Australia: The Launch of .au Dispute Resolution Policy

The .au Domain Names Dispute Resolution Policy (auDRP) commenced on 1 August 2002. The auDRP is intended to provide a cheaper and quicker alternative to litigation for resolution of disputes between .au domain name registrants and parties with competing rights in the domain name.

The WIPO Arbitration and Mediation Center (Center), which is an administrative division of the International Bureau of the World Intellectual Property Organization (WIPO), has been retained as a dispute resolution provider by the auDRP.

Domain names that were issued before 1 August 2002 are not subject to a mandatory administrative proceeding under the auDRP, unless the registrant voluntarily elects to be bound by the auDRP or they are renewed after this date.

The auDRP is a version of the Uniform Dispute Resolution Policy (UDRP) administered by the Internet Corporation for Assigned Names and Numbers (ICANN) with respect to global Top Level Domains (gTLDs). In order to obtain cancellation or transfer of the conflicting domain name, the complainant has to meet the following criteria:

The domain name is identical with or confusingly similar to a name, trademark or service mark in which the complainant has rights;

The domain name holder 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.

As with UDRP requirements, the complainant must prove that each of these three elements is present. The auDRP nevertheless differs from the UDRP in two main respects. Firstly, it takes into consideration the policy rules that apply to .au domain names. Secondly, it addresses practical constraints that have become apparent since arbitrations under the UDRP began in 1999.

Even though the spirit of the UDRP has been preserved in the auDRP, a few amendments have been included. In the light of this some future decisions that will be given under the auDRP might differ from those given under the UDRP.

It can be seen that the scope of the rights on which the complainant can rely, has been expanded. Under the auDRP the complainant can actually base his/her complaint not only on a trademark but also on a name in which he/she has rights.

As a result, the auDRP will not have exactly the same purpose as the UDRP, which is to provide holders of trademark rights with an administrative mechanism for efficient resolution of disputes arising out of bad faith registration and use by third parties of domain names corresponding to those trademarks.

Further, the auDRP will be available not only for the owners of trademarks, but also for anyone who has rights relating to a registered name (the complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority, or the complainant's personal name).

Moreover, the auDRP encompasses a few differences from the UDRP relating to bad faith.

Firstly, under the UDRP, the complainant must not only prove that the domain name has been registered in bad faith but also that it is being used in bad faith. It is usually very difficult for the complainant to bring such proof.

Indeed, bad faith registration alone is an insufficient ground for obtaining a remedy under the UDRP. (WIPO administrative panel decision of 18 February 2000 No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows).

It is often the case that a bad faith registrant registers domain names in bulk, but does not use them. Consequently, the majority of refusals to cancel or to transfer the domain name in issue were based on the failure to adduce evidence that the domain name had been registered and was being used in bad faith. (WIPO administrative panel decisions: Ingram Micro. V. Ingredients Among Modern Microwaves No. D2002-0301 of 15 May 2002; Formway Furniture Limited v. Microfish Pty Limited Case No. D2001-1476).

This principle was applied in a WIPO administrative panel decision forming the now famous precedent thus:

• "It is clear from the legislative history that ICANN intended that the complainant must establish not only bad faith registration, but also bad faith use. These comments point out that cybersquatters often register names in bulk, but do not use them, yet without use the streamlined dispute-resolution procedure is not available" (WIPO administrative panel decision of 14 January 2000, Case No. D99-0001, World Wrestling Federation Entertainment Inc. v. Michael Bosman).

Under the auDRP, the complainant has only to prove either that the domain name has been registered in bad faith or that after registration it has been used in bad faith.

By this approach, the simple fact that the registrant would have been aware of the existence of the complainant's rights at the time of the registration could be sufficient to comply with the auDRP's requirement relating to bad faith.

Secondly, as with the UDRP requirements, the complainant can demonstrate that the domain name has been registered in bad faith by showing that it has been acquired primarily for the purpose of disrupting its business or activity.

In the case below, the panel accepted the bad faith argument in the following terms.

• "Because Respondent and Complainant are competitors in the same market, the Panel determines that Respondent registered and has used the name californiaovernight.com for the purpose of disrupting Complainant’s business within the meaning of paragraph 4(b)(iii) of the Policy".(WIPO administrative panel decision of 26 March 2001, Case No. D2001-0063, Express Messenger Systems Inc. v. Golden State Overnight).

It follows from this ruling that for the complainant to succeed the disputed domain name must have been acquired for the purpose of disrupting the complainant's business or activity only (WIPO administrative panel decision of 15 August 2002, Case No. D2002-0503, Arroyo Craftsman Lighting Inc v. Golden Realty).

Under the auDRP, the scope of this provision has been extended. The complainant can actually prove that the domain name has been registered in bad faith if it is disrupting the business or activity of any person, but not necessarily that of the complainant.

Again the notion of bad faith has been broadened under the auDRP. The complainant can demonstrate that the domain name is used in bad faith by adducing evidence that the domain name registrant has tried to sell the domain name to another person. Under the UDRP, this "other person" may only be the complainant itself or one of its competitors. The auDRP thus encompasses the case where the domain name registrant, in bad faith, intends to sell the domain name to any other person, whether or not that person is connected with the complainant.

With this approach, the trading of domain names will become more difficult in .au domain names than in gTLDs. Indeed, it has been often considered that the activity of offering to sell domain names under certain circumstances could be regarded as a licit trade. Two administrative panel decisions have reaffirmed this principle as follows:

• "There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy" (WIPO administrative panel decision of 4 September 2000, Case No. D2000-0834, CBS Broadcasting Inc. v. Worldwide Webs, Inc.);
• "As the commercial value of such domain names has increased, brokers like Respondent have seized the opportunity to sell such domain names to the highest bidder. In principle, such a practice may constitute use of the domain name in connection with bona fide offering of goods or services (i.e the sale of the domain name itself)" (WIPO administrative panel decision of 24 March 2000, Case No. D2000-0016, Allocation Network GmBH v. Steve Gregory).

Naturally, such practices become illicit when the domain names in question are identical with or confusingly similar to trademarks or service marks belonging to others. The unlawful character of this trade has been reaffirmed in the subsequent administrative panel decision as follows:

• "As previously stated, it could be argued in of favour of companies dedicated to registering and selling domain names, that such conduct is licit. This, however, should not be considered, when such companies operate by registering trademarks and then selling them to their owners. That kind of conduct has repeatedly being considered constituting bad faith within the meaning of paragraph 4(a)(iii) of the Policy"(WIPO administrative panel decision of 17 January 2002, Case No. D2001-1248, Telefonica Del Peru SAA v. netEGG.COM).

By analogy, companies devoted to registering and selling domain names will have to comply with the more stringent auDRP requirements in order to avoid falling into this illicit activity.

Accordingly, it can reasonably be predicted that these new provisions in the auDRP concerning bad faith will have an important bearing on the outcome of proceedings and will be to the benefit of complainants.

Although the auDRP is an adaptation from the UDRP, it can be concluded that the above distinctions are likely to generate some substantial differences between decisions given under the two policies. However, what will happen remains to be seen; the panels will have a great deal to do and, as the famous quotation says "a journey of a thousand miles must begin with a single step (Lao-tze)".

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