Australian domain name law [1 ed.] 9780455231068, 0455231060

Citation preview

Australian Domain Name Law

Thomson Reuters (Professional) Australia Limited 19 Harris Street Pyrmont NSW 2009 Tel: (02) 8587 7000 Fax: (02) 8587 7100 [email protected] http://legal.thomsonreuters.com.au For all customer inquiries please ring 1300 304 195 (for calls within Australia only) INTERNATIONAL AGENTS & DISTRIBUTORS NORTH AMERICA Thomson Reuters Eagan United States of America

ASIA PACIFIC Thomson Reuters Sydney Australia

LATIN AMERICA Thomson Reuters São Paulo Brazil

EUROPE Thomson Reuters London United Kingdom

Australian Domain Name Law

ALPANA ROY BA (Soc Sci) (UTS), LLB (Hons) (Syd), MA (Journalism) (UTS), DipLegPrac (College of Law), PhD (Syd), GCHETL (UTS)

Associate Professor, School of Law, Western Sydney University Solicitor and Barrister of the Supreme Court of NSW and the High Court of Australia Accredited Mediator

FIRST EDITION

LAWBOOK CO. 2016

Published in Sydney by Thomson Reuters (Professional) Australia Limited ABN 64 058 914 668 19 Harris Street, Pyrmont, NSW National Library of Australia Cataloguing-in-Publication entry Roy, Alpana Australian domain name law / Alpana Roy Includes index. ISBN: 9780455231068 (paperback) Internet domain names--Law and legislation--Australia. Dispute resolution (Law)--Australia. 346.940488

© 2016 Thomson Reuters (Professional) Australia Limited This publication is copyright. Other than for the purposes of and subject to the conditions prescribed under the Copyright Act 1968, no part of it may in any form or by any means (electronic, mechanical, microcopying, photocopying, recording or otherwise) be reproduced, stored in a retrieval system or transmitted without prior written permission. Inquiries should be addressed to the publishers. Product Editor: Lalitha Vyamajala Product Developer: Beatrice Marett-Bird Publisher: Anne Murphy Printed by Ligare Pty Ltd, Riverwood, NSW This book has been printed on paper certified by the Programme for the Endorsement of Forest Certification (PEFC). PEFC is committed to sustainable forest management through third party forest certification of responsibly managed forests. For more info: http:// www.pefc.org

Preface While this is the first monograph on Australian domain name law, it must be emphasised that domain name law is a vast and rapidly-evolving area of law and while I have attempted to be comprehensive in my coverage, there are important topics in this relatively new area of law that I have excluded. First, while this book discusses numerous Uniform Domain Name Dispute Resolution Policy (UDRP) decisions, it does not comprehensively deal with domain name decisions under the international regime. The reason for this is elaborated in Chapter 1 of this work. Secondly, this book does not deal with domain name cases decided in Australian courts as they have usually been well-covered in Australian intellectual property books and other literature. Instead, this book exhaustively deals with Australian domain name decisions decided under the .au Dispute Resolution Policy (auDRP) as it is under this regime that the majority of Australian domain name disputes are decided. Domain name law is an extraordinarily fast-pace area of the law. Nevertheless, I have endeavoured as far as possible to keep this work current to 9 May 2016. Alpana Roy Sydney, May 2016

Publisher’s Note The author wishes to thank the following for permission to reproduce materials: .au Domain Administration Ltd (auDA) Internet Corporation for Assigned Names and Numbers (ICANN) World Intellectual Property Organization Thomson Reuters would like to thank the anonymous reviewer for their helpful and constructive comments on chapters of this work.

vi

Table of Contents Preface ....................................................................................................................... v Table of Cases and Domain Name Decisions ......................................................... ix Glossary .............................................................................................................. xxvii 1. Australian Domain Name Law: Overview ....................................................... 1 2. .au Dispute Resolution Policy (auDRP) ......................................................... 13 3. Rules for .au Dispute Resolution Policy (auDRP Rules) ............................. 33 4. Identical or Confusingly Similar .au Domain Names .................................. 55 5. Rights or Legitimate Interests in .au Domain Names ................................ 103 6. Bad Faith Registrations or Subsequent Use of .au Domain Names ......... 161 Appendix 1: .au Dispute Resolution Policy (auDRP) ......................................... 207 Appendix 2: Schedule B – Rules for .au Dispute Resolution Policy (auDRP Rules) ............................................................................................................. 215 Appendix 3: Domain Name Eligibility and Allocation Policy Rules for Open 2LDS .............................................................................................................. 227 Appendix 4: Uniform Domain Name Dispute Resolution Policy ....................... 235 Appendix 5: Rules for Uniform Domain Name Dispute Resolution Policy ...... 241 Index ...................................................................................................................... 253

