Resolving issues with non-.govt.nz domains
When faced with cybersquatting, link farming or phishing which appear to be exploiting a New Zealand government name or trademark, your agency has a number of options to explore. You should involve your legal team as soon as you suspect this kind of problem.
Cease and desist letters
If there is sufficient legal reason to feel that a department or agency's legal rights are being infringed, the department or agency could seek to identify the domain name owner (sometimes easily done, sometimes not) and send a cease and desist letter, requesting non-use or relinquishment of the domain name. Whether that approach is appropriate will require consideration of all relevant circumstances.
.nz Dispute Resolution Service
If the domain name is a .nz name, the department or agency can consider utilising the .nz Dispute Resolution Service (DRS). The DRS policy allows a complainant to lodge a complaint against a respondent who has registered a domain name where:
- the complainant has rights in respect of a name or mark which is identical or similar to the domain name; and
- the domain name, in the hands of the respondent, is an "unfair registration".
For more information on this process, see the Domain Name Commission website.
.com and similar domain names
If the domain name is a .biz, .com, .info, .name, .net, or .org top-level domain, then ICANN's Uniform Domain-Name Dispute-Resolution Policy applies. Information on that policy can be found here: http://www.icann.org/udrp/udrp.htm. Its essence is captured in these paragraphs:
All registrars in the .biz, .com, .info, .name, .net, and .org top-level domains follow the Uniform Domain-Name Dispute-Resolution Policy (often referred to as the "UDRP"). Under the policy, most types of trademark-based domain-name disputes must be resolved by agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a domain name. Disputes alleged to arise from abusive registrations of domain names (for example, cybersquatting) may be addressed by expedited administrative proceedings that the holder of trademark rights initiates by filing a complaint with an approved dispute-resolution service provider.
To invoke the policy, a trademark owner should either (a) file a complaint in a court of proper jurisdiction against the domain-name holder (or where appropriate an in-rem action concerning the domain name) or (b) in cases of abusive registration submit a complaint to an approved dispute-resolution service provider….
Flags, Emblems, and Names Protection Act 1981
It is possible that issues may arise regarding potential contravention of section 15 of the Flags, Emblems, and Names Protection Act 1981 by the use of "government sounding" domain names for another business. Section 15 makes it an offence for any person (known as the "advertiser") to publish or cause to be published any advertisement that is likely to cause any person to believe, contrary to the fact, that the advertiser has supplied, is supplying or will supply any goods or services of a Government department or has carried out, is carrying out or will carry out any work for any Government department.
"Advertisement" is defined broadly to mean "any words, whether written or printed or spoken, and any pictorial representation or design or device, and any visual image, used to notify the availability or explain the use or promote the sale of any goods or services, or to obtain work".
Whether this section is infringed will depend on the circumstances surrounding any instance of cybersquatting and the use to which the domain is put.
Contravention of this section may provide an affected New Zealand government department with significant leverage over a registrant of a .nz domain name, or over a New Zealander who registers an infringing .com or other domain name. However, territorial/jurisdictional issues could arise in respect of a .com or other domain name registered by an overseas registrant.
The final adversarial option is litigation (e.g., civil proceedings for passing off or breach of trade mark, where applicable) or (if the above Act has been breached) prosecution. Under section 24 of the Act, individuals face a fine not exceeding $5,000 while body corporates face a fine not exceeding $50,000 and, if the offence is a continuing one (as cybersquatting would be) a further fine not exceeding $5,000 for every day during which the offence has continued.
Litigation would, however, be time-consuming and expensive and, depending on the circumstances, may or may not succeed. Moreover, jurisdictional complications would arise in respect of overseas registrants.
The final option is simply paying out the owner of the domain names in question. While a one-off payment may sound like a low-cost solution to the problem, it needs to be considered carefully because it raises wider all-of-government issues given the prospect for strategic and wider-ranging behaviour by unscrupulous registrants.
Always seek legal advice before dealing with domain name disputes.
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