Net names row goes to court

New Zealand's first litigation on the "Who owns this domain name, anyway?" issue--a feature of the development of the Internet elsewhere--has gone to court.
  • Rob Hosking (Unknown Publication)
  • 22 September, 1996 22:00

New Zealand’s first litigation on the “Who owns this domain name, anyway?” issue--a feature of the development of the Internet elsewhere--has gone to court.

In a joint injunction, Cadbury Confectionary, Fuji Xerox and Sanyo filed a statement of claim against Wellington-based Domain Name Company after it registered the names of the three firms with the Internet Society and offered those names for sale.

The hearing, held after @IDG's deadline, was to set a date for the full case.

David Ward, who heads the Domain Name Company, says his firm has about 70 names registered, and will be defending the action.

“They (Cadbury, Fuji Xerox and Sanyo) are not impressed, shall we say. They think they somehow have some inalienable right to one or two particular domain names we have registered, and we will be going to court to defend our right to register and do what we want with those names.”

Cadbury Confectionary company secretary John Crawford says the companies are basing their action on both the common law rules and Fair Trading Act provisions on “passing off”.

“We also believe the Domain Name Company directors are guilty of conspiracy in that they are, for their own commercial advantage, endeavouring to take advantage of Cadbury’s good name in the marketplace and in doing that preventing us from carrying out our business the way we’d like to.”

Crawford is also critical of the Internet Society’s policy on name allocation, which is basically “first in”. This is in line with the approach taken by its sister bodies around the world.

“There was some level of checking done when this was administered by the two universities (Waikato and Victoria). But now, not only is that gone but there’s no dispute resolution process once disputes have been identified.”

Ward says he saw the opportunity for his company when the allocation process changed.

“I was aware that ISOCNZ was changing its policy in line with virtually the rest of the world, which was a good sign, I thought. I knew someone would be doing it, so, first in, first served, I suppose.”

Perhaps not surprisingly, he believes the Internet Society policy is a sensible one, pointing out that similar overseas bodies become bogged down in issues such as trying to decide between two companies which have similar names, with common words like “kitchen” in their titles.

His company’s Web site invites people to buy, sell or trade domain names via email. Those who want it to register a name on their behalf are charged $200 (ex GST). This includes an annual ongoing $100 (ex GST) renewal fee. The Internet Society charges a registration for each new domain name of $20 (ex GST), plus a $50 (ex GST) annual maintenance fee. There’s also a $16 (ex GST) invoice fee.