Table of Cases and Domain Name Decisions A A&G Insurance Services Pty Ltd v Tiana Smith WIPO Case No DAU2012-0013 .............................................................................................. 4.200 A & F Trademark Inc, Abercrombie & Fitch Stores Inc, and Abercrombie & Fitch Trading Co Inc v Chad Nestor WIPO Case No D2003-0260 ................................................................................................... 4.240 AAT Australian Adventure Tours Pty Ltd v Wade John t/as Top End Escapes CIArb Case No 07/01 .......................................................................... 6.60 AB Svenska Spel v Andrey Zacharov WIPO Case No D2003-0527 ..................... 4.150 ADHD Australia Inc v ADDults with ADHD (NSW) Inc LEADR Case No auDRP05/07 ........................................................................... 6.10, 6.90, 6.110 AGL Energy Ltd v Leon Palamara WIPO Case No DAU2011-0033 .................... 4.200 ALDI Stores v Peter Gerard Colless WIPO Case No DAU2012-0032 .................. 6.110 AOT Group Ltd v Park Ward House Pty Ltd / Geoffrey Ballard WIPO Case No DAU2011-0018 ..................................................................... 4.200, 5.210 ATB Engineering Pty Ltd ACN 073 445 280 v Jacqst Trading Pty Ltd ACN 167 839 278 t/as Megatilt Heavy Haulage LEADR Case No auDRP10/14 ................................................................................................... 3.130 AW Faber-Castell (Aust) Pty Ltd v Pen City Pty Ltd/Atf Diblasi Jones Unit Trust WIPO Case No DAU2013-0018 ........................................... 4.60, 4.240 Aastra Telecom Inc v Spring Mountain Enterprises Pty Ltd WIPO Case No DAU2008-0003 ............................................................................... 4.80, 5.160 Abel Concepts (Aust) Pty Ltd v Wooldridge Holdings Pty Ltd LEADR Case No auDRP03/15 ....................................................................................... 5.10 Adjudicate Today Pty Ltd v The Institute of Arbitrators and Mediators WIPO Case No DAU2012-0033 ............................... 4.10, 4.20, 4.120, 4.190, 5.10 Adjustit Pty Ltd v Autointegrity Pty Ltd LEADR Case No auDRP15/06 .............. 5.140 Adultshop.com Pty Ltd v Josh Marsden, Importa Pty Ltd WIPO Case No DAU2015-0002 ........................................................................................ 6.140 Advanced Book Exchange Inc v Argyle Emporium WIPO Case No DAU2003-0004 .............................................................................................. 6.110 Advanced Medical Institute Pty Ltd v World Wide Internet Services (Aust) Pty Ltd IAMA Case No 3021 ............................................................... 6.230 Alcoholics Anonymous World Services Inc v Lauren Raymond ICANN Case No D2000-0007 ....................................................................................... 5.60 Alibaba Group Holding Ltd v Teresa Bostle WIPO Case No DAU2014-0041 ................................................................................................ 6.10 Alibaba Group Holding Ltd v Yifeng Tan WIPO Case No DAU2014-0029 .............................................................................................. 3.130 Allianz Australia Insurance Ltd and Allianz Australia Ltd v Throne Ventures Pty Ltd WIPO Case No DAU2010-0012 ............................................ 5.80 Allmedic Pty Ltd v AJ Dixon Pty Ltd LEADR Case No auDRP05/09 .................. 6.150 Aloha Pools Pty Ltd v Palatial Pools & Spas Pty Ltd WIPO Case No DAU2014-0033 .............................................................................................. 3.130 American Future Technology Corp v Rex Hall WIPO Case No DAU2009-0007 .............................................................................................. 5.310 Amsec Enterprises L C v Sharon McCall (WIPO D2001-0083) ............................. 4.80 ix

Australian Domain Name Law

Anadarko Petroleum Corp v Alan Meltzer WIPO Case No DAU2014-0020 .............................................................................................. 3.130 Andrea Chick (nee Carr) v Countrynet Software Pty Ltd ABN 53 054 880 312 LEADR Case No auDRP05/15 ......................................................... 5.230 Ansell Healthcare Products Inc v Australian Therapeutics Supplies Pty Ltd WIPO Case No D2001-0110 .................................................................... 4.210 Apollo Window Blinds Pty Ltd v J Firriolo and V Firriolo IAMA 3657 ............... 4.210 Arcadia Group Brands Ltd t/as Topshop, Top Shop/Top Man Ltd t/as Topshop v Andrew Cooper, Topshop Holdings Pty Ltd WIPO Case No DAU2015-0026 ........................................................................................ 4.150 Arena Entertainment Pty Ltd v Alex Haddad LEADR Case No auDRP05/05 ........................................................................................ 5.310, 6.120 Arizona Golf Properties Inc v Mr Dean Benigno dba Realty Executives WIPO Case No D2003-0571 .......................................................................... 5.120 Arla Foods Amba v William Wong WIPO Case No DAU2016-0007 ................... 3.130 Arla Foods Amba v Graytech Hosting Pty Ltd ABN 49106229476, Elizabeth Rose WIPO Case No DAU2016-0001 ............................................... 6.60 Arthur Guinness Son & Co (Dublin) Ltd v Dejan Macesic WIPO Case No D2000-1698 .................................................................................. 4.190, 4.210 Aruba Networks Inc v Hedloc Pty Ltd / Technical Manager WIPO Case No DAU2014-0023 ........................................................................................ 3.130 Asahi Group Holdings Ltd v David Whittle WIPO Case No DAU2014-0024 .............................................................................................. 3.130 Asos Plc v Ceravolo Premium Wines Pty Ltd WIPO Case No DAU2012-0016 ................................................................................................ 4.90 Aspen Grove Inc v Aspen Grove WIPO Case No D2001-0798 .............................. 4.50 Asset Housing Pty Ltd v Kitome Pty Ltd CIArb 06/01 ......................................... 5.230 Aston Martin Lagonda Ltd v Frenbray Pty Ltd LEADR Case No auDRP09/06 ................................................................................................... 5.160 Australian Broadcasting Corp v Mark Ross-Smith LEADR Case No auDRP-04/07 .................................................................................................. 5.210 Australian Drivers Rights Assn v Australian Dust Removalists Assn IAMA Case No 2351 ...................................................................................... 3.130 Australian Government Department of Education, Science and Training v Blogger Pty Ltd IAMA Case No 3058 ............................................... 5.140, 5.290 Australian Trade Commission v Matthew Reader WIPO Case No DAU2002-0786 ................................................................................................ 4.80 Automobili Lamborghini Holding SpA v Rose Bay Automotive Pty Ltd WIPO Case No DAU2014-0026 ..................................................................... 3.130 Autronic Automotive Controls Pty Ltd v Air Power Systems Pty Ltd LEADR Case No auDRP02/07 ....................................................................... 5.290 Avid Life Media Inc v Melody Carstairs WIPO Case No DAU2011-0001 ....................................................................................... 4.50, 4.60

