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Showing posts with label domain names. Show all posts
Showing posts with label domain names. Show all posts

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

Direct Registration of Domain Names in Australia

Finally, what is called direct registration of domain names is coming to Australia.

See https://www.auda.org.au/statement/australias-internet-domain-growing-get-ready-getyourau

This will allow registrations such as swinson.au and telstra.au, without the .com part of the domain name.

This arose out of the work of the 2017 Policy Review Panel, of which I chaired.  See Paper and website.

New Domain Name Rules for Australia

A new set of rules for .au domain names will come into effect on 12 April 2021.

auDA, the domain name regulator, states:  "This new licensing framework helps maintain trust in the .au ccTLD, offers clearer guidance for registrants and registrars, and enhances auDA’s role as the guardian of a key piece of Australia’s digital infrastructure."

The new rules consolidate the more than 30 policies and guidance notes that currently govern the .au domain and consist of two key documents:

.au Domain Administration Rules: Licensing - The terms and conditions for .au domain name licences including the complaints and dispute resolution processes.

.au Domain Administration Rules: Registrar - Rules for companies providing .au domain name registration services that have been accredited by auDA.

The new licensing rules are based closely on the current rules but contain some changes that may impact a small number of registrants. You can read about these changes on our new website.  These new rules were not reviewed by the Policy Review Panel.

Launch dates are yet to be set for id.au namespace, .au namespace and Internationalised Domain Names.

Customer does not have property in a telephone number

A recent dispute between two taxi companies confirms that a telephone number is not property and is not owned by the telco customer.

"Relevantly, the terms confirm that the customer does not own or have any legal interest or goodwill in any telephone number issued to the customer. The terms also permit the customer to transfer a telephone number to another person with the prior consent of Telstra."

Manly Warringah Cabs (Trading) Co-operative Limited v Sydney Taxis Pty Ltd, in the matter of Sydney Taxis Pty Ltd (No 2) [2020] FCA 1336

Compare this domain name decision:  Multi-National Concepts Pty Ltd v. 1300 Directory Pty Ltd

Domain Name Study - Which Domain Names don't get renewed

Research uncovered some interesting results, such as:
·     Only 29.79% of all domains are renewed after one year
·     New GTLDs (like .XYZ) have far higher churn rates than .COM, .NET, .ORG etc

https://www.whoishostingthis.com/blog/2019/12/05/domain-study

.au Domain Names - Policy Review

auDA has constituted a policy review panel to review virtually all domain name policies in Australia, as well as to recommend a policy to implement direct registration in Australia.  I am chair of this policy review panel.

See https://www.auda.org.au/policies/panels-and-committees/2017-policy-review-panel/

I strongly urge you to review the issues papers and to provide feedback.

Direct registration will allow registration of domain names in Australia such as cyberspace.au.

There are other reforms being discussed.  See the Issues Paper that was published at the end of January.


Metatags and Google advertisements found to be trademark infringements

In an appeal decision handed down on Friday, the Full Court of the Federal Court of Australia has affirmed a trial judge's decision that metatags and Google advertisements were trademark infringements.

The case is Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56.

The case concerned a real estate agent advertising short term accommodation, using the name of a nearby Accor hotel (which was a registered trademark) to attract Internet users to the real estate agent's booking website.

The court confirmed findings of the trial judge that the following were trademark uses and trademark infringements:  use of of the trademark in the domain name, use in metatags for the website, use in headings for the website, use in email addresses, and use in Google advertisements.

Dot Horse

An interesting blog post concerning the new Dot Horse gTLD:

http://everythingtrademarks.com/2015/09/13/dot-horsing-around/

"Despite its stated purpose, it has – inexplicably – brought together a community of equine parodists. "

Thredbo.com Decision

The Federal Court recently released its decision in the case brought by the owners of thredbo.com.au against thredbo.com.

The decision is: Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited [2013] FCA 563

realestate.com.au Federal Court decision

On Friday, the Federal Court of Australia handed down its decision in the realestate.com.au v. realestate1.com.au case.

The decision is [2013] FCA 539.

The case concerned a generic term, that was used as a domain name, but where significant advertising had built up recognition of the brand.  The Applicant lost on consumer protection grounds but was successful in relation to trade mark infringement.  The case shows the risks of using a dictionary term as a brand, and the importance of a trade mark registration.

"245    However that observation about the ordinary case does not really address (as neither Perram J nor Chesterman J were called upon to address) a situation where the highly descriptive nature of the second-level domain (“realestate”) makes a suffix such as “.com.au” essential to brand or name recognition. Consumers with some familiarity with realestate.com.au as a brand are likely to look beyond “realestate” and to the entire domain name in order to establish identity. A real danger of confusion again arises because in the scanning process which may occur on a search results page, some consumers will miss the indistinctive “1”. I have therefore concluded that the use of “realestate1.com.au” as part of an internet address on a search results page, constituted the use by Real Estate 1 of a mark that was deceptively similar to REA’s realestate.com.au trade marks."

Australian Domain Name Resales


Top 10 public .com.au domain sales
Source: domainerincome.com

Hardware.com.au - $33,333
Electricity.com.au - $30,933
Currencyconverter.com.au - $27,500
Websitedesign.com.au - $22,000
1300numbers.com.au - $20,000
Vitamins.com.au - $20,000
Fridges.com.au - $20,000
Wines.com.au - $19,000
Carparts.com.au - $18,011
Freestuff.com.au - $18,000

See: SMH

Hobart.com Domain Name Sale

An Australian domain name company has sold Hobart.com.au for $65,000 to a website hosting business after purchasing the website for just $875 back in 2005, highlighting the potential riches in buying and selling geographic domains.
See Article

Donuts Applies for Most gTLDs

The single most aggressive bidder for lucrative new web domains is a little-known investment group: Donuts Inc. Its $57 million play for 307 new domains - more than Google, Amazon and Allstate combined - has prompted alarm among industry groups and internet watchdogs.

