Domain name disputes – a summary of the process

A domain name is a string of text that maps to an alphanumeric IP address, enabling users to access websites through client-side software.^[1]  Domains can be valuable business assets, and they frequently become the subject of disputes regarding the legitimacy of their registration among organisations with competing rights.

Overview of the domain name dispute resolution process

The Uniform Domain Name Dispute Resolution Policy (UDRP) serves as the primary international resolution mechanism, providing a framework for resolving conflicts outside traditional Court settings.  The UDRP enables individuals to file complaints regarding disputed domain name registrations within generic top-level domains (gTLD) (.com) and in country code top-level domains (ccTLD) (.com.au) for countries that have voluntarily adopted the UDRP policy.^[2]

The Australian .com.au domain dispute resolution process

On 13 August 2001, the Australian .au Domain Authority (auDA) introduced an adaptation of the UDRP specifically for resolving disputes regarding .au domain names, known as the .au Domain Dispute Resolution Policy (auDRP), which does not apply to gTLDs.^[3]

auDA dispute resolution procedure

The auDA dispute resolution process involves several key steps as follows:

• Filing the complaint: The process begins when the complainant submits a formal complaint regarding the disputed domain name.
• Response from the respondent: The respondent is then given an opportunity to file a response to the complaint, outlining their position on the matter.
• Panel appointment: Following the exchange of documents, a panel is appointed to review the case.
• Evidence review: The panel conducts a thorough examination of the evidence presented by both parties, considering relevant documentation and arguments.
• Issuing a decision: Finally, the panel issues a binding decision about the dispute and allocates the domain name in question to either the complainant or the respondent.

Filing a complaint under the auDRP

To file a complaint under the auDRP, a complainant must submit a domain name dispute application form (Cover Sheet) along with a comprehensive submission, collectively referred to as the Complaint, to an auDA-approved provider (Approved Provider).  A list of the current Approved Providers can be found at www.auda.org.au/au-domain-names/au-rules-and-policies/au-dispute-resolution-policy-audrp-2016-01.

Form of the Complaint

The Complaint must adhere to the auDRP, including the rules outlined at https://www.auda.org.au/policy/au-dispute-resolution-policy-audrp-2016-01, as well as any supplementary rules specified by the specific Approved Provider.

Generally, a Complaint must include the following information:

• contact details for the parties;
• the domain name and registrar’s information;
• jurisdictional basis for the administrative proceeding;
• factual and legal grounds for the proceeding;
• remedies requested; and
• election of administrative panel.

Elements required to be addressed

In addition to adhering to the required format of the Complaint, to make a successful prima facie case, the complainant must address each of the following elements as to why they should have the domain name assigned to them or why it should be cancelled:

First Element – the domain name in question is identical or confusingly similar to a name, trade mark or service mark in which the complainant has rights;

Second Element – the respondent has no rights or legitimate interests in respect of the domain name; and

Third Element – the respondent’s domain name has been registered or subsequently used in bad faith.

The devil is in the detail of each element and this is where the battle for a domain name can be won or lost.

For further information on a domain name dispute administered under the UDRP, see our article “Domain name disputes – the case of eazyjet.com”.

Links and further references

Regulatory guidance

Overview of Panel Views on Selected auDRP Questions

auDRP 2016-01

WIPO supplementary rules

Resolution Institute Supplemental Rules

Further information about domain name disputes

If you need advice on a domain name dispute, contact us for a confidential and obligation-free discussion:

Disclaimer

This article contains general commentary only.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.

[1]   Cloudflare, ‘What is a domain name? | Domain name vs. URL’ (Web Page, 2023) https://www.cloudflare.com/learning/dns/glossary/what-is-a-domain-name/ accessed 28 October 2024.

[2]   World Intellectual Property Organization, ‘WIPO Domain Name Dispute Resolution Overview’ (Web Page, 2023) https://www.wipo.int/amc/en/domains/guide/#a1 accessed 28 October 2024.

[3]   Ibid.

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