Intellectual property law is rights-based law. In the context of .nz domain names, rights in a trade mark are essential if you want to recover an unfairly registered domain name. If you haven't got rights, you haven't got a leg to stand on.

One company that recently found this out to its cost was an Australian online retailer.

In late November 2012 I received an email from Mr Jones (not the client's real name). Mr Jones had a very specific enquiry: can an Australian company, which operates under a registered brand name in Australia, lay claim to a domain name when that company in no way operates in New Zealand and does not have its trade mark registered here?

Mr Jones (as it transpired) had received a letter from an Australian company via its attorneys alleging his registration of a domain name ("the Domain Name") was contrary to its intellectual property1 rights.

The company alleged it had rights in the Domain Name arising from an Australian trade mark registration for the same name, use of this trade mark in a domain name registration and use of this trade mark on a website operated under the domain name.

The company alleged Mr Jones' registration of the Domain Name breached its rights under Australian trade mark law, Australian fair trading law and New Zealand fair trading law. The company demanded, among other things, that Mr Jones transfer the Domain Name to it. If Mr Jones did not comply with its demands, the company threatened further legal action, including under the Uniform Domain Name Dispute Resolution Policy (UDRP) (the dispute resolution policy for top level domain names such as .com).

Mr Jones felt appreciably threatened by this letter and so contacted James & Wells for advice.

Having obtained the important background facts I concluded Mr Jones did not have to yield to the Australian company's demands for three reasons:

First, none of the rights the Australian company was asserting against Mr Jones applied in New Zealand. An Australian trade mark registration has no standing in New Zealand (unless it is used as the basis for a New Zealand trade mark application2, which was not the case here). In addition, the company did not have a New Zealand trade mark registration nor was it using its trade mark in New Zealand (indeed, the company's Australian website openly stated it did not sell and ship goods to locations outside Australia).

Second, Australian fair trading laws do not apply in New Zealand, New Zealand fair trading laws do. Since the company had not used its trade mark in New Zealand however it had no rights on which to base any action under NZ fair trading laws.

Third, the UDRP does not apply to domain name disputes involving .nz domain names, – the Domain Name Dispute Resolution Policy (DRSP) does. Again, though, since the company did not have a New Zealand trade mark registration and was not using its trade mark in New Zealand it had no rights on which to base a complaint under the DRSP.

This was a classic case of an Australian company devising a brand name, establishing rights in that brand name in Australia but failing to establish rights in that brand name in New Zealand until the horse named Rights had already bolted, at least in respect of the Domain Name.

The message to take away from this article then is this: if you plan to expand your business overseas you need to undertake a search of the trade marks and register in each potential market. A search of those markets for any unregistered trade marks, and a domain name registration search – here at JAWS, we can do all this for you.


1Refers 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 copyright.

2In most jurisdictions patent applications are subjected to an examination process to determine whether the subject matter is novel and inventive. The terms "application", "pending" or "patent application" are used to describe the status of the application up to grant.

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.