Overview
There are a range of rules attached to the allocation and eligibility of domain names. These differ depending on the country code specific domain (such as .au) and the second level domain (such as .com.au). Where an entity has registered and legitimately used a domain name they can generally hold on to it by renewing the registration every two years. However, if it has been registered by an ineligible entity or not used in good faith the domain name can be re-allocated on application of another eligible entity. Similarly, entities at times launch attacks on a domain name in an attempt to have it transferred to them. Sometimes this may be a legitimate demand other times it is just an attempt to hijack the domain name.
If a party (Claimant) wants to have a domain name transferred to them they must show the following three elements to be true. Similarly if an entity (Respondent) wants to protect the domain name from being re-allocated they need to rebut the same three elements. In these matters the onus is on the Claimant to prove their case. Although, when you consider the effort (dollars) that goes into creating a website and its marketing value to the registrant, a Respondent should not pull any punches.
The elements to be proven in a domain name dispute, using the .com.au domain name as an example (and they all differ), are that the:
- domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights;
- Respondent has no rights or legitimate interests in respect of the domain name; and
- domain name has been registered or is being used in bad faith.
The domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights
To be successful in having a domain name transferred from the Claimant to the Respondent, the Claimant must show both that the Claimant has a name, trademark or service mark that is the same or confusingly similar to the domain name and that the Respondent’s does not. A respondent need only provide evidence that effectively rebuts the Claimants claim.
If the Claimant is successful, they must also prove the next element.
The Respondent has no rights or legitimate interests in respect of the domain name
Here the Claimant must show that, prior to the Respondent receiving notice of the filing of the claim, the Respondent was not offering goods or services which relate to the domain name or was not otherwise using the domain name in some bona fide way.
To rebut this the Respondent only needs to show that before they received notice of the claim there were making legitimate use of the domain name, such as by being able to demonstrate they had begun preparations for a website.
If the Claimant is successful, they must also prove the next element.
The domain name has been registered or is being used in bad faith
The Claimant must show that the Respondent was using the domain name in bad faith. A classic example of this occurs where the Respondent is re-directing traffic to gambling sites, where the Respondent is cyber squatting and offering to sell the domain name or where the website consists of defamatory information about the Claimant.
The Respondent need only demonstrate they are using the domain name for legitimate commercial purposes.
Practicality
The problem is, it is very easy to make an application to have the domain name transferred and at times entities engage in what is known as reverse domain name hijacking. This draws the Respondent into the domain name dispute and forces them to respond or risk losing their valuable intangible asset. The cost to businesses responding to these sort of allegations runs into the several thousands of dollars.
Similarly, when an entity attempts to purchase a new domain name, such as in circumstances where they are expanding offshore, they may find that a cyber squatter is there ready and waiting for them. Not surprisingly the dollar figure they are asking for, in order to sell the domain, runs into the several thousands of dollars which is the likely cost of filing a claim. However, caveat emptor, these cyber squatters are already breaking the law, so why would you take the risk paying them the money to obtain the domain name. In circumstances like this it is probably better coughing up the money and having a professional obtain via a legal application than risk losing your money and having to follow the legal process anyway.
If you are having problems with a domain name dispute, contact:
Michael Barber
BSc, Grad Dip IT, Grad Cert Bus Admin, MAcct, LLB(Hons), GDLP, MQLS, FGIA.
Commercial, Corporate and Technology Lawyer
Contact Michael here or call on 07 3356 1245.
For more information see: