Dispute Resolution Process Submission

From:		New Zealand Institute of Patent Attorneys (NZIPA)
Received:	25 February 2005

The New Zealand Institute of Patent Attorneys (“the Institute”) is an 
incorporated body representing most, though not all, of the New Zealand 
registered patent attorneys who are resident in New Zealand.  Patent 
attorneys specialise in intellectual property matters such as patents and 
trade marks and in recent years have become heavily involved in domain name 
management and disputes on behalf of clients.

Need for a dispute resolution process
The Institute strongly supports the introduction of a dispute resolution 
process for .nz domain names, for the following reasons.
1. Disputes involving .nz domain names are not uncommon.  A steady 
stream of such disputes has been referred to members of the Institute since 
.nz domain names became available.  While the number of such disputes is not 
large, it is significant.
2. Many such disputes are clear cases of cybersquatting, in that they 
involve the registration of a non-generic word that is solely associated with 
one particular entity by a party not connected to that entity.
3. Where negotiations with the registrant of the domain name fail, the 
only option currently available to a complainant is court proceedings.
4. The cost involved in bringing court proceedings is significant.  While 
possible for larger companies, this option is not viable for many small to 
medium sized businesses.
5. The result is that many disputes remain unresolved, including those 
which involve clear breaches of rights.

The existence of a dispute resolution process would assist in the resolution 
or avoidance of such examples of cybersquatting. 

The Institute’s view is that the mere existence of a dispute resolution 
process is likely to assist in resolving many disputes, as it would provide 
the registrant with an incentive to negotiate.

Form of dispute resolution process
The Institute will support any process which would provide those whose names 
or trade marks have been misappropriated with a fast and cost-effective means 
of pursuing the matter.
In the experience of members of the Institute, disputes involving .nz domain 
names tend to involve parties in New Zealand.  Accordingly, it may be 
preferable for the process to be self-contained within New Zealand, rather 
than requiring an administrative body and/or experts overseas.  This suggests
that a modified version of the Nominet process may be more appropriate.  
However, the Institute would also be comfortable with the UDRP being adopted.
The Institute believes that there will be little difficulty finding parties 
wishing to be appointed as experts.  The opportunity to be involved in the 
resolution of domain name disputes is likely to appeal to many members of the 
Institute, and no doubt other attorneys and parties.

Costs
The Institute regards the inability of costs to be awarded to the successful 
party under either Nominet’s process or the UDRP to be a significant 
disadvantage of both processes.
In cases where there is a clear infringement of a party’s rights, for instance 
in clear cases of cybersquatting, or cases involving unjustified complaints, 
the dispute resolution process adopted should allow for an award of costs.  
However, whether to make such an award and, if so, the amount should be at the 
expert’s discretion, not automatic.
The possibility of a costs award would provide a further incentive for parties 
to be ‘sensible’ in their choices of domain names, and their handling of 
complaints involving domain names.
It is acknowledged that difficulties may arise in the enforcement of any such 
costs order.  To avoid such difficulties, and as a further incentive to parties 
to be ‘sensible’, the Institute suggests that each party be required to submit 
a sum of, for instance, $500 or $1000 with their complaint/defence (in addition 
to the required fees).  If the expert makes a costs order, these funds would 
be available for immediate payment to the successful party.  If no costs order 
is made, the funds would be returned to the parties.
Please contact us if any of the above requires elaboration or clarification.

Yours faithfully
New Zealand Institute of Patent Attorneys