It is a central feature of the Dispute Resolution
Service Policy (DRSP) for .nz domain name registrations that a
successful complainant does not receive an award of costs. Unfair?
I think so.
The absence of any award under the DRSP is in complete contrast
to proceedings in New Zealand's principal courts. It's also
ironic given the DRSP is a process to recover domain names that
have been registered unfairly.
Why is it then that the DRSP does not provide for costs to be
awarded to successful complainants? The answer, I understand, is
because it is too difficult for the Dispute Resolution Service to
enforce an award of costs - ie make the losing person pay.
I have a certain amount of sympathy with this argument where the
respondents in domain name disputes are located overseas. Almost by
definition it is impossible (and certainly not worth the cost) of
trying to enforce costs awards against overseas registrants.
My sympathy is immediately tempered by two things: first, that
the Domain Name Commission allows overseas people to register .nz
domain names in the first place (which is not the case for .com.au
and .net.au domains in Australia – see below); and, second,
there is actually a solution, irrespective of whether registrants
are based overseas or not.
To register a com.au or a .net.au domain name registrants must
be, for example, an Australian registered company, an Australian
partnership or sole trader, an owner1 or applicant of an
Australian Registered Trade Mark or an association incorporated in
any Australian State or Territory. There are no such qualifying
criteria in New Zealand: our domain name doors are wide open. Not
good enough, I say.
As for costs awards, the answer is simple and already used in
our courts: security for costs. I recently proposed to the Domain
Name Commission that when a domain name complaint is filed, the
domain name registrant (the respondent) should pay a sum as
security for costs into a DNC held bank account so that if the
complaint proceeds to Expert determination and succeeds that sum
should be paid to the complainant. That amount in security is
equivalent to the Expert's fee.
1A legal term to describe a person entitled to
make an application for a patent. In New Zealand
this includes any person claiming to be the true and first
inventor, the assignee of the inventor, or the
legal representative of a deceased inventor or his/her
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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