Trademark vs. Domain
A domain name is strictly a digital address used to locate a website, whereas a trademark provides legal intellectual property protection for a brand’s identity, goods, or services. Owning a domain does not grant trademark rights, nor does holding a trademark automatically entitle you to ownership of the corresponding domain name.
The Core Differences: Address vs. Asset
In the realm of digital asset brokerage and advisory, few topics generate as much confusion—and potential financial liability—as the distinction between a trademark and a domain name. While they often overlap in practical usage (e.g., your brand is “Spark” and your domain is “spark.co.nz”), they are governed by entirely different legal frameworks and serve distinct functions within the New Zealand market.
To navigate the digital landscape effectively, one must view these elements through the lens of asset management. A domain name is a technical commodity; a trademark is a legal monopoly over a brand identity.
What is a Domain Name?
A domain name is a unique alphanumeric address that directs internet traffic to a specific server. It is allocated on a “first-come, first-served” basis by registrars. In New Zealand, the .nz domain space is regulated by the Domain Name Commission (DNC). Securing a domain gives you the exclusive right to use that specific web address, but it does not inherently give you the right to use the words contained within that address as a brand name in commerce.
What is a Trademark?
A trademark is a form of intellectual property (IP) that distinguishes the goods or services of one enterprise from those of others. Registered through the Intellectual Property Office of New Zealand (IPONZ), a trademark grants the owner the exclusive legal right to use, license, and sell the mark within specific classes of goods and services. It is a powerful tool for preventing competitors from trading on your reputation.
Does a Domain Give You Trademark Rights?
This is the most dangerous misconception in the digital economy. The short answer is: No.
Simply registering a domain name like bestburgers.co.nz does not grant you trademark rights over the phrase “Best Burgers.” If a competitor has already registered “Best Burgers” as a trademark with IPONZ in the hospitality class, they could legally force you to cease trading under that name, potentially rendering your domain name useless for its intended purpose.
The “First to File” Reality
New Zealand operates largely on a “first to file” basis regarding trademarks. While common law rights (rights established through actual market use and reputation) do exist, they are significantly harder and more expensive to enforce than a registered trademark. Owning a domain name might help establish a date of first use, but it is not a substitute for formal registration.
If you build a digital business on a domain without securing the underlying trademark, you are essentially building a house on rented land. You may own the address, but you do not own the rights to the architecture of the brand.
Distinguishing Company Names, Trading Names, and Domains
Before diving into registration, it is vital to untangle the “New Zealand Business Naming Trinity” that often confuses entrepreneurs.
- Company Name: Registered with the NZ Companies Office. This is simply the legal entity’s name (e.g., “Smith Holdings Ltd”). It prevents other companies from registering the exact same name, but offers zero protection against someone using it as a brand or domain.
- Domain Name: Registered with a registrar (e.g., GoDaddy, Crazy Domains). It is your digital street address.
- Trademark: Registered with IPONZ. This is the only mechanism that provides exclusive rights to the brand name, logo, or slogan in the marketplace.
A common scenario we see in advisory is a client who registers a company and a domain, believes they are protected, and is subsequently blindsided by a cease-and-desist letter from a trademark holder.
Registering Trademarks with IPONZ
For any digital asset with significant valuation, securing the trademark is not optional—it is a fundamental requirement of asset protection. The process in New Zealand is managed by the Intellectual Property Office of New Zealand (IPONZ).
The Registration Process
- Search and Analysis: Before applying, you must conduct a thorough search of the IPONZ database to ensure your proposed mark is not identical or confusingly similar to existing marks. This search should also extend to the domain registry and general internet usage.
- Classification: You must identify which classes your goods or services fall into. There are 45 classes (Nice Classification system). For a digital brokerage, Class 36 (Financial Services) and Class 35 (Business Administration) are common.
- Examination: Once filed, IPONZ examiners review the application to ensure it meets legal requirements (e.g., it must be distinctive and not merely descriptive).
- Acceptance and Advertisement: If compliant, the mark is accepted and advertised in the official journal.
- Opposition Period: There is a three-month window where third parties can oppose the registration.
- Registration: If unopposed, the trademark is registered for 10 years, renewable indefinitely.
For digital businesses, we strongly advise registering not just the text of the brand, but also the logo and any distinctive brand elements. This creates a “moat” around your digital assets.
Defending a Trademark Against a Domain
What happens when the lines blur? A common issue in the digital asset space is “Cybersquatting”—where a third party registers a domain name that is identical or confusingly similar to your trademark to profit from your goodwill.
