Protecting your domain name

5 April, 2012 | Peter Smith

You understand the importance of protecting your business trade name – but have you thought about what could happen if you don’t protect your internet domain name?  Your domain name is your address on the internet i.e. www.yourbusinessname.co.nz.

Law on the protection of domain names for internet websites is still evolving.
In New Zealand, Parliament has still not introduced any regulations that promote the protection of domain names.  Instead, most New Zealand organisations that require to have a domain name peculiar to New Zealand use the system adopted by Internet NZ.  Internet NA is a not for profit society established in 1995 to coordinate the development of  the internet, allocate domain names and handle disputes.   Various companies have delegated authority from Internet NZ to grant domain names.  Internet NZ also has a domain name commission which attempts to handle disputes in respect of the use of domain names within New Zealand.

The problem with the New Zealand system is that each of the domain name users registered with Internet NZ are effectively entering into a contract with one another in respect of the ownership and use of the domain names.  If someone from overseas, who does not have a contract with Internet NZ, establishes a domain name that is the same as or similar to a New Zealand domain name, there are difficulties in respect of protecting the intellectual property represented by the New Zealand registered trade name. There are over 200 different domain name extensions worldwide from .com to .net and .biz.

Without protection, a third party could register a similar domain name and redirect that page to their site, or they could simply post their company information on that page.  Imagine the confusion for your customers trying to find you online.

In the United States, a law has been passed called ‘The Anti Cyber Squatting Consumer Protection Act’ which gives domain name owners a cause of action against trafficking in or using a domain name that is confusing with, or similar to, an existing domain name or trade mark or is confusing with, or similar to, or dilutes, an existing trade mark.

In Australia, there is business name registration which permits the registration of business names and, accordingly domain names, and this legislation gives a measure of protection to those names which are registered under that legislation.

The real problem is that while domain names are used on a worldwide basis, there are no international regulations that protect domain names.

There seems to be a general acceptance however that on a worldwide basis, the registration of domain names is on a first come first served basis and as long as the owner of the name registers a domain name in good faith and has legitimate interests in the ownership of the name, that the name will be protected by the Courts of the country in which the ownership of the name resides.

It also seems important and of general application that the trade mark legislation that permits registration of trade marks is now almost universally accepted, in other words trade marks are now protected in almost all western countries and there is a general movement towards trade mark protection laws in Asia.

Accordingly, if your business operates in overseas locales, it is a good idea to consult a business lawyer to ascertain whether your existing trademarks protect you. It may be necessary to trademark your business or brand name and domain name in the specific countries in which you operate in order to achieve the almost universal protection of the domain name by virtue of the world wide trade mark legislation.

Registering your domain name as a trade mark in each and every country that involves users of your website is not a cheap exercise and care should be taken to decide exactly in which countries the trade mark of your domain name should be registered.

Even if you are only operating within the New Zealand environment, you should be careful to ensure that all important company names and brand names associated with your business are trademarked.  This is particularly important if your domain name is different from your trademarked company name.  For example, if ‘Joe Smith’s Plumbing’ is your trademarked business name, but you use the domain name www.tibuktuplumbers.co.nz, then you need to trademark www.timbuktuplumbers.co.nz to ensure that you can protect the reputation and goodwill associated with that name.

If you wish to seek further advice regarding trademarks, please contact commercial lawyer, Peter Smith by phone on 09 837 6882 or email peter.smith@smithpartners.co.nz