New Zealand has recently adopted a new dispute resolution procedure for resolving .nz domain name disputes.
Under the new procedure, you can lodge a complaint with InternetNZ where a third party has registered or is using a domain name that is identical or similar to a name in which you have rights. This came into effect on 1 June 2006.
The parties to the complaint are first invited to take part in informal mediation with InternetNZ to resolve the dispute. There is no official fee for this mediation.
If the informal mediation does not resolve the dispute, the complaint can proceed to be determined by an independent expert. In determining if a domain name has been inappropriately registered the expert applies a two step test, which requires that you prove:
- you have either registered or unregistered trade mark rights (or other similar rights) in respect of a name or mark that is identical or similar to the domain name; and
- the domain name is, in the hands of the current registrant, an "unfair registration".
To be considered an "unfair registration" the domain name registration must take unfair advantage of, or be unfairly detrimental to, your rights in the name.
The official fee (as of October 2006) for this expert determination of a dispute involving between 1 – 5 domain names registered in the name of one registrant is NZ$1,800 + GST. If either party is unhappy with the expert determination, they may appeal the expert’s decision to a panel of three independent experts. The official fee (as of October 2006) for an appeal by a panel of three experts is NZ$6,600 + GST.
As well as providing a potentially simpler and quicker process, one of the key advantages of the new procedure is that costs are likely to be significantly lower than those for taking Court proceedings, which had been the primary legal means of resolving disputes prior to the introduction of the new procedure. High Court proceedings are still available if the desired result is not achieved through the use of the new procedure. The High Court would consider issues of passing off, breach of the Fair Trading Act and trade mark infringement under the Trade Marks Act 2002, rather than the new test.
However, it is not possible to re-submit a complaint under the procedure (and, for example, to provide additional facts or arguments) if the initial result is not what you had sought. It is therefore strongly recommended that you seek legal advice before submitting a complaint under the new procedure, to ensure that this opportunity is not wasted.
Four decisions have now been issued under the new policy, relating to wwwharcourts.co.nz, wwwbarfoot.co.nz, bopmemorials.co.nz and intercity.co.nz. The first two of these are examples of typosquatting, wherein a registrant registers a misspelling of another name; here, they have registered the "www" as part of the domain name, omitting the full stop.
In the decision relating to wwwharcourts.co.nz, the complaint was taken by Harcourts Group Limited against the registrant, Mr Petrov Sergei of Minsk, Belarus. The expert held that the complainant, Harcourts Group Limited ("HGL"), had no enforceable "Rights" in the Harcourts name, and thus lacked the standing to make the complaint. According to the documents filed by the complainant HGL, the rights in the Harcourts name accrued to another, related organisation, Harcourts International Limited, which would have been the proper complainant.
The decision, in favour of the registrant, therefore highlights the importance of obtaining legal advice before making a complaint under the new procedure. Although the failure of the complaint would not prevent a complaint being taken in the name of Harcourts International Limited, this will involve the filing of a new complaint, and the paying of an additional expert fee in a situation where it is likely that the original complaint would have been successful were it not for this technicality.
If you have concerns about third party registration or use of a domain name that is identical or similar to a trade mark of value to you, please contact us for more information about how domain name dispute resolution procedures may work for you.
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.