Trade Mark News & Information

Trademark Lawyers Australia – The evolving world of domain names

The options for registering domain names are continually expanding and there is a suite of tools for resolving disputes.

The release of new global top level domains (gTLDs) is now well underway and it is expected this program will add over 1,000 new domains. Details can be found on the Internet Corporation for Assigned Names and Numbers (ICANN) website at http://newgtlds.icann.org/en/ . The delegated domains include generic terms such as .accountants, .builders, .cafe, .christmas, .clothing, .company, .dentist, .fashion, .florist, .legal, .melbourne, .money, .pharmacy, .physio, .restaurant, .sydney and .university, as well as brand names such as .cba, .commbank, .netbank, .bond, .latrobe, .monash, and .seek. One of the more controversial has been .sucks.

Obviously, it is impracticable to register important brands in each new domain, so businesses need to settle upon a strategy for dealing with this evolving landscape. Registration with the Trademark Clearinghouse as discussed further below is a good defensive strategy.

The options for resolving domain name disputes essentially depend on whether the offending domain name ends in country code top level domain (ccTLD) such as .au, or whether it ends with a .com, .net, .org or one of the other new global top level domains (gTLD).

If the dispute cannot be resolved through negotiation (which typically involves some payment to recover the offending domain name), then it will be necessary to utilise one or more of the processes discussed below.

Trademark Clearinghouse

The Trademark Clearinghouse permits a trade mark owner to file details of their trade mark and be notified of new gTLDs so that they can register a corresponding domain name ahead of the public (in the so called ‘sunrise periods’ which are at least 30 days). The trade mark owner is also notified if another party proceeds with an application to register a domain name that reflects a trade mark already in the Clearinghouse, so that the trade mark owner can take appropriate action immediately.

The basic fee is US$150 per trade mark per year, so it can be a cost effective procedure for protecting trade marks of critical importance. Further details can be found on the Trademark Clearinghouse website at http://www.trademark-clearinghouse.com/ .

UDRP and auDRP

The Uniform Dispute Resolution Policy (UDRP) administered by ICANN is available for disputes involving gTLDs and further information is available on the ICANN website at https://www.icann.org/resources/pages/help/dndr/udrp-en

The .au Dispute Resolution Policy (auDRP) is available for disputes involving .asn.au, .com.au, .edu.au, .id.au, .net.au and .org.au ccTLDs and further information is available on the .au Domain Administration Ltd (auDA) website at http://www.auda.org.au/policies/audrp/

The only remedies under the auDRP and UDRP are the cancellation of the offending domain name or the transfer of it to the Complainant.

The success rate for Complainants under the UDRP and auDRP is quite high (around 80 -90%).

Under the UDRP the Complainant has to prove three elements:

  1. The offending domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
  2. The domain name holder has no rights or legitimate interests in respect of the offending domain name; and
  3. The offending domain name has been registered and is being used in bad faith.

The elements under the auDRP are similar to the UDRP, with the main differences being:

  1. In addition to trade mark rights, a complaint may be brought if the offending domain name is identical or confusingly similar to the Complainant’s personal name, or a company, business or other legal or trading name;
  2. It is only necessary to prove registration or use in bad faith;
  3. Bad faith does not require a pattern of conduct, only that the offending domain name was registered to prevent the trademark owner from reflecting its mark in a corresponding domain name;
  4. Bad faith can also be established where the offending domain name is in breach of a warranty made in the initial application and did not meet one of the eligibility requirements.

Uniform Rapid Suspension

The Uniform Rapid Suspension (URS) procedure is an extension of the UDRP, but is only applicable to domain names ending with one of the new gTLDS and further information is available on the ICANN website at http://newgtlds.icann.org/en/applicants/urs .

The only available remedy is temporary suspension of an offending domain name for the remainder of the registration period (which may be extended by the Complainant for a further one year). A successful outcome does not permit transfer or cancellation of the domain name. It is intended to be a cheaper and quicker procedure than the UDRP, but there is provision for appeals which can potentially delay a result and add to the overall cost.

While the elements which need to be proven by the Complainant are similar to that under the UDRP, there are three important differences:

  1. The Complainant can only rely on an identical or confusingly similar word mark;
  2. The Complainant must file clear and convincing evidence to satisfy each element such that there is no genuine issue of material fact as to any of these elements, whereas under the UDRP the Complainant only needs to prove each element by a preponderance of the evidence; and
  3. There are some additional defences to an allegation of bad faith.

 

Please contact Selfmark if you have any questions or would like further, specific information or advice to deal with a domain name issue.