Two key lessons from expired domain and prank website - Scotty doesnt know - Trademark

On the morning of 18 October 2018, the domain scottmorrison.com.au was available for purchase in an expired domain auction for the bargain price of $50.

By that afternoon, Prime Minister the Hon Scott Morrison's domain had been transferred to a digital strategist, Jack Genesin. Mr Genesin set up a website featuring a solitary smiling picture of the PM accompanied by Lustra's song 'Scotty Doesn't Know'.

Fortunately for the Prime Minister, after much press, Mr Genesin made contact soon afterwards offering to return the domain.

But what should you do if the prankster isn't so kind hearted?

TWO KEY LESSONS FROM 'SCOTTY DOESN'T KNOW'

Where possible, try to avoid the situation

Most domain registrars offer auto-renew functionality. If a domain portfolio is not managed by an external provider, such as a law firm, this is a good option.

Challenge the domain name registration

It is possible to challenge a domain registration through an administrative process.

While the requirements for this process differ depending on the top level domain (generic or country code), it is generally necessary to show at least that:

the challenger owns rights in the name contained in the challenged domain (e.g. trade mark rights);
the current holder of the domain does not have a legitimate interest or right to hold the domain; and
the current holder of the domain acted in bad faith.

This process is typically fairly swift, with a decision usually handed down within 2-3 months.

The Prime Minister would likely have had strong prospects of recovering the expired domain. Lucky for him (and the person that forgot to renew the domain), a formal challenge was not necessary.

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.