B BAB Inc v Eighty Business Names WIPO Case No D2010-0478 .......................... 6.200 BGC Partners Inc, BGC Partners LP, BGC Partners (Australia) Pty Ltd v Dean McCarthy, BGC Trading Pty Ltd WIPO Case No DAU2015-0012 .............................................................................................. 6.170 BM Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1976) 51 ALJR 363; 12 ALR 363 .................................................................................. 5.130 BORGES SA, TANIO SAU v James English WIPO Case No D2007-0477 ................................................................................................... 4.250 BT Financial Group Pty Ltd v Basketball Times Pty Ltd WIPO Case No DAU2004-0001 ............................................................... 4.170, 4.250, 5.290, 6.50 BWT Brands Inc and British Am. Tobacco (Brands) Inc v NABR WIPO Case No D2001-1480 ..................................................................................... 4.160 x

Table of Cases and Domain Name Decisions

Banco Espírito Santo SA v Bancovic WIPO Case No D2004-0890 ...................... 5.120 Bank of Alabama v Sumith Rodrigo & Co WIPO Case No D2004-0912 ............ 6.240 Banque Pictet & Cie SA v Alan Meltzer WIPO Case No DAU2015-0017 ............ 6.150 Barclays Bank PLC v Mr. Mohammed Hassan WIPO Case No D2001-0253 ................................................................................................... 4.190 Barnes & Noble College Bookstores Inc v Language Direct WIPO Case No D2003-0142 ............................................................................................. 4.200 Bathox Australia Pty Ltd v Haresh Bhojwani WIPO Case No DAU2011-0040 ................................................................................................ 6.20 Bayerische Motoren Werke AG v bmwcar. com WIPO Case No D2002-0615 ................................................................................................... 4.170 Bayerische Motoren Werke AG v Publishing Australia Pty Ltd, ACN 120 531 982, Mr. Nicholas Crawshay WIPO Case No DAU2011-0024 ................ 4.200 Bayerische Motoren Werke AG v Gregory James Talifero WIPO Case No DAU2011-0009 ............................................................................... 4.200, 6.20 Beachbody LLC v Benson Linda Michelle WIPO Case No DAU2014-0002 ................................................................................................ 5.60 Beachbody LLC v Pan, Wei Hong WIPO Case No DAU2013-0020 .......... 4.200, 5.170 Beijing Pernot Ricard Winery Co Ltd v Capital Enterprises Group Inc ICANN Case No AF-0177 ................................................................................ 5.60 Belupo dd v WACHEM doo WIPO Case No D2004-0110 ........................... 5.20, 5.30 Bennett Coleman & Co Ltd v Steven S Lalwani WIPO Case No D2000-0014 ..................................................................................................... 4.20 Benyamin Federman v LivinWireless, Simon Mochkin and Eli Feiglin WIPO Case No DAU2010-0016 ..................................................................... 5.310 Bernard Janes v LJ Bubenicek & AJ Main, A&L Technologies WIPO Case No DAU2010-0014 ............................................................ 5.70, 5.110, 6.220 Bettina Liano and Bettina Liano Pty Ltd v Khanh Kim Huynh WIPO Case No D2000-0891 ............................................................................ 2.110, 4.60 Bianjade Enterprises Pty Ltd v Leigh Michael Connelly WIPO Case No DAU2003-0003 ................................................................................................ 5.50 Birchbox Inc v Nabil Sabet WIPO Case No DAU2012-0035 ...................... 4.170, 6.10 Blue Sky Software Corp v Digital Sierra Inc WIPO Case No D2000-0165 ................................................................................................... 4.160 BlueChip InfoTech Pty Ltd v Jan and Blue Chip Software Development Pty Ltd LEADR Case No 06/03 ...................................................................... 4.210 Blueline Hygienics Pty Ltd v I Like It Pty Ltd LEADR Case No auDRP02/14 ................................................................................................... 6.150 Blurb Inc v Rethink IT Pty Ltd WIPO Case No DAU2009-0008 ........................... 5.90 Borges SA, Tanio SAU v James English WIPO Case No D2007-0477 .................. 4.250 Bose Corp and Bose Pty Ltd v AAA 01 Center Ws Ds Ltd LEADR Case No auDRP04/13 ............................................................................................... 5.10 Bouygues v Chengzhang, Lu Ciagao WIPO Case No D2007-1325 ...................... 6.120 Bridgestone Firestone Inc, Bridgestone/Firestone Research Inc, and Bridgestone Corp v Jack Myers WIPO Case No D2000-0190 ......................... 5.140 Brilliance Publishing Inc v My Brilliance Pty Ltd / Ceinwen Schneider WIPO Case No DAU2013-0007 .................... 4.40, 4.70, 4.190, 4.200, 5.30, 5.230 British Heart Foundation v Harold A Meyer III eResolution Case No AF0957 ............................................................................................................. 4.70 British Telecommunications Plc & Ors v One in a Million Ltd & Ors [1999] 1 WLR 903 .......................................................................................... 6.140 Brivis Climate Systems Pty Ltd v The Trustee for the Ferreri Family Trust / Dynamic Services HVAC&R Pty Ltd WIPO Case No DAU2014-0025 .............................................................................................. 3.130

