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RESOLVING DOMAIN NAME DISPUTES IN AUSTRALIA - A BRIEF OVERVIEW OF THE auDRP & A CASE STUDY

Introduction

In Australia, asn.au, com.au, edu.au, id.au, net.au and org.au domain names are licensed subject to the .au Dispute Resolution Policy (“auDRP”), which aims to provide an alternative to litigation for the resolution of domain name disputes.

Under, the auDRP, a complaint may be submitted to any auDA approved auDRP Provider, listed at http://www.auda.org.au/audrp/providers. The complaint is then determined by a panel of one or three arbitrators, appointed by the provider.

Arbitration Costs

One auDRP Provider is the Institute of Arbitrators & Mediators Australia (“IAMA”). The fees payable to IAMA upon lodgement of an auDRP complaint are as follows:

  • AUD$2,000 plus 10% GST, payable by the Complainant, for a single member panel; or
  • AUD$4,500 plus 10% GST, payable by the Complainant, for a three member panel; or
  • AUD$i2,250 plus 10% GST, payable by both the Complainant and the Respondent if the Complainant requests a single member panel but the Respondent requests a three member panel.

Case Study

A complaint was submitted to IAMA in relation to the domain name adra.com.au on 14 November 2002 and a decision was made on 3 January 2003. This is a good example of how the auDRP can be used to arrive at a prompt decision. Not only would litigation in the Courts have come to a halt over the Christmas and New Year period, but litigants could have a lengthy delay, in some cases many months or even years, and would have had to comply with costly and time consuming procedural steps before their matter would be heard by a Court.

In summary, the dispute came about because the Complainant, Australian Drivers Rights Association, failed to renew the domain name license for the domain name adra.com.au, which was subsequently registered by the Respondent, Australian Dust Removalists Association.

The Complainant had been an active lobby and interest group since 1998 and the Respondent had been an active industry association since about 1999.

The domain name license was due to be renewed in about July 2002. Despite the Complainant allegedly instructing Internet Registrations Australia to renew the domain name license in May 2002, the license was not renewed and was subsequently made publicly available for registration. The Respondent registered the domain name in August 2002 and the Complainant became aware that the Respondent had registered the domain name in about September 2002.

Both parties claimed to be entitled to register and use the domain name.

In order to be successful, the Complainant had to prove:

  • The domain name was identical or confusingly similar to a name, trade mark or service mark in which the Complainant had rights; AND
  • The Respondent had no rights or legitimate interests in respect of the domain name; AND
  • The domain name was registered or subsequently used in bad faith.

It was found that although the domain name adra.com.au is substantially identical to the name ADRA, to which the Complainant has rights, the Respondent also had a legitimate interest in the domain name, having used it prior to notice of the dispute in connection with offering services other than the selling, renting or otherwise transferring domain names.

It was also found that the registration of the domain name was not in bad faith. The panel highlighted that there was no substantial evidence that the domain name had been registered:

  • Primarily for the purpose of selling, renting or otherwise transferring its registration for valuable consideration;
  • To prevent the Complainant from reflecting its name or mark in a corresponding domain name;
  • Primarily for the purpose of disrupting the business or activities of the Complainant or that the domain name had been used intentionally to attempt to attract Internet users by creating a likelihood of confusion with the Complainant's name.

Although it was alleged that Internet Registrations Australia had failed to action the Complainant's request to renew the domain name registration, this was held not to be a valid reason for the domain name to be returned to the Complainant.

It was ordered that the domain name license remain the property of the Respondent.

A full copy of this decision may be read at http://www.iama.org.au/docs/adra2351.pdf.

Registering a .com.au domain name

The case study shows that there may be many parties who are eligible to register the same domain name. The eligibility rules governing the registration of a .com.au domain name are fairly wide. In summary, to register a .com.au domain name the applicant must be:

  • an Australian registered company; or
  • trading under a registered business name in any Australian State or Territory; or
  • an Australian partnership or sole trader; or
  • a foreign company licensed to trade in Australia; or
  • an owner of or applicant for an Australian Registered Trade Mark; or
  • an association incorporated in any Australian State or Territory; or
  • an Australian commercial statutory body.

In addition, the domain name must:

  • Exactly match or be an acronym or abbreviation of:
    • the registrant's company, business, trading, association or statutory body name; or
    • the registrant's Australian registered trade mark (or Australian trade mark application, if not yet registered), or
  • Be otherwise closely and substantially connected to the registrant, because the domain name refers to:
    • a product that the registrant manufactures or sells; or
    • a service that the registrant provides; or
    • an event that the registrant organises or sponsors; or
    • an activity that the registrant facilitates, teaches or trains; or
    • a venue that the registrant operates; or
    • a profession that the registrant's employees practise.

Protecting a valuable asset

As can be seen from the case study, a domain name license is a valuable asset and needs to be carefully managed. Any organisation using domain names should consider including them in its asset register and appointing an officer to manage and oversee domain name registration and renewals to avoid the renewal of domain name licenses being overlooked.

Summary

Although there are advantages in using the auDRP to resolve your domain name dispute, it may be difficult to have a domain name licence revoked where there is a bone fide registrant. There is no hierarchy of eligibility to register a domain name, for example, an Australian registered company will not gain preference over the owner of an Australian registered trade mark if they both seek to register the same .com.au domain name. Provided the eligibility rules are satisfied, the first registrant to apply for a domain name will be permitted to license it, even if the domain name had previously been registered by another party, who inadvertently allowed the licence to lapse. However, a trade mark owner, even though not entitled relief under the auDRP, may be entitled additional relief for trade mark infringement if the registrant uses the domain name to sell goods or services, which are similar to those for which the trade mark was registered.

STEVE WHITE
WHITE SW COMPUTER LAW
OCTOBER 2004

www.computerlaw.com.au

White SW Computer Law 2004

This article is a guide only and should not be used as a substitute for proper legal advice, readers should make their own enquiries and seek appropriate legal advice.


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