Domain name disputes – the case of eazyjet.com

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The right to register and hold a domain name rests in the law of contract and essentially works as a limited licence to use it.  The terms of that contract are determined by the oversight body.  Generic Top Level Domains (gTLD) include .com, .edu and .gov while country code Top Level Domains (ccTLD) include .au and .nz.

While Courts have jurisdiction to hear disputes regarding domain names, referring a matter to the court is rarely the best course of action.  The Uniform Domain Name Dispute Resolution Policy (UDRP) is mandated by the Internet Corporation for Assigned Names and Numbers (ICANN) and enables alternate dispute resolution providers such as the World Intellectual Property Organisation (WIPO) to hear disputes and provide remedies.

While alternate dispute resolution is much cheaper than relying on the courts entities considering initiating a dispute should expect to spend thousands of dollars to prepare or respond to a complaint with the degree of rigor required.  The actual cost will depend on the quality of the evidence at hand and the strength of the arguments.

Legal elements of a domain name dispute

Whether or not a complaint is successful turns on the complainant proving the following: (note: the elements that follow are based on .au domains and do differ from gTLD’s other ccTLD’s):

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

By comparison, the elements for gTLD’s differ with respect to the first element shown below:

• (gTLD) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
• (ccTLD .au) the domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights.

Complainants and Respondent’s obligations

Pursuant to para 4(a) of the.au Dispute Resolution Policy (auDRP), in administrative proceeding, the complainant bears the onus of proof.  If the complainant fails to discharge that onus of proof, the complaint fails whether or not the respondent replies.  Nevertheless, it would not be wise for a respondent not to reply if they want to keep their rights to a domain name.  The complainant must prove each element of the complaint while the respondent need only disprove one.

Remedies

Pursuant to para 4(a) of the auDRP, the remedies available in an administrative proceedings include:

• the cancellation of the domain name; and
• the transfer of the domain name.

However, at request of a respondent the administrative panel hearing the matter may make a finding of Reverse Domain Name Hijacking.  While this adds no immediate advantage for the respondent in the administrative hearing it may be used as evidence in a court of competent jurisdiction in relation to the tort of interference with contractual relations.

Establishing the required elements

To succeed in an action, each of the elements must be proved of the complaint or a single one disproved by the respondent.  In respect to each of the elements the following represent examples of how a party may go about doing this, and what evidence will need to be included.

The domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights

• Satisfying this element is a matter of proving the business name of the complainant or service or trademark is confusingly similar to the domain name.  A comparison of the domain name and the associated name or mark is required.
• In EasyGroup IP Licensing Limited v. Philip Thornton, WIPO Case No. D2004-0826 (Easy), the disputed domain name was ‘eazyjet.com’ and the claimants domain name was ‘easyjet.com’ only difference between the respondent’s domain name and the complainants was the substitution of the letter ‘s’ with the letter ‘z’.  The panel found this to be confusingly similar.

The respondent has no rights or legitimate interests in respect of the domain name

Where the registrant of the domain name does have a legitimate interest, the claim will fail.  We have successfully used the Australian Business Name Register to prove legitimate rights.

In Easy, after the complainant alleged there was no expressed use of the term eazyjet the onus turned back onto the respondent to prove they did have a legitimate right.  It did not help the respondent that correspondence between the parties included an offer to sell the domain name.  The panel found the respondent had no legitimate right to or interest in the domain name.

The domain name was registered or is subsequently being used in bad faith

Examples of bad faith include proving the purpose of registration was for selling or renting the domain name.  In this instance, an email from the registrant offering to sell the domain name would be an example of evidence to support this.  Similarly, showing the use of the domain name was for disrupting the business activities of the applicant has been proven by showing the site directs away from the complainants business.

In Easy, the website attached to the domain consisted of links to other travel websites selling cheap tickets, indicating there was no legitimate use of the website by the registrant.  Consequently, Easy resulted in in the domain name, ‘eazyjet.com’, being transferred to the complainant.

Links and further references

Rules

.au Dispute Resolution Policy

Determinations

EasyGroup IP Licensing Limited v Philip Thornton, WIPO Case No. D2004-0826

Further information about domain name disputes

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

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