ARTICLE
7 August 2011

Did you know...In 2010, complainants were successful in 90% of the decisions issued under NZ’s domain name DRSP?

A look at the effectiveness of NZ's Dispute Resolution Service Policy.
New Zealand Litigation, Mediation & Arbitration
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As it approaches its 5th birthday in June this year, NZ's Dispute Resolution Service Policy (DRSP) is showing itself to be a very effective dispute resolution mechanism for complaints in respect of .nz domain name registrations.

That 90% of decided complaints in 2010 were resolved in favour of complainants is clearly testament to this - and also how critical it is to draft a complaint correctly.

2010 - The full statistical picture

In 2010, a total of 49 complaints were filed with the Domain Name Commission. Of these, 15 were withdrawn by the complainants (we do not know why), and 12 were settled either between the parties directly (6) or by the mandatory mediation step under the DRSP (also 6).

20 complaints were decided by Experts appointed by the Commission. In 18 (90%) of these decisions, the Experts ordered that the disputed domain name be transferred to the complainant, while in 2 (10%) of these decisions the Experts ordered the complaints be dismissed.

Given the apparent effectiveness of the DRSP, it is worth exploring what you need to do to maximise your chances of success as a complainant, and second, the reasons why Experts have dismissed a small number of complaints. In this 'did you know', we will look at the first of these.

Maximise your chances of success: draft a cogent complaint

For a complaint to succeed, you must prove that:

  1. You have rights in respect of a name or mark which is identical or similar to the disputed domain name; and
  2. The disputed domain name, in the hands of the registrant, is an unfair registration, meaning the domain name:

    1. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to your rights; or
    2. has been, or is likely to be, used in a manner which took unfair advantage of or was unfairly detrimental to your rights.

To maximise your chances of success, it is critical that your complaint addresses each of the elements in (a) and (b)(i) or (ii) above. For example, if the complainant is a company which owns a trade mark registration in an identical or similar name to the disputed domain name, but the trade mark registration is in the name of one of the directors, unless that director is named as a complainant the Expert may find that the company does not have the necessary rights.

It is also critical that your argument in respect of these elements is substantiated wherever possible by way of supporting evidence. If you do not have a trade mark registration, for example, you will need to provide cogent evidence which establishes the goodwill and reputation you claim you have in a name which is identical or similar to the disputed domain name.

To further maximise your chances of success, you must also address any defences which the domain name registrant (the respondent) may put forward. A respondent can argue a range of defences, which include that, before being aware of the complainant's objections, he/she/it:

  1. had used or made demonstrable preparations to use the disputed domain name (or a domain name which is similar to the disputed domain name) genuinely in connection with goods or services; or
  2. had been commonly known by the disputed domain name or legitimately connected with a mark which is identical (or similar) to the disputed domain name; or
  3. had made legitimate non-commercial or fair use of the disputed domain name.

Alternatively, a respondent could argue that the disputed domain name is generic or descriptive and he/she/it is making fair use of it in a way which is consistent with its generic or descriptive character.

Fortunately, under the DRSP a complainant has the opportunity to file submissions in reply to a response, so it is not critical that any defences be addressed in the original complaint - but if they are not, they should be addressed in reply.

Conclusion

This article has highlighted how effective the DRSP procedure can be - provided your complaint is drafted appropriately to maximise your chances of success.

If you would like to discuss a domain name registration you think may be infringing your rights in a name, please contact Ben Cain in our Litigation team.

In our next 'Did you know?', we will look at why Experts have dismissed a small number of complaints under the DRSP, highlighting the pitfalls that complainants should avoid.

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.

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