If you hold a registered NZ trademark, you have significant leverage. However, the process of recovering a domain requires specific legal steps.
The Dispute Resolution Service (DRS)
In New Zealand, the Domain Name Commission offers a Dispute Resolution Service (DRS) for .nz domains. This is often faster and cheaper than High Court litigation. To succeed in a DRS complaint, you (the Complainant) must prove two main elements:
- Rights: You have rights in a name or mark (a registered trademark is the gold standard here) which is identical or similar to the domain name.
- Unfair Registration: The registration of the domain name in the hands of the respondent is unfair.
What Constitutes Unfair Registration?
“Unfair registration” usually involves evidence that the domain was registered to:
- Sell it back to the trademark owner for a profit (in excess of out-of-pocket costs).
- Block the trademark owner from registering the domain.
- Disrupt the competitor’s business.
- Confuse internet users for commercial gain.
If you possess a registered trademark, the burden of proof is significantly easier to meet. Without a trademark, you must rely on common law rights, which requires proving you have a substantial reputation that the domain owner is exploiting.
The Importance of Alignment
From a valuation and brokerage perspective, the “Holy Grail” of digital assets is Alignment. This occurs when a business owns:
- The precise .co.nz and .nz domain match.
- The registered trademark for the brand name.
- The matching social media handles.
When these assets are misaligned, the value of the digital asset portfolio drops. For example, if you are selling a business called “CloudNine” but you only own cloudnine-nz.com and do not hold the trademark, a potential buyer will view this as a high-risk acquisition. They know they could be sued for trademark infringement, or that customers will leak to the owner of cloudnine.co.nz.
Valuation Impact
In our advisory practice, we see a direct correlation between IP alignment and revenue multiples during exits. A fully protected brand with matching domains commands a premium because it represents a turnkey asset with minimized legal risk. Conversely, a brand with a trademark dispute or a missing primary domain is often considered “distressed inventory.”
Best Practices for NZ Businesses
To ensure robust protection and maximize the value of your digital assets, follow these strategic steps:
1. comprehensive Availability Search
Do not stop at a domain search. Before falling in love with a name, search the IPONZ register, the Companies Office, and the .nz domain registry simultaneously. If the .co.nz is taken, check if it is an active business. If it is, and they have a trademark, pick a different name.
2. Register defensively
If you file a trademark, register the corresponding domains immediately. Conversely, if you buy a premium domain, file for the trademark immediately. The gap between these two actions is where cybersquatters strike.
3. Monitor Your Brand
Trademarks require active policing. Set up alerts for new domain registrations that match your keywords. If a confusingly similar domain appears, act quickly. Delaying action can be seen as acquiescence, weakening your legal position later.
4. Secure the .nz and .co.nz
In New Zealand, consumer trust is highest with .co.nz, but .nz is gaining traction. Best practice is to hold both to prevent confusion and protect your traffic.
People Also Ask
Can I use a trademarked name as a domain?
Generally, no. If the trademark is registered in the same industry or class of goods you intend to operate in, using it as a domain name constitutes trademark infringement. Even if the trademark is in a different industry, you risk legal action if your usage dilutes the fame of a well-known mark. Always conduct an IPONZ search before registering a domain.
Does a company name registration protect my trademark in NZ?
No. Registering a company name with the NZ Companies Office only prevents other businesses from registering that exact company name. It does not give you ownership of the name as a brand, nor does it prevent others from using it as a trademark or domain name. Only an IPONZ trademark registration provides brand protection.
How much does a trademark cost in NZ?
As of current IPONZ fee structures, the cost is generally around $100 NZD (excluding GST) per class for an online application. However, if you require legal advice or assistance from a trademark attorney to draft the specification or respond to objections, costs will be higher. This is a small price compared to the cost of rebranding later.
What happens if someone registers my trademark as a domain?
If someone registers a domain that matches your valid NZ trademark, you can utilize the Domain Name Commission’s Dispute Resolution Service (DRS). You must prove you have rights in the name and that the registrant acted unfairly. Remedies usually include the transfer of the domain name to you.
Is a domain name intellectual property?
Technically, a domain name is a contractual right to use an address, not intellectual property in the traditional sense like a patent or copyright. However, it is a digital asset that acts as a vessel for your intellectual property (your brand). When combined with a trademark, it becomes a powerful IP asset.
Do I need a trademark to sell a domain?
No, you do not need a trademark to sell a domain name. However, if the domain name contains a well-known trademark owned by someone else, selling it could be considered “bad faith” registration or cybersquatting, which carries legal risks. Domains that are generic terms (e.g., loans.co.nz) do not require trademarks to be valuable.