xi

Australian Domain Name Law

C CELLEX-C International Inc v Jaye Pharmacy and Absolute Cellex C WIPO Case No D2003-0423 ............................................................................ 5.80 Cairns Airport Pty Ltd v Chris Ford (Christopher William Ford) / C and C Family Discretionary Trust WIPO Case No DAU2013-0023 ......................... 5.50 Calvin Klein Trademark Trust and Calvin Klein Inc, The v Yangjae Kim (t/as Primary Blue) LEADR Case No auDRP08/08 ......................................... 6.110 Cambridge Nutritional Foods Ltd and Cambridge Manufacturing Co Ltd v Cambridge Diet Pty Ltd WIPO Case No DAU2010-0021 .... 4.70, 4.250, 6.80 Camper Trailers WA Pty Ltd v Off Road Equipment Pty Ltd LEADR Case No auDRP06/04 ............................................................... 4.170, 4.180, 6.120 Carrier Air Conditioning Pty Ltd as the holding company of Brivis Australia Pty Ltd v The Trustee for the Ferreri Family Trust t/as Dynamic Services HVAC & R LEADR Case No auDRP02/10 ........................ 5.310 Cartier International AG v Blogger Pty Ltd, Publishing Australia WIPO Case No DAU2013-0037 ..................................................................... 4.180, 5.310 Cash Converters Pty Ltd v Casheez Pty Ltd WIPO Case No DAU2011-0029 .............................................................................................. 5.170 Cash Converters Pty Ltd v Casshies Investments Pty Ltd WIPO Case No DAU2013-0040 ................................................................................................ 2.30 Cash Converters Pty Ltd v The Trustee For The Capital Finance Trust WIPO Case No DAU2015-0006 ..................................................................... 6.220 Chief Architect Inc v Nigel Varley / CAD Australia Pty Ltd WIPO Case No DAU2011-0004 ........................................................................................ 4.180 Christine Schrammek Kosmetik GmbH & Co KG v Advanced Laser Therapy Clinics Australia Pty Ltd WIPO Case No DAU2014-0034 ................ 3.130 Clarins v Local Produce Australia Pty Ltd WIPO Case No DAU2015-0036 .............................................................................................. 4.170 Clark Equipment Co v AllJap Machinery Pty Ltd WIPO Case No DAU2011-0042 ........................................................................ 4.190, 5.160, 5.300 Clark Equipment Co v R & R Equipment Pty Ltd WIPO Case No DAU2012-0011 ............................................................................ 5.60, 5.160, 6.10 Clear Vision Laser Clinic v Laser Sight Centres Australasia Pty Ltd IAMA Case No 3160 ........................................................................................ 5.30 Clinic Care Pty Ltd v Emma Redgate Payne (also known as Emma Johnson) WIPO Case No DAU2011-0027 ...................................................... 5.230 Cobb International Ltd v Cobb Australia & New Zealand (Pty) Ltd WIPO Case No DAU2013-0005 ............................. 4.170, 5.10, 5.30, 5.170, 6.240 Cognito Software Ltd v Rethink IT Pty Ltd WIPO Case No DAU2009-0011 .............................................................................................. 5.230 Colmar Brunton Pty Ltd v Alta Computer Systems Pty Ltd LEADR Case No auDRP18/10 ............................................................................................. 5.230 Columbia Insurance Co v The Chefs Toolbox Pty Ltd WIPO Case No DAU2014-0005 ................................................................................................ 5.60 Comerica Inc v Horoshiy Inc WIPO Case No D2004-0615 ................................. 6.160 Compagnie Générale des Etablissements Michelin v Thomas Panagiotopoulos WIPO Case No DAU2013-0011 .............. 4.80, 4.200, 5.10, 5.50, 5.120, 6.50 Compagnie Générale des Etablissements Michelin v Transure Enterprise Ltd, Host Master / Above. com Domain Privacy WIPO Case No D2012-0045 ..................................................................................................... 4.80 Compass Capital Partners Pty Ltd v Nationwide Appliance Repairs LEADR Case No auDRP12/15 ....................................................................... 3.130 Confo Pty Ltd v Meridian Project Consulting Pty Ltd LEADR Case No auDRP05/11 ................................................................................................... 4.180 Confo Pty Ltd v Meridian Project Consulting Pty Ltd LEADR Case No auDRP20/10 .......................................................................................... 5.80, 5.310 xii

Table of Cases and Domain Name Decisions

Conquest Sports (Aust) Pty Ltd v Converse & Co LEADR Case No auDRP12/10 ................................................................................................... 6.200 Constable Care Child Safety Foundation Inc v The Big Bamboo Production Co Pty Ltd WIPO Case No DAU2013-0001 ...................... 5.120, 5.210 Corporate Mobile Recycling Ltd v Mazuma Mobile Pty Ltd WIPO Case No DAU2011-0034 ............................................................................... 4.40, 5.310 Croatia Airlines dd v Modern Empire Internet Ltd WIPO Case No D2003-0455 ............................................................................................ 5.20, 5.30 Crosby Furnishings Pty Ltd v Diablo-Group Pty Ltd WIPO Case No DAU2011-0013 ..................................................................................... 4.80, 5.210 Crown in Right of the State of Tasmania t/as “Tourism Tasmania”, The v Gordon James Craven WIPO Case No DAU2003-0001 ........ 4.180, 4.190, 4.200, 4.210, 5.230 CruiseMart Pty Ltd v Debretts Travel Services LEADR Case No auDRP06/12 ................................................................................................... 5.270 Curtain Communications Pty Ltd v Leann Webb WIPO Case No DAU2008-0022 .............................................................................................. 5.240 Custom Building Products Inc v Stone Age (NSW) Pty Ltd WIPO Case No DAU2011-0014 .................................................................... 5.160, 5.170, 6.80

