Domain Names

The courts in New Zealand have been willing to uphold rights in domain names and to require cybersquatters to either cancel their registered domain names or to hand them over to the plaintiff. In this sense, domain names have been treated as another species of IP right, even if technically speaking their legal status has been a bit unclear.

In the case of Oggi Advertising Limited v McKenzie & Ors 1 NZLR 631, the High Court granted an interlocutory injunction, ordering the defendant to return the domain name oggi.co.nz to the plaintiff. In New Zealand Post Ltd v Leng (1998) 8 TSLR 502, [1999] 3 NZLR 219, the plaintiff was similarly successful and was granted an interim injunction, restraining the defendant from using an internet web site using the domain name “nzpost.com, even thought the domain name was registered through Network Solutions in the US.

This approach was followed in Qantas Airways Ltd v The Domain Name Company Limited (2000) 1 NZECC (digest) 70-005.

In DB Breweries v The Domain Name Company and Ward M724SW/00, 2 August 2000, Justice Salmon, in the High Court in Auckland, made both prohibitory and mandatory orders against the defendants. These orders were subsequently discharged, in part, because there was evidence that the New Zealand country code domain name had been assigned to a foreign entity. While the judge was suspicious of the circumstances of the transfer he felt there was insufficient evidence to show that the transfer was not genuine. This case shows how important it is to get orders against all the participants in the domain name registration process, including the relevant registry (if it is within the jurisdiction of the court) to ensure any interim orders are not circumvented.

In Hire Pool Auckland Limited v Uren (High Court), Auckland, CP292/00, 11 September 2000, an interim injunction was granted against the defendant’s use of the domain name “hirepool.com”. However, Justice Cartwright refused to grant an interlocutory mandatory injunction. That is, on the basis that the judge was still uncertain at the time of the interlocutory hearing whether it was wise to grant such mandatory relief given that the domain name was registered in the US.

This shows that the New Zealand courts are unlikely to over-reach their jurisdiction where domain names are registered outside New Zealand. However, the court was not at all reluctant to grant relief within New Zealand, preventing the defendant from operating a business under the “hirepool.com” domain name. The effect may be very similar, unless the defendant was able to block Internet traffic from overseas from entering New Zealand.

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