Trade marks vs domain names

[izopod]

http://www.idg.net.nz/pressroom.nsf/...256D18001E5829!opendocument

Monday, 5 May, 2003

PRESS RELEASE

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.



For further information, please contact:
Catherine Beard
Principal, Comsar Communications,
Tel (04) 389 0544, Mob (021) 633 212 Tel (09) John Hackett, Partner, A J
Park, Tel DDI (09) 356 3310,
Mob (021) 473 827

[dtobias]

Nobody "forced" New Zealand's government to purchase that domain name... they could have used a logical name in the .govt.nz namespace (instead of inappropriately claiming to be a commercial entity with a .com name) at no cost. I think they also have the possibility of obtaining and using newzealand.info, since country names were specially reserved in that TLD to be made available to their respective countries.