Dundas Lawyers® has extensive experience in acting for complainants and respondents in domain name disputes.
What is a domain name dispute?
A domain name dispute exists where two (2) parties have differing and competing rights to a domain name and the complainant would like the domain name assigned to them or cancelled. Common disputes occur when a person registers for example the.com (TLD) and someone else registers the .com.au (2TLD) level domain name without being eligible to do so.
Domains aren’t property!
There are no proprietary rights in a domain name it’s not like a trademark. The registrant of a domain holds a licence to use the domain name for number of years subject to the terms of the licence agreement.
First come first served – to a point
Domain names are allocated according to a first come first serve basis, provided that the party wishing to register the domain name (the Registrant) meets the eligibility criteria. A trade mark is not better than a business name, nor is a company name any better. It’s simply first in, best dressed.
Domain name eligibility criteria
auDA publishes domain name eligibility and allocation rules for 2LDs. Generally, cogate provisions apply to eligibility criteria for.com.au, .edu.au, .net.au, asn.au, .id.au, and .org.au. It is possible for a Registrant to register multiple 2LD domain names, provided they meet the eligibility criteria.
The following criteria apply to Registrants of Australian 2LDs – the Registrant must be:
- trading under a business name registered in any State or Territory of Australia;
- an Australian partnership;
- the owner or applicant for an Australian Registered Trade Mark;
- an incorporated Association or an Australian Statutory body registered in any Australian State or Territory;
- a foreign company licensed to trade in Australia; or
- an Australian Registered Company.
Domain names must be:
- an exact match, abbreviation or acronym of the Registrant’s name or trade mark; or
- closely and substantially connected to the Registrant.
Elements of a domain name dispute
The threshold requirements are akin to a reverse of the domain name eligibility criteria, but with a different emphasis.
In addition to adhering to the requirements of form, for the complaint to make a successful prima facie case, paragraph 4A of Schedule A of the .au Dispute Resolution Policy states that the following elements must be addressed:
- First Element –your domain is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights;
- Second Element – you have no rights or legitimate interests in respect of the domain name; and
- Third element – the respondents’ domain name has been registered or subsequently used in bad faith.
Pitfalls
The devil is in the detail and there are always mitigating circumstances. Whilst not a Court each panel is usually comprised of lawyers so they tend to act like it. Care must be taken to identify and gather admissible evidence in relation to each of the three (2) elements.
Disclaimer
This page contains general commentary only about domain name disputes. 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.
Why choose Dundas Lawyers® to advise on your domain name dispute?
Having exerted Blood Sweat and Years® since April 2010 we are the team you want on your side for the long term to act as the ‘bodyguard’ for your business to prepare submissions for a domain name dispute. Some of the reasons clients choose Dundas Lawyers® include:
- our Uncommon business acumen;
- our Uncommon expertise in transactional, compliance and litigious matters;
- our Uncommon expertise in collecting online forensic evidence;
- our Uncommon customer focus;
- the fact that we don’t just know law, we know business!
- how we leverage our Uncommon Nous® to provide client centric solutions.
Need a lawyer to advise your domain name dispute?
For a confidential, no obligation initial telephone call to find out how we can help your business gain an uncommon advantage in domain name disputes please phone our team on either 1300 386 529 or 07 3221 0013.
Malcolm Burrows B.Bus.,MBA.,LL.B.,LL.M.,MQLS.
Legal Practice Director
T: +61 7 3221 0013 (preferred)
M: +61 419 726 535
E: mburrows@dundaslawyers.com.au
Complete the form below and we will respond to your enquiry within one (1) business day from the moment you press Submit.
Domain name dispute enquiry
Authoritative references
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