What's in a Domain Name?

Background
Australian Domain Names
Decisions
Moving Ahead

What do Julia Roberts, The Wiggles and Telstra Shop all have in common? They have all had web site domains registered in their names, by someone else. Each has taken steps to reclaim their domain name by lodging a complaint with the Geneva-based World Intellectual Property Organization (WIPO).

Background

The WIPO is the body responsible for determining who is entitled to register domain names throughout the world. It is one of the four bodies entitled to resolve disputes by applying the Uniform Domain Name Dispute Resolution Policy and supplemental rules approved by the Internet Corporation for Assigned Names and Numbers and the WIPO. Over 2,000 cases have been filed this year, with over 800 filed with the WIPO.

The policy governs '.com', '.net', '.org' and '.nu' domain names. The policy has been in place in most registries since December 1999.

The essential elements of the policy consider whether:

• the domain name registered is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
  
  
• the registered holder of the domain name has a legitimate right to the domain name; and
  
  
• the domain name has been registered and is being used in bad faith.

Examples of bad faith include registrations:

• to prevent use of the name by the registered owner of the trademark;
  
  
• to disrupt the business of the trademark holder;
  
  
• to sell or rent to the registered holder; or
  
  
• to intentionally confuse consumers for commercial gain by using the trademark.

If a party is ordered to transfer a domain name, the affected party has 10 days to challenge the decision in a competent court agreed by both sides.

Courts v the WIPO
Parties can chose to resolve their disputes in accordance with the WIPO policy or through conventional courts. The policy is proving a popular choice as it is faster and less expensive than pursuing a case in court. The policy is designed so that decisions should take no more than 60 days.

The remedies available under the WIPO extend to either cancellation of the domain name, or cancellation and transfer of the domain name to the complainant. Courts are not limited to these remedies. For example, a recent court case in China ordered a company to cancel its Chinese domain name that used the Proctor & Gamble name, and indemnify Proctor & Gamble for the loss associated with the use of the name.

Australian Domain Names

The WIPO has already this year, through its administrative panel, ordered the surrender of several domain names in Australia. Thompson Media Pty Ltd was ordered to give up its rights to the domain names 'thewiggles.com' and 'henrytheoctopus.com' following a complaint about the registration of the names by The Wiggles Touring Pty Ltd.

A businessman, Barry Cheng Kwok Chu, was ordered to relinquish his rights to the domain name, 'telstrashop.com'. Cheng failed in his bid to argue that the word 'Telstra' was the phonetic pronunciation of a word that most closely corresponded to the Chinese pronunciation of the name of his business. In another case, Nuclear Marshmallows was found to have registered the domain name 'telstra.org' in bad faith, despite the fact that Nuclear Marshmallows had not actually used the name.

The web site 'www.richardalston.com' has been registered by an internet entrepreneur. The site has no connection to Richard Alston, the Minister for Communication, Information Technology and the Arts. Alston has not, as yet, lodged a complaint with the WIPO about this domain name.

Decisions

The WIPO has handed down more than 290 decisions since the policy was introduced. Of those, all but 56 resulted in either the domain name being deregistered or transferred to the complainant. The successful complainants include:

• World Wrestling Federation Entertainment, Inc (worldwrestlingfederation.com);
  
  
• Lion Nathan Limited (steinlager.com);
  
  
• Microsoft Corporation (microsoft.org);
  
  
• Nike Inc (enike.com and e-nike.com);
  
  
• Julia Roberts ('juliaroberts.com');
  
  
• Yahoo! Inc (37 domain names including 'yaghoo.com', 'yahjoo.com' and 'yahoof.com');
  
  
• The Chancellor, Masters and Scholars of the University of Oxford ('oxford-university.com'); and
  
  
• Air New Zealand Ltd ('airnewzealand.com')

Moving Ahead

An internatioanl group of governments, including Australia, has requested that the WIPO initiate a second round of international consultation to address outstanding issues relating to intellectual property and domain names. The group has asked that the WIPO consider exapnding it's arbitration authority to include issues related to the abusive use of internet domain names. These issues would include the bad-faith registration of:

• personal names;
  
  
• geographical indications;
  
  
• international organizations;
  
  
• trade names; and
  
  
• other rights not based on trade marks.

Also requested was a list of best practices to help administrators of country code, top-level domain name registries to prevent and resolve domain name disputes.

The self-regulatory body for Australian internet names ('.au Domain Administration') last month announced the creation of an advisory panel to review local naming policies. Australia has strict policies regarding registration of internet domain names in the '.au' subdomain. The panel comprises representatives from the internet and legal communities, and is to review the procedure for awarding domain names. It is expected they will loosen the policy restrictions before the end of 2000.

For further information on this topic please contact Peter James at Allen Allen & Hemsley by telephone (+61 2 9230 4000) or by fax (+ 61 2 9230 5333) or by e-mail ([email protected]).