Australia: New Domain Name Dispute Policy for Australian Open Second Level Domain Name

by Simon Dudley Williams

On 1 August 2002, a new mandatory administrative dispute resolution policy and procedure came into effect for open second level Australia country code domain names, ie. .com.au, .net.au and .org.au, asn.au and id.au (".au Domain Names").

The ".au Domain Name Dispute Resolution Policy" (known as "auDRP"), which is modelled on the ICANN Uniform Dispute Resolution Policy ("UDRP"), is expected to be a major improvement over the previous voluntary (and little used) dispute resolution procedure for .au Domain Names. The auDRP incorporates, however, a number of differences reflecting the stricter eligibility and allocation policy for .au Domain Names, as well as addressing certain practical shortcomings of the UDRP.

All applicants for new .au Domain Names as from 1 August 2002 (when the new regime for .au Domain Names came into effect), will be contractually bound to submit to the auDRP in relation to disputes between domain name licence holders and parties with competing legal rights to the domain names. The auDRP will not apply to .au Domain Names registered before 1 August 2002 until those domain names are renewed (unless a registrant elects, in the interim, to be bound by auDRP). It will be a condition of renewal that the domain name registrants "sign on" to the auDRP.

For a complainant to be successful in having a domain name either cancelled or transferred to it under the auDRP, it must establish each of the following grounds to the satisfaction of a panel appointed by an approved dispute resolution service provider:

(i) the domain name is identical or confusingly similar to a name, trade mark or service mark in which the complainant has rights; and

(ii) the domain name licence holder has no right or legitimate interest in respect of the domain name; and

(iii) the domain name has been registered or is subsequently used in bad faith.

The reference to name in paragraph (i) above is an addition to the corresponding ground under the UDRP and has been included specifically to cover, among other things, the unauthorised registration of individual’s (eg. the name of well-known personalities) as domain names, as well as any other legal or trading name registered with the relevant Australian government authority. In addition, a complainant under the auDRP it is not required to show that the domain name has both been registered and is being used in bad faith (as required under the UDRP). This requirement under the UDRP has raised a number of problems for complainants where "cybersquatters" have registered domain names incorporating the trade marks or trading names of the complainants but have not used the domain names. This provision under the auDRP also allows for complaints to be lodged where a domain name was initially registered in good faith but is subsequently used in bad faith. For example, where a domain name was initially registered by a licensee of the trade mark proprietor, and continues to be used (without authority) after the termination of the licence.

The following circumstances (which are not exhaustive) will be regarded as evidence of registration or use of the domain name in bad faith under the auDRP:

(a) circumstances indicating that the domain name was registered or acquired primarily for the purposes of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of the documented out-of-pocket costs directly relating to the domain name. [The corresponding circumstance under the UDRP requires the complainant to demonstrate that the domain name holder intended to sell the domain name only to the complainant or to a competitor of the complainant] or;

(b) where the domain name licence holder has registered the domain name in order to prevent the owner of a name, trade mark or service mark, reflecting that name or a mark in a corresponding domain name; or

(c) where the domain name licence holder has registered the domain name primarily for the purpose of disrupting the business or activity of another person [again the corresponding circumstance under the UDRP has been expanded to include the disruption of business of any person, not just that of the complainant]; or

(d) by using the domain name, the domain name licence holder has intentionally attempted to attract, for commercial gain, internet users to a website, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation or endorsement of that website or of a product or service on that website or location [the corresponding circumstance under the UDRP is limited in that it requires a complainant to establish that a respondent has intended to re-direct internet users to the respondent’s own website].

A domain name licence holder which is the subject of a complaint under the auDRP ("respondent") may demonstrate that it has rights to and legitimate interests in a domain name the subject of a complaint if:

(a) before any notice to the respondent of the subject matter of the dispute, the respondent can show bona fide use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names acquired for the purpose of selling, renting or otherwise transferring); or

(b) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or

(c) the respondent is making a legitimate non-commercial use of the domain name, without an intention for commercial gain to misleadingly divert consumers or to tarnish the name, trade mark or service mark of the complainant.

The relevant period under the auDRP for a respondent to show such a right or legitimate interest in a domain name is not necessarily the date of the complaint being lodged (as required under the UDRP), but the date on which the respondent is put on notice as to the subject matter of the dispute. This allows a complainant the option of issuing a letter of demand to the respondent before incurring the costs of preparing and lodging a formal complaint, and without the risk that the respondent may, in the interim, attempt to demonstrate rights to or a legitimate interest in the domain name.

A complainant under the auDRP must, itself, demonstrate eligibility (under the Eligibility and Allocation Policy for the relevant domain name) before any domain name in question is directed to be transferred to the complainant.

Proceedings under the auDRP are conducted by way of written submissions (both in electronic form and hard copy) and provide for a relatively cost and time effective dispute resolution mechanism for domain name disputes. A decision from the panel is usually handed down less than 40 days from the date the complaint is lodged. The auDRP does not prevent any party from applying to a Court of competent jurisdiction for the resolution of a domain name dispute before or after the auDRP proceedings.

The fact that the introduction of the auDRP allows for a mandatory administrative dispute resolution procedure for .au Domain Names, essentially in line with the widely used UDRP, is likely to be welcomed by trade mark proprietors. It remains to be seen whether the auDRP will be used as effectively and as widely as the UDRP. In any event it is a considerable improvement over its predecessor.