‘.nz’ Domain Name Dispute Resolution Service Policy – 18 months on

The New Zealand domain name Dispute Resolution Service Policy (nzDRSP) has been operating for 18 months. The nzDRSP provides an accessible and cost-effective way for trade mark owners to take action against someone who has wrongfully registered their trade mark or name as a domain name.

The policy seems to be working well. Around 40% of the complaints received have been resolved at mediation. And, of the complaints that have been decided by an expert, most domain names have been transferred to the complainant.

However, complainants need to argue their case carefully to show that they own rights in the name, and that the respondent’s registration is unfair. Sometimes, complaints have failed simply because the complainant has not filed appropriate evidence.

What can you do if someone wrongfully registers your trade mark or name as a domain name?

If someone wrongfully registers your name or trade mark as a domain name (for example, to attract users that would otherwise not have visited their website, or to otherwise threaten your business), you can lodge a complaint under the nzDRSP. To succeed, you need to be able to show that:

• you have rights in a name or trade mark that is identical or similar to the domain name in question; and

• the domain name, in the hands of the registrant, is an “unfair registration”.

An unfair registration is a domain name that takes unfair advantage of or is unfairly detrimental to your rights in the name.

If the domain name holder responds to your complaint, the registry will appoint a mediator who will mediate at no charge. You only pay an official fee if the respondent doesn’t respond to your complaint or if the mediation fails. At that stage, an expert is appointed who will decide the case in line with the policy.

The nzDRSP has been welcomed by all domain name holders and especially trade mark owners. Before the nzDRSP, trade mark owners could only resolve .nz domain name disputes by negotiation or by issuing High Court proceedings for trade mark infringement, passing-off or breach of the New Zealand Fair Trading Act 1986 – a costly and time consuming process.

If you think that someone has unfairly registered your name or trade mark as a domain name, give us a call.

Angela Wray

Advertising online

Although many of the same rules apply to advertising on the net as they do when advertising in other media, there are some differences to note.

Advertising on the internet is much the same as advertising in any other media. If directed at New Zealand consumers, your advertisement should not be misleading and should not cause widespread offence. If it is misleading, the advertisement will breach the Fair Trading Act. If your advertisement is likely to cause widespread offence then the Advertising Standards Authority (the ASA) may ban it.

But one difference with advertisements on the internet is that the group of people that will see your advertisement narrows. This means that the law applies differently to your internet advertisements than it does when you advertise in more mainstream media like television.

To breach the Fair Trading Act or ASA codes, your online advertisement needs to mislead or offend (or be likely to mislead or offend) those who are likely to go to the website, and not the general public.

This can make a big difference. Take for example the FCUK clothing brand in the UK. Almost all of FCUK's advertising offended members of the older generation (not to mention those with dyslexia). Because billboards are seen by many people including older people, advertisers of the FCUK brand had to be careful when advertising in that media. But when advertising on their own website, or on websites mainly read by those between 18 and 35 years old, FCUK were able to stretch the boundaries of taste.

But while you might be able to be more risque in your online advertising, it does not mean that you can relax the truth. If viewers of the advertisement are likely to take as true a statement that is false, then regardless of the media on which your advertisement runs, this is likely to breach the ASA code and the Fair Trading Act.

There is scope to advertise in a more edgy way on appropriate websites than is often the case in more traditional mainstream media. But continue to take care - the law does nevertheless stretch into cyberspace.

Dan Winfield

Front running - caution when searching domain name registers

A new practice known as ‘domain name front running’ is causing problems for some domain name owners. What is front running and how can you avoid becoming a front runner’s victim?

When a business or individual considers registering a possible domain name, they usually start out by conducting a search to see if the domain name has already been registered. Even if the search shows that the domain name is available, it is not uncommon for the applicant to delay filing the application while they consider the search results in detail and make their final decision about the registration.

But there have been some worrying reports about what happens between the time the domain name is searched and the time when the application is eventually filed.

Several recent reports reveal that domain name registrars use or sell information about domain names that have been searched. Domain names that have been searched by the public to see if they are available for registration are being quickly registered, either by the registrars themselves, or those who buy the search information from them. This is called ‘front running’. By the time the person who searched the name decides to register it, the name is no longer available.

If you are considering registering a domain name, and want to check if it is available, take care not to use some registrars such as Network Solutions. There are some registrars who are “safe” to search. At the very least, make decisions quickly and minimise the time between your search and filing the application to register your domain name.

If you would like further information about reported front runners or need help to search and file your domain names safely, please contact us.

Damian Broadley

Keep watching out for domain name scams

In the last issue of Brandscape we warned our readers about scam Chinese domain name notices. Since then, several clients have called us to report scams originating from other countries as well. There seems to be more than one scam circulating.

We can check the authenticity of any notice you receive advising that your intellectual property rights are being infringed by a foreign domain name registration. Please call or send us a copy of the notice before you reply.

Russell Law

Bio of the month - Lynell Tuffery

Lynell Tuffery is a trade mark specialist based in our Wellington office.

Lynell's career in intellectual property began in 1995 when she joined A J Park as a junior trade mark executive.

Lynell specialises in providing trade mark and branding advice to a wide range of local and international clients, including the protection and enforcement of trade marks in New Zealand and overseas. Lynell has worked with organisations from a wide range of industries, enjoying the variety and uniqueness each activity brings.

Lynell is of Ngati Ruanui descent and has developed an interest in the protection of indigenous culture. Lynell also specialises in advising on the protection of trade marks throughout the Pacific Islands.

Contact Lynell Tuffery