D Danfoss A/S v Coldwell Banker Burnet et al WIPO Case No DBIZ2001-00020 ............................................................................................. 4.60 Databank Technologies Pty Ltd v Tape Management Services Pty Ltd IAMA Case No 3124 ........................................................................................ 6.60 David Harry Birch and Judith Alison Birch t/as Aussie Soap Supplies v Yvonne Tracey Cowell t/as Aussie Soap Supply LEADR Case No auDRP22/10 ............................................................................... 4.240, 6.20, 6.150 De Beers UK Limited v Scott van Iperen WIPO Case No DAU2016-0004 .............................................................................................. 6.150 Debbie Morgan Macao Commercial Offshore Ltd, Missguided Ltd v Samir Vora WIPO Case No DAU2013-0024 ............................... 4.250, 5.250, 6.50 Dematic Pty Ltd v Jacqueline Mary Johnson t/as Colby Systems Southern LEADR Case No auDRP01/14 .......................................................... 5.60 Deutsche Lufthansa AG v Office Links Pty Ltd, Wang Degui WIPO Case No DAU2009-0005 ........................................................................................ 6.110 Deutsche Telekom AG v foxQ WIPO Case No D2004-0102 ............................... 4.190 Digital Vision Ltd v Advanced Chemill Systems WIPO Case No D2001-0827 ................................................................................................... 4.150 Do The Hustle LLC v Tropic Web WIPO Case No D2000-0624 ................ 4.110, 5.40 Document Technologies Inc v International Electronic Communications Inc WIPO Case No D2000-0270 .................................................... 5.30, 5.60, 5.70 Dorset Council v Damian von Samorzewski LEADR Case No auDRP 04/15 .............................................................................................................. 5.230 Doteasy Technology Inc v M Makras and EA Nahed dba Dot Easy Australia WIPO Case No DAU2006-0011 ............................................. 4.40, 5.120 Dr. Ing. h.c. F. Porsche AG v Ron Anderson WIPO Case No D2004-0312 ................................................................................................... 5.160 Dr Jeremy Hunt t/as Sydney Skin Institute v Edward Mishricky t/as Visage Clinic LEADR Case No auDRP 12/12 ................................................. 3.130 Drugstore.com Inc v NurhulChee / Robert Murry WIPO Case No D2008-0230 ................................................................................................... 4.190

E EAuto LLC v EAuto Parts WIPO Case No D2000-0096 ..................................... 4.190 xiii

Australian Domain Name Law

EAuto LLC v Triple S. Auto Parts dba Kung Fu Yea Enterprises Inc WIPO Case No D2000-0047 .......................................................................... 5.230 ECrush.com Inc v Cox, Davis & Simpson LLC et al WIPO Case No D2004-0552 ................................................................................................... 4.240 EFG Nominees Pty Ltd v Lenland Property Development Pty Ltd IAMA Case No 3658 ...................................................................................... 4.210, 6.150 ESPN Inc v IMCO Corp Pty Ltd WIPO Case No DAU2005-0005 ...................... 5.310 ESat Communications Pty Ltd v Kingford Promotions Pty Ltd LEADR Case No 03/03 ................................................................................................ 5.130 Easy Heat Inc v Shelter Products WIPO Case No D2001-0344 ........................... 5.160 Ebay Inc v Ebay4sex.com and Tony Caranci WIPO Case No D2000-1632 ................................................................................................... 6.110 Ecohort Pty Ltd v Earth Repair and Restoration Pty Ltd LEADR Case No auDRP09/07 ............................................................................................. 6.150 Educational Testing Service v Netkorea Co ICANN Case No D2000-0087 ..................................................................................................... 5.60 Elite Licensing Co SA v Michael Francis t/as Elite Model Management Australia WIPO Case No DAU2015-0007 ...................................................... 6.150 Ella’s Kitchen Group Ltd, Ella’s Kitchen (Brands) Ltd, Ella’s Kitchen (IP) Ltd v Nourish Foods Pty Ltd WIPO Case No DAU2011-0036 ..... 5.160, 5.170, 6.80 Emirates v Shellball Pty Ltd (in liq) ABN 44 055 035 839 LEADR Case No auDRP08/14 ............................................................................................. 3.130 Emirates, Emirates Group v Bluecom Consulting Group Pty Ltd WIPO Case No DAU2008-0004 ....................................................................... 4.80, 5.230 Energy Source Inc v Your Energy Source NAF Case No FA 96364 ....................... 4.160 Environics Pty Ltd v Connectus Pty Ltd LEADR Case No auDRP03/09 ..... 4.90, 5.230 Esat Communications Pty Ltd v Kingford Promotions Pty Ltd LEADR Case No 03/2003 ............................................................................................ 4.170 Europay International SA v Eurocard.com Inc, EuroCard.org and Chad Folkening ICANN Case No D2000-0173 ......................................................... 5.60 Exotiq Properties Ltd v David Smart WIPO Case No D2009-1672 ....................... 5.10

F F Hoffmann-La Roche AG v MFS Holdings WIPO Case No D2010-0307 ................................................................................................... 6.200 FDNY Fire Safety Education Fund Inc and New York City Police Foundation Inc v Great Lakes Coins %27 Collectibles WIPO Case No D2001-1445 ............................................................................................... 5.80 FJ Westcott Co v Samuel Leo Klein / Image Melbourne Pty Ltd WIPO Case No DAU2014-0037 ................................................................................ 5.160 Facebook Inc v Callverse Pty Ltd WIPO Case No DAU2008-0007 ............ 4.90, 4.190, 4.260, 5.210 Fast Enterprises Pty Ltd v Gifts for Girls Pty Ltd LEADR Case No auDRP06/05 ................................................................................................... 6.170 Federation Tuck Pointing (WA) Pty Ltd ACN 079 825 291 v Brick and Mortar Restorations Pty Ltd ACN 602 844 682 LEADR Case No auDRP06/15 ................................................................................................... 6.150 Firemex Pty Ltd v Datateq Pty Ltd LEADR Case No auDRP09/09 ........................ 5.80 First Alliance Pty Ltd v Bengamen David Hall IAMA Case No 5017 ..................... 4.10 Fiskars Corp v Domenic Carosa, Domain Folio 1 Pty Ltd WIPO Case No DAU2015-0025 ............................................................................. 6.150, 6.220 FragranceX.com Inc v Admin Manager, Gee Media Pty Ltd WIPO Case No DAU2015-0005 .......................................................................................... 5.30 Francesco Totti v Jello Master WIPO Case No D2002-0134 ................................. 6.50 FreeTV Australia Ltd v Domain Services Pty Ltd LEADR Case No auDRP13/06 ................................................................................................... 6.120 xiv

