Domain Name Disputes

With the recent introduction of "direct registration" in the Australian domain name space (e.g. anyone with a connection to Australia can register domain names such as lawprofessor.au or telstra.au), I predict that there will be a sudden uptick of auDRP disputes.  Even though .au did not launch until October 2022, as at today, three auDRP complaints have already been lodged: cointre.au, rockypoint.au and magnaflow.au.  

Some law firms are specialising in this area, such as Cooper Mills.

Non Specialist Lawyers Doing Domain Name Disputes - A big risk!

In my opinion, there is a big risk using a non-specialist lawyer to run a domain name dispute under the UDRP or auDRP.  A recent example is the Brisbane law firm Dowd & Co running a domain name dispute under the UDRP for a complainant.  Not only were they unsuccessful, there was a finding of Reverse Domain Name Hijacking (RDNH) against the Complainant, and resulting bad publicity.

The Panel stated:

"It is evident from the Complaint in this case that the Complainant has not fully appreciated the requirement to prove both registration and use in bad faith.... This Complaint was therefore doomed to fail at the outset as the Complainant could not prove registration in bad faith. The Complainant and/or its legal counsel should have appreciated this. A passing familiarity with Policy precedent on this issue (for example, as described in section 3.8 of the WIPO Overview 3.0) is something that the Panel is entitled to expect from parties represented by legal counsel, and it is lacking here. Such familiarity would have caused the Complainant to be aware of its difficulties in pursuing the Complaint. A modicum of additional research would also have indicated to the Complainant that the Respondent itself had created and run a business by the name of “Streamline Servers”, well before 2009, and it therefore had a bona fide basis for registration of the disputed domain name."

Not something good to have on the public record against you.

See GSL Networks Pty Ltd. v. Domains By Proxy, LLC / Alex Alvanos, Bobservers, WIPO Case No. D2021-2255

See Domain Wire

Domain names

Discussion for this week's lecture will include:

• what is a domain name? 
• who ultimately controls domain names - what roles do ICANN, auDA play? 
• what legal rights do you have in a domain name?
• how much are domain names worth?
• what is cybersquatting?
• how can you resolve domain name disputes?  Please be familiar with the elements of the UDRP and the auDRP.  Are these processes preferable to court?  What are the advantages and disadvantages of each option?
• how would you go about judging a domain name dispute under the UDRP?  Are the decisions consistent?
• what other policies and legal issues impact on an entitlement to domain names?
• new GTLDs

UDRP - Bad Faith Registration

In a UDRP proceeding against a cybersquatter, the Complainant has to prove three elements. The third element is bad faith registration and use. Some decisions have interpreted this requirement as being bad faith registration only. However, the traditional view that both bad faith registration and bad faith use is required, was supported, by majority, in the recent SimplyBusiness.com decision.

See also this DomainNameWire article.

Note that in Australia, under the auDRP, the requirement is different -- bad faith registration or bad faith use ("domain name has been registered or subsequently used in bad faith").