What’s in a domain name?

Your business’ online presence is becoming increasingly important. But it’s also becoming more vulnerable. This article talks about the ways you can protect your business’ name and reputation online. Most important of all is your domain name – the “www.” address customers type or click on to go to your website.

First how your business might be vulnerable. Competitors have at their disposal tools to reduce your business’ online visibility and capture internet traffic that would have previously been headed to your website. We’ll look at just a couple:

“Typosquatting” is the practice of registering domain names that are only very slightly different to domain names of other businesses. The difference is intended to catch out customers who make typographical or punctuation errors when typing your business’ domain name and so are directed off to a competitor’s site.

“Cybersquatting” is when someone registers a domain name not to mislead but to make money by selling it to the owner of the goodwill in that name. An infamous example was when a Canadian high school student named Mike Rowe registered MikeRoweSoft.com much to the annoyance of Microsoft.

If your business is the target of this sort of online underhandedness often the best recourse is to the Domain Name Commissioner’s Dispute Resolution Service (“DRS”).

It only costs $2,000 plus GST to pursue a complaint in the DRS. All .nz domain registrants agree to be bound by the DRS when they register or renew a .nz domain name so this offers complainants a binding and inexpensive option.

To succeed in a complaint to the DRS the complainant must show, first, that it has rights in respect of a name or mark which is identical or similar to the domain name and, second, the registrant made an “unfair registration”.

The “unfair registration” is easy enough to show if the registrant is obviously engaging in typosquatting or cybersquatting. But where many businesses run into difficulties is with showing their rights to the name or mark.

This is just another reason why registering a trademark for your business’ name or slogan is so important. Once trademarked a complainant would have prima facie rights in respect of the name which the DRS would find highly persuasive.

It is possible to register and administer your trademarks yourself via https://www.iponz.govt.nz/about-ip/trade-marks/. But it’s best to take legal advice to ensure your mark is adequately described and compliant.

Obtaining online a preliminary advice report from the New Zealand Intellectual Property Office is an inexpensive way to see whether there are existing registered or pending trade marks that are too similar to your proposed name, and whether it meets the criteria for trade mark registration.

If you’re a victim of squatting or other unfair online behaviour don’t take it lying down. But better still make sure that your name and reputation online is well protected first.

Scott Gazley is a barrister and solicitor specialising in commercial and civil litigation.