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Domain name court sequel

Domain name court sequel

The Auckland phonebook lists 72 businesses names starting with A1. They all want the same thing: prominence at the front of phone book listings.

The quest for A1 marketing exposure has reached cyberspace. A recent tussle over the domain name “a1radiators.co.nz” was recently resolved by the NZ Dispute Resolution Service (“DRS”). This is a service set up in 2006 and administered by the Domain Name Commission Ltd (www.dnc.org.nz).

Parties opt-in to this process as an alternative to going to court, because the process involves determination by an expert. The parties make submissions to the expert who decides which of them should be entitled to use the disputed domain name. The Domain Name Commission then enforces the DRS decisions by transferring the domain names as directed by the decision of the independent expert. The parties agree to this happening at the start of the DRS process – it is a contractual process. In the recent DRS case, the complainant was A1 Radiator & Air Conditioning Specialists Ltd. This is the current name for a radiator business that has operated in Canterbury since the 1970s and more recently in parts of the North Island. While its name has changed over the years, all of its trading names have included “a1” and “radiator” in some form, and it uses the url www.a1radiators.net.nz for its web page. A rival of the complainant started up a new company called “A1 Radiators Intercoolers and Oil Coolers Ltd” and registered the domain name “a1radiator.co.nz”. When the complainant found out about the registration, it wrote to the respondent politely asking for www.a1radiators.co.nz to be transferred to it. The respondent declined to transfer the registration: to make matters worse, it registered two other domain names: www.a1rads.co.nz and www.a1rad.co.nz. Unsurprisingly, the established Canterbury firm complained to the Domain Name Commission. To succeed, the complainant was required to show that it had rights in respect of a name or mark that is identical or similar to the disputed domain names, and that there was an unfair registration of those domain names by the respondent. The complainant argued successfully that it had the right to use the disputed domain name because the term “A1 Radiators” was clearly identifiable with its business: it had traded under that name for 30 years. Therefore the respondent had registered the three domain names unfairly or unlawfully to deny the complainant the right to take advantage of its own name and reputation in New Zealand. The respondent argued that it wanted those domain names only so that the company could market its business in America: there would be no unfair detriment to the complainant. However, the expert gave little weight to this argument because there was no evidence that this was likely to happen – anyway, the respondent had not explained how it could market only in America using a .co.nz domain name. In any case, this would not stop the website from unfairly prejudicing the rights of the complainant in New Zealand: New Zealanders who mistakenly accessed the .co.nz site instead of the .net.nz site would still have been misdirected. The expert found that these were unfair and blocking registrations by the respondent. The complainant won and the expert ordered that all three of the disputed domain names be transferred to the complainant. No lawyers. No judges. Just an expert. Domain name users in New Zealand are indeed lucky to have access to a relatively simple, effective and low-cost forum for resolving disputes about domain names.

This article is intended for general information, and should not be relied on as specific legal advice. You should consult a lawyer for advice relating to your own specific legal problems. Rae Nield and Richard Anstice can be contacted at raenield@marketinglaw.co.nz.


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