Is there a website that you believe is infringing on your trademark?
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16 January, 2018 | Bret Gower
This situation highlights the need to actively protect your business by ensuring conflicting or competing domain names are not infringing on your business’ good name.
You may find there are competing businesses using domain names with confusingly similar domain names that you believe are potentially directing business away from your website or that are damaging your brand.
The other situation you may find yourself in is what is known as cybersquatting, where somebody else registers a domain name using your brand or company name with the intention of selling it on to you, or worse simply to prevent you from having it.
In an ideal world you would be able to protect your brand or company name by registering all the possible iterations across all the potential domain suffixes (.com, .co.nz etc) but in reality that is not practicable, there are just too many potential variations. The better solution is to secure the domain names in the most commonly used domains and domain suffixes and then take what steps you need to in order to protect them.
For each of these situations there are legal remedies you can pursue.
Assuming you are protecting a New Zealand registered .nz domain the first remedy would be to apply to the .nz Dispute Resolution Service (DRS) for an Expert Decision. The DRS is a service provided by the Domain Name Commission who are also responsible for managing domain name registries in New Zealand. They have the technical ability to lock domains while disputes are underway and ultimately to force the transfer of domains. An example of an Expert Decision is discussed here.
Another potential remedy if the DRS is unable to resolve the issue is to seek injunctive relief through the High Court to prevent a conflicting domain name from damaging your brand. This could be an action for passing off (essentially a remedy against somebody misrepresenting themselves as your business or product) or for trade mark infringement (if you have trade mark protection that can be enforced).
Smith and Partners’ Intellectual Property specialists and our litigation team can advise your best approach in regards to resolving this type of dispute as quickly and cost-effectively as possible.
28 June, 2017 | Bret Gower