Domain Name Disputes – An easy option?

The internet has provided a platform for businesses and individuals to gain greater access to a wider audience and market share by registering a domain name. Some of these businesses and individuals rely on their hard-earned and well-established goodwill to continue to operate.

Often domain name disputes arise because someone recognises another business or individual’s goodwill and decides to exploit the goodwill of another in order to obtain a commercial benefit. Other times, domain name disputes arise because a competitor has registered a domain name to disrupt another individual or business and is not necessarily seeking to obtain any commercial benefit from registering the domain name.

In any case, the individual or company may be ‘cybersquatting’ on a business or individual’s domain name. It is often important to not ignore cybersquatters as they can not only acquire a commercial benefit, but they may cause damage to an individuals’ or business’ reputation.

In other cases, an individual or company may be within their rights to register a domain name which another individual or company is claiming rights over.

 

Trademark Infringement

Domain name disputes are often related to trademark infringement, passing-off or provisions under the Australian Consumer Law.

Whatever the reasons behind a domain name dispute, sometimes a domain name dispute can be resolved by making a complaint to the relevant authority. Such complaints are usually of lower cost to the applicant and may be effective in resolving a domain name dispute, or can be made in conjunction with instituting court proceedings.

This article focusses on making a complaint to the relevant authority with respect to a domain name dispute. The contents are general in nature and this is not legal advice. It is important to consider that making a complaint may not be the best option in your circumstances.

To ascertain the best course of action for your matter, you should speak with a lawyer. We can provide a 20 minute free consultation with a member of our commercial litigation team.

 

Uniform Domain Name Dispute Resolution Policy

The Uniform Domain Name Dispute Resolution Policy (‘UDRP’) is the international body that governs domain names with generic top level domains such as domains with ‘.com’ or ‘.net’.  The UDRP provides a mechanism for owners with these types of domain names to protect their legal interests

Most trademark domain name disputes must be resolved before the UDRP can apply in order to compel a registrar to cancel, suspend or transfer a domain name.

If a domain name’s registration is abusive then an individual may make a complaint under the UDRP to an approved dispute resolution service provider, subject to certain requirements.

 

Making a Complaint  and Mandatory Administrative Proceedings

If a complaint is made by an individual (i.e. the ‘complainant’) in relation to an abusive domain name, then according to the UDRP, a third-party (i.e. the ‘respondent’) is required to submit to a mandatory administrative proceeding if the:

2. Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
3. Respondent has no rights or legitimate interests in respect of the domain name; and
4. Respondent’s domain name has been registered and is being used in bad faith

In the administrative proceeding, the complainant must prove that each of these three elements are present.

 

What is the Element of Bad Faith?

The UDRP sets out particular circumstances, without limitation, that would demonstrate the use of a domain name in bad faith, including where the respondent has:

1. Registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

2. Registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

3. Registered the domain name primarily for the purpose of disrupting the business of a competitor; or

4. Used the domain name to intentionally attempt to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on the respondent’s web site or location.

 

The Process of a Mandatory Administrative Proceeding

Once a complaint is made, the respondent must provide a response to the complaint within a prescribed period of time.

An ‘Administrative Panel’ will then be appointed by the complainant’s chosen dispute resolution service provider, which is usually made up of one or three people to decide the dispute.

After a decision is reached, the Administrative Panel notifies the parties and then the registrar will then implement the decision of the Administrative Panel.

 

Australian Dispute Resolution Policy

Australia has its own adaption of the UDRP which is known as the .au Dispute Resolution Policy (‘auDRP’).  Importantly, the auDRP only relates to .au domain space and does not relate to generic top level domain.

 

Making a Complaint under the auDRP

The complaint process of the auDRP is substantially similar to the UDRP in that a mandatory administrative proceeding is required in applicable disputes because the:

1. Respondent’s domain name is identical or confusingly similar to a name which the complainant has rights;

3. Respondent has no rights or legitimate interests in respect of the domain name; and
4. Respondent’s domain name has been registered or subsequently used in bad faith.

Overall, the way complaints under the auDRP are substantially similar to the UDRP.

 

Differences between the UDRP and auDRP

Notably, there are some differences between the auDRP and the UDRP in relation to:

1. The auDRP applies to domain name that are identical or confusingly similar to any ‘name’ (as opposed to a trademark or service mark);
2. The complainant would only need to show that the domain name was registered or used in bad faith (as opposed to both);
3. An example of bad faith under the auDRP includes where the complainant has been prevented from registering a trademark or service mark reflecting the corresponding domain name; and
4. The remedy of transferring a domain name is only allowed if the registrar determines that the complainant meets the eligibility and allocation rules for Australia.

 

Next Step

The UDRP and auDRP can provide individuals and companies with a cheap, quick and informal solution to domain name disputes.

In some cases, this would be ideal and may be useful for the applicant to pursue in order to resolve their domain name dispute.

In other cases, it may not be relevant or be as beneficial for an individual or company to make a complaint under the UDRP or the auDRP.

This article has provided a general overview of the requirements of a domain name dispute. It is not legal advice. If you are involved in a domain name dispute, then we recommend that you obtain independent legal advice to ascertain the prospects of your matter.

To ascertain the best course of action in your circumstance, we recommend that you obtain independent legal advice. We offer a free 20 minute consultation to discuss your matter with one of our litigation lawyers.