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Global companies, including gambling operators, often come
across cybersquatters who attempt to "free ride" on their
brand and register domain names which suggest wrongly an
association with that brand.
In many cases, the cybersquatter operates an active website in
association with the domain name, thereby deriving business through
an implicit association with the relevant brand.
We have come across this type of activity in many countries,
including Australia. In a recent example, a brand associated with
an online gaming client was registered by an Australian company as
a domain name in the .com.au sub-domain. This was used to divert
customers to a website operated by our clients' competitor.
In this situation, clients often choose to rely on their
intellectual property rights to cause this infringing use to cease.
However, a more cost effective and timely remedy may be
available.
In order to resolve this matter, we made a complaint to the .au
Domain Administration (auDA) (the
government-endorsed manager of the Australian domain names). To
have a basis for auDA to delete the domain name, it was necessary
to establish that the Australian company had not complied with
auDA's Domain Name Eligibility and Allocation Policy Rules.
Under these Rules, domain names in the com.au 2LD must be an exact
match, abbreviation or acronym of the registrant's name or
trade mark or otherwise be closely and substantially connected to
the registrant.
After carrying out investigations to confirm that the issue of
the domain name to the Australian company did in fact breach these
Rules, we wrote to auDA who then directed the registrar to delete
the offending domain name. The domain name subsequently entered a
"pending delete" status for 14 calendar days and was
subsequently dropped from the Register, after which it became
available for our client to register.
It was only a number of days after our complaint was made to
auDA that the registrar was directed to delete the domain name.
Shortly after, the domain name was made available for our client to
register. By using this process, the matter was resolved
successfully for our client in a very short space of time without
resorting to litigation.
In order to protect their intellectual property rights, gambling
operators should monitor domain names in the .com.au TLD space
regularly to ensure that they are not being registered by
cybersquatters. Appropriate trade mark protection should also be
sought.
In any event, effective remedies through the domain name
administration process may be available.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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