An online presence is now imperative for many businesses, with most businesses having an online presence either through a website dedicated to their business, or through social media platforms.
While social media platforms offer an economical way of having an online presence, most businesses still opt to register their own websites (domain name), as this allows them to customise the look and feel of their website, and control their branding.
Registering a domain name is a relatively painless exercise. You search for the available domain names, and register the domain name with a domain name registrar. The domain name is licenced to you (as the registrant) for 2 years and you pay a renewal fee from time to time, in order to continue using the domain name. Domain name registrants merely obtain a licence to use the domain name, and do not “own” the domain name.
Issues may arise if a third party has already “taken” your domain name, or if you “lose” your domain name, whether due to a failure to pay the renewal fee or a technical glitch caused by the domain name registrar (which unfortunately is known to happen), and it is open for a third party to then register your domain name.
If a domain name you were previously using has been “taken” by a third party, not only will your web presence be affected, you will also not be able to receive any emails sent to email addresses sharing the same domain name (e.g. domain name abc.com.au and emails to xx@abc.com.au).
If this occurs, what steps can you take?
- Make a complaint to auDA
au Domain Administration Ltd (auDA) is the policy authority and industry self-regulatory body for the .au domain space. As part of their function, they develop and implement domain name policy.
According to the domain name policy, “.com.au” domain names must either be an exact match, abbreviation or acronym of the registrant’s name or trade mark or otherwise closely and substantially connected to the registrant.
It is noted that auDA’s Domain Monetisation Policy, allows people to register domain names for monetisation purposes (including for re-sale or to receive advertising revenue) under the close and substantial connection rule.
However, the Domain Monetisation Policy is not without conditions, and if auDA determines that a registrant has breached any condition, then the domain name will be deleted.
If you are successful in having a domain name deleted, that the domain name will once again be available for registration. However, there is no guarantee that you will be able to successfully register the domain name before another third party does so.
- File a claim under the UDRP
The Uniform Domain Name Dispute Resolution Policy (UDRP) is an independent and international dispute resolution panel that adjudicates on domain name disputes.
Anyone who has a trade mark or “service mark” can bring a UDRP application. The UDRP complaint is filed with the World Intellectual Property Organization (WIPO). Once a complaint is filed, the disputed domain name is “locked” so that the domain name will not be transferred to another registrant during the UDRP proceedings.
Decisions are made by the Administrative Panel following written submissions by both parties.
A successful complaint will see the disputed domain name be transferred to the complainant.
A UDRP application does not prevent either party from submitting the dispute to a Court of competent jurisdiction for independent resolution. It is possible for a party to commence proceedings in Court before an administrative proceeding is commenced, or after the administrative proceeding is concluded if it is not satisfied with the outcome.
Unlike Court determined proceedings, the Administrative Panel cannot award money judgments nor lawyers’ costs.
- File a claim in Court
If you are seeking more than a simple transfer or cancellation of the domain name, you need to go to court to obtain Court Orders. For example, if you are of the view that the other party will continue to infringe your rights, a Court can grant an injunction to stop the repeated future infringement.
A Court can also award financial damages for any financial loss suffered as a result of the way in which the infringing domain name was used.
- Negotiate to purchase the domain name from the third party
In order to guarantee a transfer of the domain name to you, you could reach a commercial agreement with the third party to “purchase” the licence to use the domain name.
While an aggrieved party may not find it palatable to pay an opportunistic third party for the domain name, consideration should be given to the commercial realities, and balance the costs of making any complaint or Court application to compel the transfer of the domain name against the cost of purchasing the licence from the third party.
Once you have secured your domain name, you should take the following steps to protect your domain name:
- Register your domain name as a trade mark.
- Monitor expiration dates for your domain name registration.
- Request your domain name registrar to put in place a domain transfer or registry lock, to prevent your domain name from being deleted, transferred or modified without your permission.
- Speak to your domain name registrar for any additional layer of security available to prevent your domain name from being improperly transferred. This could be as easy as changing your domain name settings.
- Check that your information is properly recorded on the WHOIS database.
How we can help
If you have a domain name dispute or any trade mark or intellectual property related queries, please contact Juliana Ng on jng@mtpartners.com.au
Juliana is experienced in intellectual property matters including domain name disputes, trade mark registration applications, trade mark infringement related issues and misleading or deceptive conduct and passing off claims.
Juliana holds a Master of Laws from the University of New South Wales, specialising in Innovation Law (IP) and Media and Technology Law.
