantas.co.nz. It then attempted to sell the name to Qantas. The High Court was quick to condemn this and ordered the defendant to de-register the name. The Court found that such actions were a deliberate blocking of the lawful exploitation of the name and a fraudulent use of Qantas's goodwill.

    A similar attempt to sell a domain name was made in OGGI Advertising Limited v McKenzie (1998) 6 NZBLC 102,567. The defendant registered oggi.co.nz and attempted to sell the name back to OGGI Advertising Limited. OGGI successfully made a passing off claim. The Court held that McKenzie's registering of the domain name would hinder OGGI in its business activities and was calculated to damage OGGI's goodwill.

    Dominion Breweries was also successful in its Court action to get the domain name db.co.nz back from the Domain Name Company in DB Breweries Ltd v The Domain Name Company Limited (2000) 1 NZECC 70-009.

    Disputes over .com, .net, and .org domain names are normally submitted to international arbitration for resolution. Applying for a .com, .net, or .org domain name involves agreeing to address domain name disputes by arbitration. A condition of registration also allows the domain name to be de-registered if it has been obtained in bad faith or used in bad faith. The United States also prohibits registration of domain names in bad faith with the intent to profit.

    Unless the parties agree otherwise, any dispute over international domain names is heard by the Arbitration and Mediation Centre of the World Intellectual Property Organization ("WIPO"). Statements of claim and defence are filed by e-mail and an arbitrator selected from an international panel decides the matter. A WIPO award is recognised in New Zealand and is enforceable as a normal judgment.

    As part of the agreement to register a domain name one must agree to refer disputes to arbitration.

    In the case Lion Nathan Limited v Wallace Waugh (WIPO Arbitration and Meditation Centre, Case No D2000-0030, 3 April 2000), the WIPO ordered Mr Waugh to assign the domain name steinlager.com to Lion Nathan. In another case, Moana Pacific Fisheries Limited v Turner New Zealand (WIPO Arbitration and Mediation Centre, Case No D2000-0139, 26 April 2000), the WIPO ordered that the domain name moanapacific.com be transferred to Moana Pacific Fisheries Limited.

    Similar Domain Names

    A claim can also be made about domain names that are similar to existing trade names and as such are likely to result in confusion.

    New Zealand Post was successful in preventing someone in California using the nzpost.com domain name as a pornographic Web site in New Zealand Post Ltd v Leng (1999) 1 NZECC 70-002.

    In the case New Zealand City Ltd v Baseline E-Com Ltd (2000) 1 NZECC 70-006, New Zealand City Limited had an established business using nzcity.co.nz. Baseline registered thecity.co.nz and established an online shopping Web site. The Court said Baseline could not use the domain name thecity.co.nz or any similar name using the word "city".

    Summary

    The New Zealand Courts along with international Courts have been very quick to adapt existing laws to prevent cybersquatting. The remedies available include emergency/interim injunctions, and such relief can often be obtained very quickly. If a third party is inappropriately holding a domain name that is associated with the goodwill of your business, you should find out what options are available to you.

    Copyright The Lawlink Group Ltd 2001

    Every effort has been made to ensure that this information is accurate. However, it is general introductory information only. It does not constitute legal advice and should not be relied on as such. Specialist legal advice should be sought in particular matters. Any reference to law and legislation is to New Zealand law and legislation.

    Jarrod True is a solicitor with the Hamilton Lawlink firm of Harkness Henry & Co.

    Web site Harkness Henry & Co

    Email: jarrod.true@harkness.co.nz

    Lawlink


    January, 2002
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