DOMAIN NAME DISPUTE

domain name dispute litigation

Domain Name Dispute Litigation Specialist | Alex McDonald, Barrister, Auckland

Domain name disputes occur in a number of different situations. Two competitors in related areas of business might each claim the same or a similar domain name. Alternatively, a competitor might register another competitor’s domain name with the intention of using that name to compete and trade on its rival’s goodwill. Or, a “cyber squatter” acquires a domain name with the intention of selling it to a business associated with that name. Sometimes a person uses a domain name associated with a known business or organisation for the purpose of making negative political or other comment in relation to that business.

In New Zealand the Domain Name Commission has a dispute resolution policy and procedure providing a set of rules for quickly and cost effectively resolving disputes regarding .nz domain names.

The procedure provides an alternative to conventional forms of redress through the Courts under the Fair Trading Act, The Trade Marks Act and the tort of passing off.

Anyone who can show that they have rights in a name or mark which is identical or similar to the domain name can file a complaint under the policy. A complainant also has to show that the domain name is an “unfair registration” in the hands of the registrant.

An unfair registration is a domain name that was registered or acquired in a manner which took unfair advantage of, or was unfairly detrimental to, the complainant’s rights, or which has been, or is likely to be, used in such a manner.

A complaint is lodged by filing a written submission which sets out the nature of the complaint, the rights which the complainant relies on, and why the domain name is an unfair registration. Once the complaint is filed the domain name is “frozen” so that it cannot be transferred while the dispute resolution process is in progress.

A copy of the complaint is sent to the registrant who is asked to reply.

In situations where the respondent responds (many do not) the complaint will be set down for a free, informal mediation before a mediator appointed by the DNC from its list of mediators.

If the parties do not achieve a resolution through informal mediation within 10 days (or if the registrant does not respond to the complaint), the complainant is asked whether to pay a fee of $2000 plus GST to have the complaint referred to an expert for determination. If the complainant decides not to pay the fee for the appointment of an expert the complaint is treated as withdrawn. If an expert is appointed, he or she will assess the complaint and issue a written decision. Experts have the power to cancel, transfer, suspend or amend a domain name, but not to award costs.

Alex McDonald, Intellectual Property Law Expert

DOMAIN NAME DISPUTE

domain name dispute litigation

Domain Name Dispute Litigation Specialist | Alex McDonald, Barrister, Auckland

Domain name disputes occur in a number of different situations. Two competitors in related areas of business might each claim the same or a similar domain name. Alternatively, a competitor might register another competitor’s domain name with the intention of using that name to compete and trade on its rival’s goodwill. Or, a “cyber squatter” acquires a domain name with the intention of selling it to a business associated with that name. Sometimes a person uses a domain name associated with a known business or organisation for the purpose of making negative political or other comment in relation to that business.

In New Zealand the Domain Name Commission has a dispute resolution policy and procedure providing a set of rules for quickly and cost effectively resolving disputes regarding .nz domain names.

The procedure provides an alternative to conventional forms of redress through the Courts under the Fair Trading Act, The Trade Marks Act and the tort of passing off.

Anyone who can show that they have rights in a name or mark which is identical or similar to the domain name can file a complaint under the policy. A complainant also has to show that the domain name is an “unfair registration” in the hands of the registrant.

An unfair registration is a domain name that was registered or acquired in a manner which took unfair advantage of, or was unfairly detrimental to, the complainant’s rights, or which has been, or is likely to be, used in such a manner.

A complaint is lodged by filing a written submission which sets out the nature of the complaint, the rights which the complainant relies on, and why the domain name is an unfair registration. Once the complaint is filed the domain name is “frozen” so that it cannot be transferred while the dispute resolution process is in progress.

A copy of the complaint is sent to the registrant who is asked to reply.

In situations where the respondent responds (many do not) the complaint will be set down for a free, informal mediation before a mediator appointed by the DNC from its list of mediators.

If the parties do not achieve a resolution through informal mediation within 10 days (or if the registrant does not respond to the complaint), the complainant is asked whether to pay a fee of $2000 plus GST to have the complaint referred to an expert for determination. If the complainant decides not to pay the fee for the appointment of an expert the complaint is treated as withdrawn. If an expert is appointed, he or she will assess the complaint and issue a written decision. Experts have the power to cancel, transfer, suspend or amend a domain name, but not to award costs.

Alex McDonald, Intellectual Property Law Expert