At the end of 2009, there were an estimated 192,000,000 registered domain names (source: ICANN). If you were the registrant of one of these, you might think you own your domain name. Not so.
Personal property right
When you register a trade mark, you obtain a personal property right in that trade mark. As the owner, and as long as you pay the necessary fees, you have the exclusive right to use that trade mark how you want. You can authorise others to use your trade mark, and can assign ownership of your mark to someone else.
Use of your trade mark registration also provides you with a primary defence if the owner of an identical or similar registered trade mark alleges you are infringing their mark by using your mark in relation to identical or similar goods or services covered by their registration.
Contractual license to use
When you register a domain name, you obtain a contractual licence to use that domain name. You do not obtain a personal property right in that domain name. You obtain your licence from the registrar with whom you register your domain name, such as Domainz.co.nz, which in turn has a licence to operate from the Internet Corporation for Assigned Names and Numbers (ICANN). As the body responsible for the global administration of domain names, ICANN is the effective "owner" of all domain names.
As a licencee, you still enjoy the same practical rights as with a trade mark registration, such as the exclusive right to use the domain name, the ability to authorise another person to use the domain name, and the ability to transfer the domain name registration to someone else.
In contrast to a trade mark registration, however, use of your domain name registration does not provide a primary defence against an allegation of infringement of another person's rights. If your registration is found to infringe another person's rights, your domain name registration may be transferred or cancelled under ICANN's Uniform Dispute Resolution Policy (UDRP) for domains such as .com or .net, or the New Zealand Domain Name Commission's Dispute Resolution Service Policy (DRSP) for domains such as .co.nz or .net.nz. 'Ownership' of a domain name registration is not always and solely determined by the principle of 'first come, first served', and, contrary to popular myth, never has been.
A list of FAQs about domain names can be found on our website. Here you will find answers to 'domain names 101' questions such as:
- What is a domain name?
- Why register a domain name?
- Who can register a domain name?
- What domain name identifier should I choose?
- What type of domain name suffix do I choose?
- Can I stop someone from using a domain name similar to my trade mark/company name?
In our next newsletter, we will further explore point (c) above, focusing on the significance of naming strategies, in particular the importance of choosing non-descriptive company and brand names.
If you would like to discuss your domain name registration(s) requirements with us, including any potential domain name dispute, please contact your trade mark attorney or Ben Cain in our Litigation team at email@example.com.
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.