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Trade Marks/Domain Names Beware of the Dist

1 May 2003

Being forced to pay nearly $1 million to buy back the 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 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 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 but wont be able to stop registration and use of 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.

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