Domain Name Disputes
A domain name is the address of a website. When someone attempts to register a domain name for their business or trademark, they may find someone already holds the domain name. This is when disputes can arise. Remedies are available via the domain name registration authority and/or court action.
Internet Corporation for Assigned Names and Numbers
Internet Corporation for Assigned Names and Numbers (ICANN) is a non-profit organisation responsible for managing domain names. It allows companies called Domain Name Registrars to sell, renew and transfer domain names. More than 350,000,000 domain names have been registered. A person can hold multiple domain names.
ICANN requires anyone registering a domain name to provide an email, physical address, phone number and other personal information, to be made available to the public. An add-on privacy service enables the domain name holder to show proxy information instead of personal information.
ICANN policy and disputes
All domain name holders are bound by the ICANN policy, which states that a person registering or renewing a domain name acknowledges that:
- to their knowledge, the registration will not infringe upon or otherwise violate the rights of a third party;
- they are not registering the domain name for an unlawful purpose;
- they will not knowingly use the domain name in violation of any applicable laws and regulations.
A person can make a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) on the grounds that:
- the domain name is identical or confusingly similar to a trademark or service mark to which the complainant has rights; and
- the domain name holder has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
The .au Dispute Resolution Policy applies when the dispute involves an Australian domain name (one with the extension .au). The grounds for making a complaint are worded slightly differently, in that they relate to a “name or trademark”, and to a domain name being registered and “subsequently” used in bad faith.
Circumstances which show the registration and use of domain name was in bad faith are when the domain name holder:
- registered or acquired the name to sell, rent or otherwise transfer the registration to the complainant who owns the trademark or service mark, or a to competitor of the complainant, for a value above the documented out-of-pocket costs directly related to the domain name; or
- registered the domain name to prevent the owner of the trademark or service mark from having it (provided there is a pattern of such conduct);
- registered the domain name primarily to disrupt a competitor’s business;
- used the domain name to intentionally try to attract, for commercial gain, internet users to the website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or a product or service on the website.
Rights or legitimate interests
Rights or legitimate interests to a domain name can be shown by:
- the use of the domain name or a corresponding name to supply goods and services before applying for domain name registration;
- the individual, business or organisation being commonly known by the domain name, even where no trademark or service mark rights have been acquired;
- legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish a trademark or service mark.
An administrative panel decides domain name disputes. ICANN does not take part in the dispute process and is not liable for any decision made. The panel’s remedies are limited to ordering either the cancellation of the domain name or the transfer of the domain name of the complainant.
Court action to resolve disputes
The mandatory administrative process does not prevent a person from taking court action over a domain dispute. If a panel orders that a domain name registration is to be cancelled or transferred, ICANN implements the decision after 10 business days unless it receives official notice from the complainant that they have launched legal action. ICANN then takes no further action until it receives:
- evidence of resolution between the parties;
- evidence that the lawsuit has been dismissed or withdrawn;
- a copy of a court order that dismisses the lawsuit or states that a domain name holder does not have the right to continue to use the domain name.
A court can grant remedies beyond transfer or cancellation of the domain name, such as damages or an injunction that prevents a person from further infringing a complainant’s rights. However, court proceedings can be complex and costly, and a complainant should consider factors such as whether:
- the entity is in Australia or abroad;
- the domain name holder has the means to satisfy a judgment for damages or legal costs;
- the domain name holder has used a privacy service or fake identity to register the domain name;
- the domain name holder has any rights or legitimate interests in the name e.g. where it is held by a business with the same name as the complainant’s;
- the infringing domain name is causing a loss of profits or reputational damage that is significant enough to warrant court action.
For advice or representation in any legal matter, please contact Armstrong Legal.