Domain name disputes resolution process.

BACKGROUND

If you believe a domain name exists that is similar to your trade mark and should not have been allowed, there is something you can do to dispute the registered domain name. Filing a domain name dispute with an authorised administrator can enable the domain name to be transferred to the entitled owner. The costs to dispute a registered domain name has recently increased since 1 March 2008.

Ensuring that the domain name is allocated to the entitled owner can be a confusing matter to resolve. The main reason is due to the internet being a relatively new technology and often not conforming to the court system. The Uniform Domain-Name Dispute Resolution Policy (UDRP) is a resolution system that has been operating since 1999, exists outside the traditional court system and applies to the top level domain names such as .com. The UDRP was implemented by the Internet Corporation for Assigned Names and Numbers (ICANN), who are the administrators of the internet, to allow domain name disputes, such as abusive registration (cyber-squatting), to be resolved.

When a domain name, which is an internet address, is registered, there is an agreement reached that requires the UDRP to be followed as a mandatory policy when dealing with domain name disputes.

The .au Dispute Resolution Policy (auDRP) provides for a resolution dispute process for .au, which is a second level domain name, 2DLs. The purpose of the auDRP, similar to the UDRP, is to provide a cheaper and speedier alternative to litigation for the resolution of disputes of a .au domain name.¹ The auDRP is adopted from the UDRP, however it differs in two ways; some policy rules differ and further address has been made to the practical constraints. The auDRP commenced on 1 August 2002 for asn.au, com.au, id.au, net.au and org.au domain names and expanded on 19 June 2003 the auDRP to cover edu.au domain names.

DISPUTES

Disputes occur between two parties, one that has registered a domain name and the disputing party who claim that the domain name should not have been registered to the other party.² Whilst there is a broad spectrum of reasons that results in domain name disputes, several main motivations include copying someone’s name, deliberate misspellings, copying the product name and numerous additional reasons. auDA have outlined the most common domain complaints and include:

1. registrant eligibility, including the “close and substantial connection” rule;
2. prohibited misspellings;
3. offering a domain name for sale;
4. correct “ownership” of a domain name;
5. transfers (change of registrant); and
6. breaches of the domain name licence terms and conditions, or any auDA Published Policy³

DISPUTE PROCESS

There are clearly defined steps in place for both the UDRP and auDRP on how to take action in disputing a registered domain name. When making a complaint in Australia for a .au domain name, auDA does not actually handle the auDRP complaints. An approved auDRP Provider will be appointed as an independent arbitrator to determine the dispute.

The auDRP process:

1. make a domain complaint to auDA
2. auDA will investigate the complaint on the basis of whether there has been a breach of auDA policy
3. If your want the domain name to be transferred then a complaint must be lodged under the .au Dispute Resolution Policy (auDRP) (2002-22).

The UDRP process:

1. Aggrieved party makes a complaint to ICANN
2. The respondent is given a chance to defend the complaint and justify the domain name registration.
3. The Arbitrator is appointed to decide the case from the evidence provided by the parties.
4. The decision is then made, written, made public and is final.
5. The Order is then made to cancel the registration of the domain name, transfer it or leave it.

The criteria that the complainant must prove in order to have the domain name transferred is:

1. they have legitimate rights in a trade mark over the name at issue and the domain name is either the same, similar or confusingly similar.
2. The respondent has no rights or legitimate interests in respect of the domain name
3. The respondent registered the domain name in bad faith and has been using it in bad faith.⁴

COSTS

As a result of a five year review of the .au Dispute Resolution Policy (auDRP) in 2007, they have approved a fee increase. As of 1 March 2008, the new auDRP fee schedule will be $2000 for a single panel and $4500 for a three member panel.

DOMAIN NAME DISPUTE MATTER

If you are concerned about an existing domain name and contemplating your options, we are able to assist in evaluating and filing your complaint.

If you would like any further information in relation to this article, please do not hesitate to contact Brian Goldberg