Domain Name Disputes

When you register a domain name, you do not own the domain name; you purchase a license to use that domain name for a period of time (usually between 1-3 years before it needs to be renewed). At the end of this period, you need to renew the license otherwise it will become publicly available again and someone else could register the domain name. There is no 'right' to a domain name and they are registered on a first-come, first-served basis.

In Australia, the rules about who can register a domain name are set out by the .au Domain Administration Ltd (or auDA). The applicable rules depend on the domain that you want to register, for instance:

• com.au and net.au domains can only be registered by commercial entities.
• org.au domains can only be registered by charities or not-for-profit organisations.
• asn.au domains can only be registered by incorporated associations, trade unions, political parties, sports clubs, etc.

In addition to these restrictions, you must have some connection to the domain name to be eligible to register the name. For instance, to register a com.au domain name, the applicant must be:

1. a commercial entity (usually established by providing the relevant ABN); and
2. applying for a name that is:
   1. a match of the applicant's name (i.e., a company, business, statutory, or personal name); or
   2. an acronym of the applicant's name; or
   3. a match of the applicant's Australian trade mark; or
   4. a match to or an acronym of a related body corporate; or
   5. a match to or an acronym of a name of:
      1. a partnership of which the applicant is a partner;
      2. a trust of which the applicant is a trustee; or
   6. a match to or synonym of the name of:
      
      1. a service the applicant provides;
      2. goods that the applicant sells;
      3. an event that the applicant registers or sponsors;
      4. an activity that the applicant facilitates, teaches, or trains;
      5. premises which the applicant operates.

Cybersquatting

Sometimes, people try to license domain names that match or sound like well-known brand names; often with a view to selling the domain name to the owner of the brand for more than the domain registration fee. This is known as 'cybersquatting'.

Depending on the particular circumstances of each case, there are a number of possible ways to deal with cybersquatting, including:

• court action for misleading or deceptive conduct;
• court action for passing off;
• court action for breach of trade mark;
• negotiation or mediation; or
• dispute resolution under the .au Dispute Resolution Policy (aka the .auDRP)

What is the .auDRP?

The .auDRP is an administrative dispute resolution process that is a quicker and cheaper alternative to litigation. Disputes about domain name registration are submitted to providers authorised by .auDA — currently (as at April 2022) the only authorised providers are the Resolution Institute and the World Intellectual Property Organisation (or WIPO for short).

How can I make a complaint about a domain name?

The .auDRP allows a person to make a complaint about a registered domain name on the basis that:

1. the domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights; and
2. the holder of the domain name has no rights or legitimate interests in the domain name; and
3. the domain name was registered or subsequently used in bad faith.

What does bad faith mean?

In the context of domain name registration and use, bad faith means:

1. registering the domain name primarily for the purpose of selling, renting, or transferring the domain name to another person for more than was paid for it;
2. registering the domain name in order to prevent the owner of a name or trade mark from reflecting that name or mark in a domain name; or
3. registering the domain name primarily for the purpose of disrupting the business or activities of another person; or
4. using the domain name intentionally, and for commercial gain, to attract internet users to a website by creating confusion with the complainant's name or trademark; or
5. making false or misleading representations or warranties during the registration process, or where a representation or warranty given during the registration process subsequently becomes false or misleading.

What is the process?

The process begins when a complainant prepares a complaint (which must contain certain information set out in the .auDRP) and gives it to an authorised provider (i.e., Resolution Institute or WIPO) and the respondent.

The respondent then has 20 days in which to provide a response (again, the necessary content of which is to be found in the .auDRP).

Matters are typically determined by a single panellist. However, both parties have the option of electing to have a three-member panel.

What are the fees for a domain name dispute?

As of April 2022, the fees are (all in $AUD):

Disputes involving more than 10 domain names are priced on a case-by-case basis.

Who pays the fees?

The complainant pays the entire fee for a single-member panel.

If the complainant elects to have the matter determined by a three-member panel, then the complainant pays the whole of the fee. However, if the respondent elects to have a three-member panel, the fee is shared equally.

Each party will be responsible for their own legal costs.

What remedies are available?

If the complaint is made out, the panellist can either order that the disputed domain name be cancelled or transferred to the complainant (assuming the complainant is eligible).

There is no appeal from a decision of a panel, but decisions are not implemented for 10 business days to allow time for a dissatisfied party to commence court proceedings (which may include an urgent application to prevent the cancellation or transfer of the domain name pending the outcome of the court proceedings).

If you are involved in, or are considering commencing a domain name dispute and require advice, please don't hesitate to contact us.