Intellectual property law is rights-based law. In the
context of .nz domain names, rights in a trade mark are essential
if you want to recover an unfairly registered domain name. If you
haven't got rights, you haven't got a leg to stand
One company that recently found this out to its cost was an
Australian online retailer.
In late November 2012 I received an email from Mr Jones (not the
client's real name). Mr Jones had a very specific enquiry: can
an Australian company, which operates under a registered brand name
in Australia, lay claim to a .co.nz domain name
when that company in no way operates in New Zealand and does not
have its trade mark registered here?
Mr Jones (as it transpired) had received a letter from an
Australian company via its attorneys alleging his registration of a
domain name ("the Domain Name") was contrary to its
intellectual property1 rights.
The company alleged it had rights in the Domain Name arising
from an Australian trade mark registration for the same name, use
of this trade mark in a com.au domain name registration and use of
this trade mark on a website operated under the com.au domain
The company alleged Mr Jones' registration of the Domain
Name breached its rights under Australian trade mark law,
Australian fair trading law and New Zealand fair trading law. The
company demanded, among other things, that Mr Jones transfer the
Domain Name to it. If Mr Jones did not comply with its demands, the
company threatened further legal action, including under the
Uniform Domain Name Dispute Resolution Policy (UDRP) (the dispute
resolution policy for top level domain names such as .com).
Mr Jones felt appreciably threatened by this letter and so
contacted James & Wells for advice.
Having obtained the important background facts I concluded Mr
Jones did not have to yield to the Australian company's demands
for three reasons:
First, none of the rights the Australian company was asserting
against Mr Jones applied in New Zealand. An Australian trade mark
registration has no standing in New Zealand (unless it is used as
the basis for a New Zealand trade mark application2,
which was not the case here). In addition, the company did not have
a New Zealand trade mark registration nor was it using its trade
mark in New Zealand (indeed, the company's Australian website
openly stated it did not sell and ship goods to locations outside
Second, Australian fair trading laws do not apply in New
Zealand, New Zealand fair trading laws do. Since the company had
not used its trade mark in New Zealand however it had no rights on
which to base any action under NZ fair trading laws.
Third, the UDRP does not apply to domain name disputes involving
.nz domain names, – the Domain Name Dispute Resolution Policy
(DRSP) does. Again, though, since the company did not have a New
Zealand trade mark registration and was not using its trade mark in
New Zealand it had no rights on which to base a complaint under the
This was a classic case of an Australian company devising a
brand name, establishing rights in that brand name in Australia but
failing to establish rights in that brand name in New Zealand until
the horse named Rights had already bolted, at least in respect of
the Domain Name.
The message to take away from this article then is this: if you
plan to expand your business overseas you need to undertake a
search of the trade marks and register in each potential market. A
search of those markets for any unregistered trade marks, and a
domain name registration search – here at JAWS, we can do all
this for you.
1Refers to the ownership of an intangible
thing - the innovative idea behind a new technology, product,
process, design or plant variety, and other intangibles such as
trade secrets, goodwill and reputation, and trade marks. Although
intangible, the law recognises intellectual property as a form of
property which can be sold, licensed, damaged or
trespassed upon. Intellectual property encompasses
patents, designs, trade marks and copyright.
2In 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 & Wells Intellectual Property, three time winner
of the New Zealand Intellectual Property Laws Award and first IP
firm in the world to achieve CEMARS® certification.
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