Table of Cases and Domain Name Decisions

Freelife International Holdings LLC and Freelife International Australia Pty Ltd v Wealth Creators Australia Ltd, Corey Allan Sievers and Linda May Barker LEADR Case No auDRP03/08 .......................................... 6.140

G GE Capital Finance Australasia Pty v Dental Financial Services Pty Ltd WIPO Case No DAU2004-0007 ............................................................ 4.50, 5.290 GM Holden Ltd v Bradley John Lawless WIPO Case No DAU2010-0010 .............................................................................................. 6.120 GM Holden Ltd v Publishing Australia Pty Ltd WIPO Case No DAU2011-0002 ................................................................................... 4.200, 5.160 GP Technology Solutions (NSW) Pty Ltd v Genisys Group Pty Ltd (formerly Profusion Media Pty Ltd) LEADR Case No auDRP04/10 ............... 6.210 Galvin Green AB, Tomas Nilsson v John Waugh, Buffalo Technology Solutions Pty Ltd WIPO Case No DAU2010-0011 ......................................... 5.290 Gassen Diamonds BV v Van Etten Bernardus Joacbus ICANN Case No AF-0149a; AF-0149b ........................................................................................ 5.60 General Electric Co v CPIC NET and Hussain Syed WIPO Case No D2001-0087 ................................................................................................... 4.240 General Television Pty Ltd v Laszlo Till LEADR Case No auDRP08/09 .... 4.60, 5.210, 6.10 Genuine Benefits Pty Ltd v Mr Justin Hankinson LEADR Case No auDRP08/06 .......................................................................................... 5.50, 6.120 Gerd Petrik v Johnny Carpela WIPO Case No D2004-1043 ..................... 5.160, 6.140 Get Away Today.Com Inc v Warren Gilbert WIPO Case No DCO2010-0021 .............................................................................................. 6.170 Giorgio Armani SpA v Essential Mall Pty Ltd WIPO Case No DAU2011-0011 ................................................................................... 4.200, 5.160 Glimmer Body Art, LLC v Renee Chidiac WIPO Case No DAU2013-0021 .............................................................................................. 5.140 GlobalCenter Pty Ltd v Global Domain Hosting Pty Ltd WIPO Case No DAU2002-0001 ................................ 4.40, 4.160, 4.170, 4.200, 4.240, 5.20, 6.170 Gloria Jean’s Coffees Holdings Pty Ltd v Jeremy Paul Cleaver WIPO Case No DAU2007-0006 ................................................................................ 6.220 Goodreads LLC Amazon Technologies Inc v BDB Soti Pty Ltd WIPO Case No DAU2016-0012 .................................................................................. 5.30 Goldline International Inc v Gold Line WIPO Case No D2000-1151 .................. 6.200 Google Inc v Dmitri Rytsk WIPO Case No DAU2007-0004 .......... 4.240, 6.150, 6.220 Google Inc v Jan Jeltes WIPO Case No DAU2008-0012 ........................... 4.240, 5.140 Google Inc v Mohammad Jabbari WIPO Case No DIR2005-0001 ...................... 6.160 Google Inc v Q Interactive Pty Ltd / Mr Victor Quinteros WIPO Case No DAU2012-0026 ........................................................................................ 4.200 Grace Garrett Design Pty Ltd v Levitt Consulting Pty Ltd LEADR Case No auDRP06/14 ............................................................................................. 3.130 Graphisoft Australia v CAD Australia Pty Ltd CIArb Case No 05/01 .................. 5.230 Grundfos A/S v Texas International Property Associates WIPO Case No D2007-1448 ........................................................................................ 6.120, 6.170 Guccio Gucci SpA v Bravia Stoli WIPO Case No D2009-1170 ............................ 4.240 Guinness Son & Co (Dublin) Ltd v Dejan Macesic WIPO Case No D2000-1698 ................................................................................................... 4.170

H H-D USA LLC v Queensland Performance Pty Ltd aka Shadex Industries P/L WIPO Case No DAU2014-0038 ............................................... 6.140 HCOA Pty Ltd, Molescan Australia Pty Ltd v The Trustee for the Terantica Trust / Terry Lockitch WIPO Case No DAU2013-0003 .................. 5.210 xv

Australian Domain Name Law

Hall & Wilcox Lawyers v Mookstar Media Pty Ltd ACN 038 167 293 WIPO Case No DAU2014-0040 ....................................................................... 4.60 Harness Racing Australia v Acronym Wiki Pty Ltd WIPO Case No DAU2011-0007 .............................................................................................. 4.250 Hayward Industries Inc v WebQuest.com Inc WIPO Case No D2009-1493 ................................................................................................... 6.200 Heavenly Holidays LLC v Mark One Visual Promotions Pty Ltd WIPO Case No DAU2013-0028 ................................................................................ 5.170 Hertz Systems Inc v Throne Ventures Pty Ltd WIPO Case No DAU2009-0013 .............................................................................................. 5.120 Home Director Inc v HomeDirector WIPO Case No D2000-0111 ........................ 6.50 Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre (1978) 140 CLR 216 ....................................................... 6.140 Horwitz Publications Pty Ltd v Majella Gai Gall LEADR Case No auDRP10/06 ................................................................................................... 5.310 Houghton Mifflin Co v The Weathermen Inc WIPO Case No D2001-0211 ................................................................................................... 5.160 Housing Industry Association Ltd v Housing Internet Access LEADR Case No auDRP12/05 ..................................................................................... 5.210 Howard Jarvis Taxpayers Association v Paul McCauley WIPO Case No D2004-0014 ................................................................................................... 5.140 Hutchinson Wines v Amphora Wine Group Pty Ltd, William Howard WIPO Case No DAU2011-0008 ....................................................................... 4.40 Hytorc South Pacific Pty Ltd v Byron Howell IAMA Case No 2865 ......... 6.120, 6.150

