Launch of the auDRP Overview
Three, two, one... launch! The recent launch of a compendium of approximately 300 .au domain dispute decisions is a reminder of the importance for businesses to secure .au domain names at the earliest opportunity.
The compendium, called the auDRP Overview 1.0, provides consensus views of panels on key legal and procedural issues under the au Dispute Resolution Policy (auDRP). The aim of the Overview is to assist auDRP panelists (decision makers), participants and other interested stakeholders in .au domain name disputes, and to be a document that will be updated to include future decisions.
The Overview was produced for the .au domain self-regulatory body (auDA) by Dr Andrew Christie. It has been referred to as ‘jurisprudence’ however it is important to note that panelists are not bound to follow previous panel decisions. Nonetheless it is likely that prior decisions will influence future decisions of panelists as has been the case in the past.
What is the auDRP?
The auDRP is an alternative dispute resolution mechanism to litigation. Its purpose is to provide a cheaper and quicker resolution of disputes between the registrant of an .au domain name and a party with competing rights in the domain name.
The auDRP Policy sets out three grounds for complaint, all three of which must be proved by the complainant to succeed:
- the domain name is identical or confusingly similar to a name, trade mark or service mark in which the complainant has rights, and
- the registrant has no rights or legitimate interests in respect of the domain name, and
- the domain name has been registered or subsequently used in bad faith.
Evidence of registration or use in bad faith includes:
- selling, renting or transferring domain name registration for profit,
- registration for the purpose of disrupting the business of another,
- use of a domain name in an attempt to attract, by creating a likelihood of confusion with the complainant’s name or mark, internet users to a website for the purpose of commercial gain.
The available remedies under the auDRP are the transfer of the domain name to the complainant or cancellation of the domain name. Panel decisions under the auDRP are binding on both parties and there is no appeals process. If unsatisfied with a panel decision a party may bring legal proceedings for a court decision.
Businesses failing to register domain names
The relatively high frequency of auDRP proceedings is an indication that businesses are failing to register .au domain names that encompass their trade marks. Domain name licences are allocated on a ‘first come, first served basis’ and, as a consequence, there can be significant business risk associated with failing to register .au domain names, as another business may secure the domain name.
All businesses can be effected. The owners of Australian trade marks TUMBLR and BLACKBERRY have utilised the auDRP to dispute the registration of domain names containing their respective trade marks. Both were successful in having the relevant domain names transferred to them.
In July this year the Lucas Film Entertainment Company Ltd. LLC (Lucas), creator of the successful Star Wars film trilogies that generated US$4.38 billion at the box office, and the owner of the Australian registered trade mark for STAR WARS for the last 37 years, successfully disputed the registration of the <starwars.com.au> domain name. It was decided by the panelist that the evidence suggested that the registrant registered the domain name intending to benefit in some way from its associations with the STAR WARS mark, and it was registered in bad faith. The panelist ordered that the domain name <starwars.com.au> be transferred to Lucas.
What does this mean for businesses?
The launch of the auDRP Overview serves as a reminder to businesses that in relation to important trade marks being used by the business to:
- register at the earliest opportunity domain names that include the trade marks,
- monitor use of the trade marks on the internet, and
- monitor domain names being registered that encompass the trade marks.
Please contact us to assist with any domain name issues you may have.