To get the metaphorical ball rolling this article discusses
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 word-based label used to identify one or
more numeric Internet Protocol (IP1) 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 publication2).
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.
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
Unlike trade mark registrations, domain name registrations are
not 'owned' by registrants. The act of registration grants
a person a licence3 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
This article first appeared in the Waikato Business
1. Refers 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
2. At some point a patent application is published,
meaning its contents are available for anyone to read. In New
Zealand publication occurs when a patent application is accepted.
However, in most countries publication occurs 18 months after the
application is filed.
3. A legal document granting another party permission to
use an invention that is the subject of a granted patent. The
details of a licence depend on the arrangement agreed by the
parties, but normally a licence fee and/or royalties will be
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®
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