I I2 Technologies Inc v Richard Alexander Smith WIPO Case No D2001-0164 ................................................................................................... 4.240 IVF Sunshine Coast Pty Ltd v Fertility Solutions Sunshine Coast Pty Ltd IAMA Case No 3167 ........................................................................................ 5.30 Ideation Unlimited Inc v Dan Myers WIPO Case No D2008-1441 ...................... 4.250 Imperial College v Christophe Dessimoz (WIPO D2004-0322) .............................. 4.80 Inbound Telecommunications Pty Ltd, Phonename Marketing Australia Pty Ltd v 1300 Directory Pty Ltd, Demetrio Padilla WIPO Case No DAU2009-0018 .......................................................................... 4.140, 5.290, 6.60 InfoMedia Services Ltd v Mr Drew Alexander Weeks LEADR Case No auDRP03/06 ................................................................................................... 6.220 Informa Australia Pty Ltd v Equipment Research Group Pty Ltd LEADR Case No auDRP23/10 ............................................................................ 4.80, 6.140 Informa Australia Pty Ltd v Reed Business Information Pty Ltd LEADR Case No auDRP02/09 .......................................................................... 4.240, 6.210 Institute of Arbitrators & Mediators Australia (IAMA), The v Adjudicate Today Pty Ltd WIPO Case No DAU2012-0021 ................... 4.90, 5.130 Insure & Go Insurance Services Ltd v CoverDirect Pty Ltd WIPO Case No DAU2008-0019 ............................................................................. 5.210, 6.220 Inter-Continental Hotel Corp v Khaled Ali Soussi ICANN Case No D2000-0252 ..................................................................................................... 5.60 International Business Machines Corp v Investment Backed Mortgages Ltd WIPO Case No DAU2007-0009 ...................................................... 5.80, 6.220 International Driver Training Inc v Web Integrations LLC and Comedy Driving Inc WIPO Case No D2009-0129 ........................................................ 4.250 International Hospitality Management-IHM SpA v Enrico Callegari Ecostudio WIPO Case No D2002-0683 ............................................................ 5.30 Iogen Corp v IOGEN WIPO Case No D2003-0544 ............................................ 4.150

xvi

Table of Cases and Domain Name Decisions

J J2 Global Communications Inc v Ideas Plus Inc WIPO Case No D2005-0792 ................................................................................................... 4.250 JJ Davies & Sons Pty Ltd v Australian Felt Specialists Pty Ltd IAMA Case No 2864 ................................................................................................. 3.130 JMVB EnterprisesPty Ltd v Roxanne Melloway LEADR Case No auDRP16/10 ........................................................................................ 5.160, 5.170 Jacuzzi Inc v Jacuzzi Pty Ltd WIPO Case No DAU2005-0003 ............................... 6.20 Jacuzzi Inc v Jacuzzi Unit Trust WIPO Case No DAU2005-0002 .......................... 6.20 Jacuzzi Inc v Wangra Pty Ltd WIPO Case No DAU2005-0001 ............................ 5.300 Jaguar Land Rover Ltd v Downshire Motors (Service) Pty Ltd WIPO Case No DAU2015-0039 ................................................................................ 6.150 Jaguar Land Rover Ltd v Greg Brown, Acheeva Business Solutions Pty Ltd WIPO Case No DAU2015-0008 ................................................................. 5.60 Jaguar Land Rover Ltd v Techno International Pty Ltd WIPO Case No DAU2015-0027 .............................................................................................. 5.160 Japan Airlines Co Ltd v TransHost Associates, JAL Systems and John A Lettelleir WIPO Case No D2000-0573 ........................................................... 5.130 Jarpich Investments Pty Ltd (and its subsidiary Aspire Solar Pty Ltd) v Ivanka Joanne Klaric LEADR Case No auDRP13/12 ........................................ 4.10 Jean Heitz v Ghidella, Rosalia WIPO Case No DAU2011-0023 .......................... 4.240 John Brigden v Andom Pty Ltd LEADR Case No auDRP13/05 ........................... 4.180 John Hayes v Vaughan Enterprises WIPO Case No D2004-0531 ........................ 5.120 Jupitermedia Corp and Australia.Internet.com Pty Ltd v Spotpress Pty Ltd t/as Internet Printing WIPO Case No DAU2003-0005 ..................... 4.60, 5.230 Jupiters Ltd v Aaron Hall WIPO Case No D2000-0574 ........................................ 6.10 Just Car Insurance Agency Pty Ltd v Throne Ventures Pty Ltd WIPO Case No DAU2008-0015 ..................................................................... 4.200, 4.210 Just Magazines Pty Ltd v Computerised Automotive Reporting Service Pty Ltd LEADR Case No auDRP04/05 ........................................................... 4.140

K KJ Aldridge Investments Pty Ltd v Aldridge Electrical Industries Pty Ltd LEADR Case No auDRP04/12 .............................................................. 4.120, 5.10 Kathleen Chan v Todd Raumer LEADR Case No auDRP10/15 ........................... 3.130 Kelly’s Distributors Pty Ltd v Rybu Pty Ltd LEADR Case No auDRP11/10 ................................................................................................... 4.240 Ken Done, Ken Done & Associates Pty Ltd, and Ken Done Down Under Pty Ltd v Ted Gibson eResolution Case No AF-0638 ........................................ 4.60 Kirkland & Ellis LLP v DefaultData.com, American Distribution Systems Inc WIPO Case No D2004-0136 ....................................................... 5.140 Koninklijke Philips Elecs NV v In Seo Kim WIPO Case No D2001-1195 ............ 4.160 Kristallglasfrabrik Spiegelau GmbH v Spiegelau Australia Pty Ltd LEADR Case No auDRP07/06 ............................................................ 5.160, 5.170 Kronopol Sp. z o.o v Lamwood Products (1990) Ltd, Levana Schwartz WIPO Case No D2007-1596 .......................................................................... 5.120

