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Your trade mark is a unique identifier for your business, tying it to the goods or services you provide. As a result, when you have registered trade mark rights, you should take advantage of these where you can. One area where this is possible is for registering domain names. Therefore, this article will explain whether you can use a trade mark as a domain name in New Zealand.

Owning a Trade Mark

When you own a registered trade mark in New Zealand, you gain various legal rights relating to your trade mark regarding the goods or services your trade mark registration covers. For example, as the registered owner, you have the exclusive right to use your trade mark. Your trade mark registration also has an official record on the public trade mark register that the Intellectual Property Office of New Zealand (IPONZ) manages. As a result, you can:

  • use and commercialise your trade mark;
  • license use of your trade mark to third parties for fees/royalties;
  • prohibit others’ usage of your trade mark; and
  • pursue those who use it without your permission for trade mark infringement.

You can gain similar rights for unregistered trade marks, but they are more difficult to prove and are less simple to enforce.

Once you have officially registered your mark with IPONZ, no one else can register an identical or confusingly similar trade mark regarding the same or similar goods or services. Additionally, the record of your trade mark on a national register can act as a deterrent for those wishing to copy your trade mark.

Trade Mark Essentials in New Zealand

Our free Trade Mark Essentials in New Zealand guide explains how to register and defend your trade mark registration.

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How Do Domain Names Work?

Similar to your physical address being the home of your business premises, your domain name is the address of your business website. Therefore, this is a key asset that you need to manage appropriately. 

For example, www.legalvision.co.nz is a domain name.

There are different kinds of domain names with different extensions. For example, those ending with .co.nz or .nz are New Zealand based domain names, whereas .com extensions are global ones. So, how you register a domain name depends on the type you want to register. Typically, registering a New Zealand-based domain would be a good idea if you intend only to do business in New Zealand. As a result, if you wish to create a New Zealand based one, you can do so with a registrar approved by the Domain Name Commission (DNC). 

Using Your Trade Mark As a Domain Name

Since your domain name is how people will search for your business, you must think carefully about what you will use as your domain name. Most businesses try to use their business name where possible to keep things simple and avoid customer confusion. Notably, domain names have to be unique, and you cannot register one that someone else has already registered. 

Your trade mark is yours to use as you like, so it is wise to use your trade mark as a domain name. You have the legal rights to use that term, and depending on the trade mark, it may be the most prudent word to use for your domain name.

For instance, if you have registered your business name as a trade mark, that would be a suitable term for your domain name.

If you want your domain name to match your trade mark, we recommend that you ensure the domain name is available before deciding on your trade mark. If it is, you should register this as soon as possible to avoid missing out. However, in cases where someone else has already registered a domain name using your trade mark, things can become more complicated.

Domain Name Disputes

If someone else has already registered a domain name using your trade mark, you have legal options available to you. Depending on the situation, these can include:

  • sorting out the problem with the other party directly;
  • going through the domain name dispute resolution process that the DNC provides; or
  • pursuing trade mark infringement through court (if they use the domain concerning goods and services protected by your trade mark registration).

Having a registered trade mark in place can assist you in getting the upper hand in these situations. For instance, in the DNC’s dispute resolution process, providing evidence of your trade mark rights significantly helps your case. 

Costs can vary with these processes, and you could get compensation from the other party if you pursue them in court. However, your success in this can also vary. For trade mark infringement to occur, the other party has to have used your trade mark in a commercial sense. If they sold similar goods or services from their website under your trade mark, this could qualify.

Your situation will be unique, so you must seek specialist advice where necessary.

Key Takeaways

In New Zealand, you can use a trade mark as a domain name. In fact, if your desired domain name is the subject of an ownership dispute, you will have a better chance of getting that domain due to your trade mark rights. 

If you need help with your trade mark and domain name, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0800 005 570 or visit our membership page.

Frequently Asked Questions

What is a trade mark?

A trade mark is a kind of intellectual property right that protects something that identifies your business and the goods or services it provides. Common examples include your business’ name or logo.

What is a domain name?

A domain name is what customers will type into their browser URL to find your business. For example, NZ based domains can end in .co.nz or .nz.

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