Domain Names : what they are, why they are important,
and how rights in them are obtained.
What is a domain name?
A domain name is the world-based label used to identify one or more
numeric Internet Protocol (IP) addresses. Domain names are the
essential component of .com, .co.nz and .org names (to name just
three) under which websites operate.
Why are domain names important?
The right domain name is a gateway to opportunity: if a business
doesn't have the right domain name, it can miss significant
The 'right' domain name can be a distinctive word which
is the same name as a business rather than a descriptive term (for
example, neta.co.nz or netagarden.co.nz rather than
gardenhoses.co.nz) or a catchy acronym (for example,
jaws.co.nz for James & Wells and wbn.co.nz
for this publication).
The right domain name will be more memorable to Internet users
who may or may not yet be customers. In addition, if a dispute
arises concerning a domain name registered after yours which is
identical or similar to yours you will stand a much better chance
of establishing rights in the subject domain name and therefore in
recovering the registration. Descriptive or generic domain names,
such as gardenhoses.co.nz, are very difficult to establish
rights in and therefore recover.
The more memorable a domain name, the easier it will be
For online businesses the right domain name is critical. Amazon,
Trademe and Fishpond are good examples of online traders which each
use a short, distinctive domain name. A descriptive domain name is
less likely to be memorable leading to a greater amount of
marketing and promotion to attract customers. The more memorable a
domain name, the easier it will be recalled and the more likely
customers will disseminate it by word of mouth.
How are rights secured in domain name?
Rights in domain names are initially secured by registration on a
first-come, first-served basis through a Registrar (such as
Registrants of domain names do not 'own' their
Unlike trade mark registrations, domain name registrations are not
'owned' by registrants. The act of registration grants a
person a licence to use a particular domain name; the licence being
granted by ICANN, the global body responsible for administering the
domain name system.
As with all licences, a domain name 'licence' can be
transferred or cancelled. In New Zealand, a .nz domain name
registration will be transferred or cancelled if it is deemed under
the New Zealand Dispute Resolution Service Policy to be an
'unfair' registration. Broadly speaking, a domain name
registration will be 'unfair' if its mere registration or
the manner in which it has been, or is likely to be used, took
unfair advantage of or was unfairly detrimental to a person's
A person other than the registrant of a domain name may have
rights in a particular domain name provided that person had
pre-existing rights in an identical or similar name. A
person cannot successfully claim rights in a domain name registered
by a third party if they started using an identical or similar name
after the subject domain name was registered.
In short, domain names are a fundamental piece of the commercial
landscape. If you are considering starting up a new business, you
should think first – not last – about the domain name
you want. If your research reveals your preferred domain name is
not available, you may well have to re-think your trading name from
the top as well as your branding strategy.
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
The Court of Arbitration for Sports has finally given its arbitral award in the dispute between Ms. Maria Sharapova and the International Tennis Federation wherein Sharapova had challenged the 2 year ban.
Data Protection refers to the set of privacy laws, policies and procedures that aim to minimize intrusion into one’s privacy caused by the collection, storage and dissemination of personal data.
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”
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).