Trade Marks/Domain Names Beware of the Distinction

Trade Marks/Domain Names Beware of the Distinctions

Being forced to pay nearly $1 million to buy back the newzealand.com domain name from a US company, highlights the dilemma faced by organisations such as Government trade and tourism agency, The New Zealand Way, according to Intellectual Property specialist A J Park.

John Hackett, partner at A J Park, says the situation underlines the lack of understanding of the difference between trade marks and domain names and is a lesson for all businesses.

“A domain name is simply an address, albeit a very important one when an organisation like Tourism New Zealand wants to use newzealand.com as a portal for its tourism services”, he says.

“The New Zealand Government was too slow in securing the domain name, and then found itself having to make the spurious argument that "New Zealand" was a trade mark, and that the owner of the newzealand.com domain name was involved in domain name highjacking”, he said.

The World Intellectual Property Office (WIPO) administrative panel, who decided on the dispute, rejected New Zealand's claim saying that "New Zealand" could obviously never qualify as a trade mark.

“This was a very embarrassing situation for the NZ Government, as it was in turn accused of "reverse domain name highjacking" by WIPO. It also highlights the distinction between trade marks and domain names. A trade mark is a distinctive sign which serves to distinguish one's goods or services from those of one's competitors. The Government now has newzealand.com but won’t be able to stop registration and use of nz.com. Therefore the best means of protecting your brand (assuming its not a generic such as “NZ”) is to register it as a trade mark which will prevent others from using identical or confusingly similar names.”, he says.

“On the other hand, a geographical name such as New Zealand, is an indicator of geographical origin, and these can never be registered as trade marks”, he says.

John Hackett says if you want to have name or mark available as a Top Level domain name address then the best course of action is to act immediately to register your domain name.

“Once you secure the most appropriate domain name you can build up your marketing and promotional plan around that domain name. If it is a distinctive indicator of a trade origin, you can register it as a trade mark as well as a domain name,” he says.

“If all else fails”, he says “reach deep into your pockets”. “If somebody owns something you want badly, then they will only part with it if you are prepared to pay the price. In the case of the NZ Government on behalf of taxpayers it was $1 million, he says.

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