Government wins 'newzealand.biz' despite lack of trademark rights

In Her Majesty the Queen, in right of her Government in New Zealand v iSMER, a World Intellectual Property Organization panel has ordered the transfer of 'newzealand.biz' to the New Zealand government. Applying the Start-up Trademark Opposition Policy (STOP), sole panellist Frederick M Abbott found that although the government does not have trademark rights in the words 'New Zealand', it does have legitimate interests in respect of the domain name.

In its claim to obtain the transfer of the domain name, the government submitted that it had applied to register 'New Zealand' as a mark with the Intellectual Property Office of New Zealand but had not yet obtained registration. The government also maintained that it holds common law trademark rights in the words.

As the government had not based its claim on any separately identifiable product, or class of products, Abbott rejected the common law argument and found that the government does not have trademark rights in the words 'New Zealand'. STOP's Paragraph 4(a)(i) requires that "[the disputed] domain name [be] identical to a trademark or service mark in which the complainant has rights". Therefore, it would seem that the government should have lost.

However, Abbott considered STOP's provision on multiple challenges (Paragraph 4(l)(ii)), which requires the panel to decide "in light of its findings in respect of each of the elements identified in Paragraph 4(a)" whether (i) the respondent has failed to demonstrate that it has legitimate rights to the domain name, and (ii) the complainant has demonstrated that:

• it has legitimate rights to the domain name;
  
  
• the respondent has no legitimate rights; and
  
  
• the respondent has either registered or used the domain name in bad faith.
  

If the panel finds for the complainant, then it must order the transfer of the domain name and decide that no further challenges will be permitted under the policy.

Abbott stated that the scope of the phrase "legitimate rights to the domain name" should be interpreted broadly. As such, he found that the government has legitimate rights to use 'New Zealand' in domain names, such as 'newzealand.biz'. He also concluded that iSMER has no rights or legitimate interests in the disputed domain name and had acted in bad faith in registering it, which iSMER admitted.

Abbott's interpretation of STOP's provision on multiple challenges to protect country names other than where they function as trademarks or service marks is a significant policy departure.

Alistair Payne, Corrs Chambers Westgarth, Sydney