The .nz Dispute Resolution Service: Expert Decisions

16 January, 2018 | Bret Gower

Domain name owners with .nz registered domain names have potential remedies against conflicting domain names by applying to the .nz Dispute Resolution Service (DRS) for an Expert Decision. The DRS is a service provided by the Domain Name Commission who is also responsible for managing domain name registries in New Zealand. They have the technical ability to lock .nz registered domains while disputes are underway and ultimately to force the transfer of domains.

The Converse Expert Decision

This case from 2016 involves a complaint from Converse Inc., an American company with a famous global brand presence and retail stores in multiple international markets including the US and New Zealand. Converse products (including shoes and clothing) are promoted heavily in global advertising campaigns and purchased by customers using the official Converse online store.

The complaint made by Converse was against an online store using the domain name www.conversenewzealand.co.nz registered by a UK resident. The Converse complaint was that the conflicting domain name was being used to sell counterfeit Converse products and that they were effectively cybersquatting (using the domain name in a way that prevents the authorised user from using it). Converse had evidence that a customer had bought counterfeit products from the conflicting domain named website believing them to be genuine products from an official Converse brand website.

What happened?

The claim against the conflicting site was for “unfair registration”. Unfair Registration is defined as meaning registration or use of a domain name which takes unfair advantage or is unfairly detrimental to the complainant’s (Converse’s) rights.

Three requirements are needed to satisfy a complaint of unfair registration:

  1. existing rights in relation to a name or trade mark;
  2. similarity between that name or trade mark and the conflicting domain name; and
  3. evidence of unfair registration by the person who has registered the conflicting domain name.

In this case the DRS appointed Expert found that Converse had proved all the elements of the claim including under the third element that there was a pattern of domain name registrations conflicting with other brands including Nike and New Balance.

The remedy for Converse was that the domain name was ordered to be transferred from the original registered owner to Converse.

Implications for trade mark owners and .nz domain name owners

This case provides guidance for domain name owners as to potential avenues for protection of their brand and trade marks against rogue domain name registration that might impact their business. It also provides warnings as to the risk of engaging in this type of behaviour for those inclined to press against the boundaries of acceptable online activity.

The remedy provided by the DRS is potentially more effective and faster than taking a trade mark infringement or passing off action through the traditional Court system, particularly if the conflicting commercial activity is limited to an online store. Talk with Smith and Partners as soon as possible when an issue arises to ensure we canvas the best options for your particular situation.

Is there a website that you believe is infringing on your trademark?

Protect your brand – contact Intellectual Property Law expert, Bret Gower today to set up an appointment.

email Bret
09 837 6893

About the author

Bret is a key member of the commercial team at Smith and Partners, having joined the firm after a successful career as a design agency owner. Bret’s clients have confidence in him because of his unique combination of down-to-earth communication
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