Domain Disputes

On 1st June 2006 a new dispute resolution service (DRS) was launched to assist with disputes over ownership rights of .nz domain names.

According to information on the DRS homepage, in order to succeed with a domain name complaint, one must prove, on the balance of probabilities, that both of these factors are present:

• the complainant has rights to a name or mark which is identical or similar to the domain name in dispute
• the registration of the domain name by the current registrant is unfair

If the complainant is successful in their case then a DRS expert may order the domain name to be cancelled, suspended, transferred or amended. It is not possible for a DRS expert to order the defendent to pay the costs of the DRS proceedings.

What does the DRS mean for .nz domain name traders?

.nz domain name traders need to be thoroughly familiar with the DRS policy document!

It goes without saying that trademarked names and typosquatting of trademarked names should be avoided. It may still be possible to win a complaint against a trademarked name so long as the registration is deemed to be fair (e.g. through legitimate use of the domain name in a different industry sector), but this is unlikely to be the case for domain name traders. It should be mentioned that rights to a name or mark doesn't necessarily mean that a registered trademark is required. A company name, trading name, product name or personal name may also qualify, though the outcome would be less clear-cut in these cases.

Assuming that most complainants are able to demonstrate their rights to a name or mark, most DRS cases are likely to centre on the issue of whether or not the registration of the domain name was made unfairly. There is no exact definition of what constitutes an unfair registration, but the DRS policy document does present some guidelines for determining evidence of unfair registration on the one hand and how to demonstrate that a registration is not an unfair registration on the other.

If you receive notice of DRS proceedings against you then you have the right to file a response within 15 days. Failing to file a reponse within this time does not mean that you will automatically lose the case - instead it means that an informal mediation will not be possible and so the complainant will have to pay for a DRS expert to decide the case.

Also of importance is the fact that trademark holders are not required to use the DRS - they are still perfectly within their rights to take a trademark dispute before the New Zealand legal courts.