See SMH

New gTLDs by Australian Companies

Here is my list of new gTLDs applied for by Australian companies, Universities and governments.  There were a number of Victorian Universities who applied, plus the NSW Government and the Victorian Government.  Commonwealth Bank made three applications, as did iSelect.  A number will be contested (as marked in bold) below.

  • AFL
  • AMP
  • ANZ
  • AUSPOST
  • BEST
  • BOND
  • BOOK
  • CANCERRESEARCH
  • CBA
  • CEO
  • COMMBANK
  • NETBANK
  • COURSES
  • FILM
  • GLOBALX
  • IINET
  • KRED
  • LATROBE
  • COMPARE
  • SELECT
  • ISELECT
  • CPA
  • MELBOURNE
  • MONASH
  • NAB
  • UBANK
  • PHYSIO
  • RMIT
  • SALON
  • SBS
  • TAB
  • TENNIS
  • SEEK
  • SELECT
  • SEVEN
  • STUDY
  • SYDNEY
  • WEBJET
  • WOODSIDE
  • YELLOWPAGES
There are a number of multiple applications for the one gTLD, such as ART, AUCTION, BOOK, BET, BABY, HOTEL, HOT, GROUP, GREEN, GAME, CLOUD, CLUB, AUDIO, AUTO, SECURITY, FREE, RIP, MOBILE, MUSIC, NEWS, NOW, ONLINE, PIZZA, PLAY, POKER, PROPERTY, RACING, RADIO, RESTAURANT, RUGBY, SALE, SCHOOL, SEARCH, SHOP, SITE, VIP and SUCKS.  There was one PORN application and two SEX applications (and one SEXY application).

There were two applications from New Zealand, KIWI and RIP.

Amazon made over 70 applications for words in English, and a bunch more in non-Roman text.  Google made about 100 applications, under the name Charleston Road Registry Inc..  Facebook did not make any applications.

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

Telephone Numbers, Domain Names and Trade Marks

Have a look at this recent decision concerning a trade mark application for a telephone number:
1-800-Flowers.Com, Inc v Registrar of Trade Marks [2012] FCA 209
This case involves a dispute between 1300Flowers and 1800Flowers.
It reminds me of the domain name decisions concerning "Phonewords".  See for example:
the 1300fitness.com.au decision.

IP Addresses


[Student Post]
For those that didn’t know, the world is running out of IP Addresses:
It has been known for some time that the current structure of IP addresses is not sufficient for the number of computers/devices accessing the internet in future. The current structure of IP addresses, known as IPv4, is structured as xxx.xxx.xxx.xxx (e.g. 192.168.0.1) which limits this number of unique addresses to 4,294,967,296.
With the limit of Ipv4 addresses expected to be exhausted soon and the number of internet connected devices estimated to reach 22 billion by 2020 (IMS Research) it is clear a new IP standard is required.
Thankfully a group known as the Internet Engineering Task Force (IETF) has been developing IPv6 since the early 90’s which provides for 340 undecillon (that’s 340 with 36 zeros) unique addresses. (e.g. 2001:0db8:85a3:0000:0000:8a2e:0370:7334).  However, proliferation of IPv6 has been slow with Google estimating in 2008 that IPv6 uptake among users was less than 1%. The need for replacement and/or updating of some hardware and software is partly to blame for this slow rate of uptake.
So it seems a significant burden has been placed on the IETF to ensure the smooth running of the internet through the adoption of IPv6. That’s a lot of technical control for how the internet of the future is run. Interestingly the IETF is a volunteer organisation with no formal membership. Their work is funded by employers of its volunteers and sponsors including the US National Security Agency (NSA).
                Questions this raises for me:
-          If IPv6 is developed through volunteers Is the internet controlled and owned by everyone?
-          Although ICANN is no longer US Government controlled it seems the IETF may be to some extent. If all roads lead to the US is the US government in control of the internet?
Another way of thinking about this issue might be “Who has the deepest level of technical control over how the internet is run?” Maybe that’s the IETF.

Domain Name - Use as a Trademark?

"Since 1995, Sports Warehouse had used the name “Tennis Warehouse” in Australia and did not change its domain name for its online store. Sports Warehouse, for the first time in closing submissions, (while conceding that reputation in the context of s 60 was that of the mark rather than reputation on some other basis), contended that as a significant number of Australian residents visited the Tennis Warehouse website at the domain names “www.tennis-warehouse.com” or “www.tenniswarehouse.com”, by inference they came to know Sports Warehouse by that word, which did not include a TW device. While acknowledging that, once at the website, the customer would encounter the TW device with the TENNIS WAREHOUSE trade mark, counsel for Sports Warehouse submitted that the court could infer, in such circumstances, a “capacity for confusion” at which s 60 was essentially directed.

While it has been held that a domain name can in some circumstances constitute use of a trade mark (see Sports Warehouse v Fry at [146]-[156]), there was no evidence before the court to establish that, as at December 2006, the TENNIS WAREHOUSE mark had acquired a reputation through use of the domain names amongst any consumers or any significant section of the public."

See Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 (13 February 2012)

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 ...