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christhelawyer, Lawyer
Category: New Zealand Law
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Experience: LLB MMgt FAMINZ 32 years qualified as lawyer
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Can i use a trademarked name as part of my website address

Customer Question

Can i use a trademarked name as part of my website address e.g. www.freeviewnorthland.co.nz

Submitted: 1 year ago.
Category: New Zealand Law
Expert:  christhelawyer replied 1 year ago.


christhelawyer :

Hi Welcome to JustAnswer. My first response will follow shortly. Please feel free to follow up if anything is not clear

christhelawyer :

No-they would be able to require you to either change the name or have the domain name assigned to you. This is a breach of the Trade Mark and they would be entitled to protest and force you to change

Customer :

The domain name is XXXXXXXX XX assigned to our company which is called Alpha Antennas. I had a look on the www.iponz.govt.nz website under "Are the words in my logo protected?" and on there it says NO.

christhelawyer :

I think if the owners of Freeview see this they may object. But if they dont, then you can say you did the IPONZ check and therfore assumed you could use this. They may object to the Domain name Commissioner however, which is a separate system.

Customer :

Thank you for your reply! Freeview called us and requested not to use the word Freeview and to change our website name otherwise they would take legal actions. We were told and reassured by several website designers that we could use any domain name we want. In a nutshell what we need to know is - if we don’t change our website name what’s the worsted case scenario that could happen to us?

christhelawyer :

They will make a complaint to the Domain name Commissioner and set up a complaint. The would be a process of mediation and then if not settled, a determination ordering you to remove the name or transfer it to Freeview

Customer :

But that would be a very timely and costly process for them – wouldn’t it? I just don’t get it, all of a sudden all that fuss - we are listed on their website as official freeview installers.

christhelawyer :

Its isnt that costly and holders of Trademarks tend to be defensive. The process is fairly efficient so there wouldnt be a long delay in getting the order. And they may decide to cancel your Freeview contract if you are difficult

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