Domain name disputes

International domain names

Internet Corporation for Assigned Names and Numbers

The Internet Corporation for Assigned Names and Numbers (ICANN) established the Uniform Domain Name Dispute Resolution Policy (UDRP) to resolve disputes about the registration of domain names.

The UDRP applies to all generic top-level domains, such as .com, .org and .net, and is administered by organisations such as the World Intellectual Property Organisation (WIPO).

ICANN requires a person registering a domain name to provide personal information including an email, physical address, and phone number, to be made available to the public.

ICANN policy and disputes

All domain name holders are bound by ICANN policy, which states that a party registering or renewing a domain name acknowledges that:

• to their knowledge, the registration will not infringe upon or otherwise violate the rights of a third party;
• they are not registering the domain name for an unlawful purpose; and
• they will not knowingly use the domain name in violation of any applicable laws and regulations.

A person can make a complaint under the UDRP on the grounds that:

• a domain name is identical or confusingly similar to a trademark or service mark to which the person has rights; and
• a domain name holder has no rights or legitimate interests in the domain name; and
• the domain name has been registered and is being used in bad faith.

Australian domain names

The Australian domain name system is administered by .au Domain Administration (auDA).

Domain names that carry the suffix .au (commonly .com.au and .org.au) are subject to the au Dispute Resolution Policy (auDRP), which is adapted from the UDRP.

The grounds for making a complaint under the auDRP rules are worded slightly differently to the UDRP, and are broader, in that they relate to a “name”, and to a domain name being registered or “subsequently” used in bad faith.

auDA does not handle auDRP complaints; complaints are submitted to an auDA-approved provider, either the Resolution Institute or WIPO.

Complainants may opt not to use the auDRP and instead choose to pursue litigation as a first option or may initiate litigation at any time after lodging a complaint under the auDRP.

Complaint grounds

Identical names or confusingly similar names

This can include actions such as:

• “typo squatting”, which involves adding a “typo” (an extra letter or a full stop, for example) to a domain name and registering the name in an attempt to exploit traffic intended for another website;
• incorporating a trademark in a domain name; and
• registering a domain name that has a similar appearance and pronunciation to another website.

Rights or legitimate interests

This can be shown by:

• the use of the domain name or a corresponding name to supply goods and services before the application for domain name registration was made;
• the individual, business or organisation being commonly known by the domain name, even where no trademark or service mark rights have been acquired; or
• legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the name trademark or service mark.

A respondent has 20 days to file response but is not obliged to do so.

Bad faith

Evidence that the registration and use of a domain name has been made in bad faith includes circumstances such as when the domain name holder has:

• registered or acquired the name primarily to sell, rent or otherwise transfer the registration to another person, for a value above the documented out-of-pocket costs directly related to the domain name;
• registered the domain name to prevent the owner of a name, trademark, or service mark from reflecting that name or mark in a domain name;
• registered the domain name primarily to disrupt the business or activities of another person;
• used the domain name to intentionally try to attract, for commercial gain, internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation or endorsement of that website or location or of a product or service on that website or location; or
• given false or misleading information in an application as to eligibility or third-party rights.

Remedies for domain disputes

Remedies under the auDRP and UDRP are limited to the cancellation of the domain name or the transfer of the domain name to the complainant.

Decisions made by an auDRP panel cannot be appealed. If a party is not satisfied with a decision, they may initiate legal proceedings against the other party.

Court action

The mandatory dispute resolution process does not prevent a party from taking court action in a domain dispute.

If an order is made for a domain name registration to be cancelled or transferred, auDRP must wait 10 business days before implementing the decision.

The agency will implement the decision unless it receives official notice within that period from the complainant that they have launched legal action. It will then take no further action until it receives:

• evidence of a resolution between the parties;
• evidence that the lawsuit has been dismissed, withdrawn, or abandoned; or
• a copy of a court order that dismisses the lawsuit or orders that a domain name holder does not have the right to continue to use the name.

A court can grant further remedies, such as damages or an injunction. However, litigation may be complex and costly, and a complainant should consider factors such as whether:

• the entity is in Australia or overseas;
• the domain name holder has the means to satisfy a judgment for damages or costs; and
• the infringing domain name is causing reputational damage or a loss of profits that is significant enough to warrant litigation.

How Gibbs Wright Litigation Lawyers can help

Call Gibbs Wright Lawyers today to discuss your domain name disputes and matters with our intellectual property lawyers in a no-obligation, confidential consultation.