New Zealand: Did you know...You must prove rights in a domain name complaint under New Zealand's DRSP?

Last Updated: 31 January 2012
Article by Ben Cain

At the end of May 2011, New Zealand's Dispute Resolution Service Policy (DRSP) for .nz domain name registrations celebrated its fifth birthday. In that time, 76 complaints have resulted in transfer orders for the subject domain name(s), while 13 complaints were dismissed by experts.

At face value, this statistic indicates that the odds of winning are overwhelmingly in favour of complainants - so why did 'the 13' fail?

This 'Did you know' looks briefly at the first reason why some of these complaints were dismissed: the failure to prove rights in an identical or similar name.

Refresher: what a complainant needs to prove

For a complaint to succeed, you must prove that:

  1. You have rights in respect of a name or mark which is identical or similar to the disputed domain name; and
  2. The disputed domain name, in the hands of the registrant, is an unfair registration, meaning the domain name:
    1. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to your rights; or
    2. has been, or is likely to be, used in a manner which took unfair advantage of or was unfairly detrimental to your rights.

To maximise your chances of success, it is critical your complaint addresses each of the elements in (a) and (b)(i) or (ii) above. It is also critical that your argument in respect of these elements is substantiated wherever possible by way of supporting evidence. To further maximise your chances of success, you must also address any defences which the domain name registrant (the respondent) may put forward (see our May 2011 ' Did you know').

Woolaway Construction Limited v Te Pari Products Ltd : an example of unproven rights

The decision of Expert Paterson in Woolaway Construction Limited v Te Pari Products Ltd (DRS Ref.607, 17 March 2011) concerning the domain name is a recent example of a complainant not proving rights in a name.

The Complainant, Woolaway Construction Ltd, claimed that it and a company on whose behalf it was acting, Farmquip Limited, had rights in the name FARMQUIP which was identical to the domain name. The Complainant claimed those rights arose out of the reputation and goodwill the two businesses had built up in the name since May 2010, although it subsequently changed this to June 2010. The Complainant further claimed its rights arose out of an application1 to register the trade mark FARMQUIP.

The Respondent, Te Pari Products Ltd, claimed it belonged to a "Global Livestock Equipment Group", to which both an Australian company, "Arrow Farmquip", and an Argentinian company, "Farmquip Argentinia" also belonged. The Respondent claimed that the phrase "farmquip" was not unique to the Complainant as a result of this overseas use, and that it registered the domain name to preserve the possibility of future global branding for it as part of the Global Livestock Equipment Group.

In finding that the Complainant had not established either registered or unregistered rights in an identical name, the Expert relied on two principal factors: first, the factual timeline in the dispute, and, second, the fact that company incorporation does not give rise to rights in a name.

The factual timeline was this:

  • the Complainant's associated company, Farmquip Limited, was incorporated on 14 May 2010;
  • the domain name was registered on 20 May 2010;
  • the Complainant filed its trade mark application on 1 June 2010;
  • the Complainant commenced marketing activities to build up its reputation in June 2010.

On this timeline, the Expert found that the Complainants could not have built up a reputation or goodwill in the name by 20 May 2010 - ie within 6 days of Farmquip Ltd being incorporated. Consequently the Complainant could not rely on rights arising from a common law or unregistered trade mark as there was no unregistered trademark which had achieved reputation in fact. Further, the Complainant could not rely on its trade mark application because this post-dated the date the domain name was registered.

The Expert went onto to consider whether the Complainant could rely on any right arising from the incorporation of Farmquip Limited:

The only possible right which the Complainants could have had at 20 May 2010, on the evidence produced, was any right which would arise from the incorporation of FL. However, in the circumstances of this case, registration of a company name does not in itself give rise to a Right. In some circumstances, it may be a factor to be taken into account in establishing the existence of an unregistered common law mark or trade name but the incorporation of a company six days before the registration of the Domain Name can not in itself give a Right.

Thus it was that from the evidence presented by the Complainant, the Expert found that the Complainant, and Farmquip Limited, did not have rights in the name FARMQUIP at the date of domain name registration. Consequently, the Expert did not have to go on and consider whether the Respondent's registration of the domain name was in fact unfair.

What the complainant should have done

Had the Complainant done more to establish its rights, for example by filing its trade mark application on the same day Farmquip Limited was incorporated, it is possible the Expert would have ultimately found in the Complainant's favour. Of course, the best course of action would have been to register the domain name on the same day Farmquip Limited was incorporated.

As it is, the domain name now (at the time of writing) diverts to the aforementioned Australian company's URL and website, and the Complainant has had to satisfy itself with a .co registration:


1 In most jurisdictions patent applications are subjected to an examination process to determine whether the subject matter is novel and inventive. The terms "application", "pending" or "patent application" are used to describe the status of the application up to grant.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

James and Wells is the 2010 New Zealand Law Awards winner of the Intellectual Property Law Award for excellence in client service.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Ben Cain
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.