A domain name is not intellectual property in itself, but the registration and use of domain names can infringe intellectual property rights. This post considers how domain names are treated at law.
Domain name dispute resolution services
New Zealand Domain Name Commissioner
The Domain Name Commissioner (“DNC”) is responsible for administering the .nz domain space. In 2006, the Commissioner established a system, called the Dispute Resolution Service (“DRS”), for resolving disputes regarding entitlement to domain names as an alternative to court proceedings. The DRS is established by way of a DNC policy which establishes the rules regarding registrations, and its procedures are contained in a separate document.
The DRS jurisdiction arises from the DNC’s contractual arrangements with registrants through resellers. Given this the DRS only has jurisdiction over domain names ending in “.nz”; it cannot hear or determine other domain name disputes (e.g. regarding a .com domain), even if all parties are based in New Zealand. A major advantage of the system is that a New Zealand business can take action even if the registrant is based overseas, saving expense and inconvenience if proceedings needed to be filed and/or served overseas.
The DRS will order transfer of a domain name where this is found to be an unfair registration in the hands of the domain name owner. A person challenging the registration must prove that they have rights in a name which is part of the domain name, and that the use of the domain name by the third party is “unfair”. The procedure is aimed at dealing with straightforward cases involving registration of a domain name which includes a third party’s trade mark or name, where the registrant has taken the action for profit or to interfere with the rights owner’s business. The policy recognises, however, that there are other categories of domain name disputes which cannot be dealt with in summary terms, such as competing businesses which might want to use generic or descriptive terms.
DRS cases are decided by single member drawn from an 8-member panel (referred to in the Policy as the Expert). Appeals are heard by three other members of the panel sitting jointly. DRS cases are determined on the papers without cross-examination or oral hearings, which means that the cost is lower than standard court proceedings. The cases are still quite formal, however. Generally speaking, the DRS cases which have failed have been those where the applicant has failed to prove their rights to the required standard. This is often a case of failing to take the process sufficiently seriously and assuming that the Expert will find that the name has been used as alleged, rather than proving the rights as would be the case in court. Although the process is relatively straightforward, it is prudent for applicants to obtain specialist advice before filing domain name complaints.
I am a member of the panel of experts and so am not available to advise on DRS complaints.
There are alternative dispute resolution services for overseas domain names. There are a range of providers for disputes governed by ICANN’s Uniform Dispute Resolution Policy (“UDRP”), most notably the World Intellectual Property Organisation (“WIPO”). Australia and the United Kingdom also have their own dispute resolution policies and procedures (auDRP and Nominet respectively).
Detailed consideration of the overseas regimes is beyond the scope of this chapter but there is a great deal of information available online.
Passing off and Fair Trading Act
The number of domain name cases in New Zealand has diminished since the introduction of the Domain Name Commissioner’s Dispute Resolution Service, but the law of passing off remains important in such disputes, particularly if there are a number of issues between the parties such that High Court proceedings are issued.
The law of passing off received a boost in the late 1990s as it became the preferred cause of action for claims against cybersquatters, on the basis that, in the wrong hands, a domain name could be an instrument of fraud. This line of authority emerged in the United Kingdom (BT v One In A Million Ltd  EWCA Civ 1272) but was subsequently applied in a number of New Zealand cases, including New Zealand Post v Leng  3 NZLR 219 and Oggi Advertising Limited v McKenzie  1 NZLR 631).
Although the Fair Trading Act is generally broader than passing off, most domain name cases are determined under the latter (albeit that Fair Trading Act causes of action would normally be included as well). This is because the Courts have held that registration of a domain name amounts to creation of an instrument of fraud without the need for it to be used, so that a person who registers a domain name and then does not use it. Since the focus may be on potential future actions, this may not necessarily amount to misleading or deceptive conducts for the purposes of the Fair Trading Act. The point is largely academic, however, since the conduct is actionable in passing off.
Use of a trade mark within a domain name can amount to infringement. It is important to consider what the mark protects when considering whether the domain name infringes, particularly for composite marks which include words in stylised form or in conjunction with devices (logos).
Bearing in mind that an invented word is not sufficient to constitute a copyright work, a domain name does not attract copyright. Copying website content (text, images or layout) can amount to copyright infringement.