L LJ Hooker Corp Ltd v ASHI Pty Ltd LEADR Case No auDRP05/14 ................... 6.150 L’Oréal v Wen Tao WIPO Case No D2012-0521 .................................................. 4.80 L’Oréal / L’Oréal Australia Pty v Namewise Pty Ltd / Nicholas Bolton WIPO Case No DAU2013-0009 ........................... 4.80, 4.200, 5.120, 5.210, 6.170 L’Oréal v Domain Park Ltd WIPO Case No D2008-0072 ................................... 6.120 L’Oréal SA v Private Registrations Aktien Gesellschaft, Domain Admin WIPO Case No D2012-0780 ............................................................................ 4.80 xvii

Australian Domain Name Law

Lance John Picton v KK Factory Seconds Online / Dean James Mackin WIPO Case No DAU2007-0005 ....................................................................... 5.50 Leaders Computers Pty Ltd v Australian Flourish Pty Ltd LEADR Case No auDRP05/12 ............................................................................................. 4.200 Li-Chu (Linda) Stokes v Jonathan Bahr LEADR Case No auDRP02/11 .............. 4.240 Liposonix Inc v Robert Fam, Cosmedix Pty Ltd WIPO Case No DAU2015-0019 .............................................................................................. 6.110 Lucas Film Entertainment Company Ltd LLC v Moxomo Pty Ltd WIPO Case No DAU2014-0012 ................................................................................ 3.130 Lullaby Conceptions Pty Ltd v Neverscope Pty Ltd IAMA Case No 3064 ............................................................................................................... 5.110 Lusomundo – Sociedade Gestora de Parcipaçoes Sociais SA and Lusomundo Audiovisuais SA v InmoSoria and Andres Ceballos Moscoso WIPO Case No D2000-0523 ........................................................... 6.110 Lyons Partnership LP and HIT Entertainment PLC v NetSphere Inc WIPO Case No D2004-0118 .......................................................................... 4.190 Lytro Inc v Drift Alliance Pty Ltd WIPO Case No DAU2014-0019 ..................... 3.130

M M2 Telecommunications Group Ltd v Arun Varma LEADR Case No auDRP11/07 ................................................................................................... 6.110 MADRID 2012 SA v Scott Martin-MadridMan Websites WIPO Case No D2003-0598 ............................................................................................. 4.150 MGM Home Entertainment and others v McIlroy Group Management Pty Ltd WIPO Case No DAU2003-0006 ......................................................... 5.130 MVisible Technologies Inc v Navigation Catalyst Systems Inc WIPO Case No D2007-1141 .......................................................................... 6.120, 6.200 MC Enterprises v Mark Segal (Namegiant.com) WIPO Case No D2005-1270 ..................................................................................................... 6.30 Macquarie Group Ltd v McQuarie Group Pty Ltd / Roland Storti WIPO Case No DAU2012-0028 ................................................................................ 4.240 Madonna Ciccone pka Madonna v Dan Parisi and “Madonna.com” WIPO Case No D2000-0847 ........................................................ 5.70, 5.80, 5.110 Magnamail Pty Ltd v Domain Admin, PrivacyProtect.org ID#10760, Luis Vicente Rodrigues, Grupo JBS SA WIPO Case No D2011-2037 .............. 6.160 Magnum Piering Inc v The Mudjackers and Garwood S Wilson Sr WIPO Case No D2000-1525 ............................................................... 4.160, 5.160 Mandarin Oriental Services BV v Control Alt Delete WIPO Case No D2000-1671 ................................................................................................... 6.220 MapQuest.com Inc v William Scully Power and MapQuest Australia WIPO Case No DAU2006-0016 ..................................................................... 5.210 Mark Kingsley Williams v Bbhinds Pty Ltd WIPO Case No DAU2013-0010 ....................................................................................... 5.60, 6.60 Mark Livesey QC and The New South Wales Bar Assn v Derek Minus and Dispute Resolution Associates Pty Ltd WIPO Case No DAU2014-0011 .............................................................................................. 3.130 Marketstorm Australia Pty Ltd v ACN 140 859 892 Pty Ltd (t/as Recoup Debt Recovery) WIPO Case No DAU2011-0026 ................................. 5.10 Marks & Spencer Plc & Ors v One in a Million Ltd & Ors [1998] FSR 265 ................................................................................................................. 6.140 Marshmallow Skins Inc v Piipiinoo Australia Pty Ltd WIPO Case No DAU2013-0015 .......................................................................... 4.40, 5.250, 6.120 Mass Nutrition Inc and Todd Rosenfeld v Mass Nutrition Pty Ltd now known as Tweed Holdings, Luke McNally WIPO Case No DAU2010-0002 ............................................................................ 4.40, 4.70, 4.260 Mayne Pharma International Pty Ltd v Namewise Pty Ltd WIPO Case No DAU2012-0001 ........................................................................................ 4.180 xviii

Table of Cases and Domain Name Decisions

Mecu Limited v OZ8 Pty Ltd WIPO Case No DAU2016-0003 ........................... 3.130 Media General Communications Inc.v Rarenames, Webreg WIPO Case No D2006-0964 ............................................................................................. 6.120 Melway Publishing Pty Ltd v Fopoco Pty Ltd t/as Melways Advertising WIPO Case No DAU2006-0005 ..................................................................... 5.310 Messages on Hold Australia Pty Ltd v Media Group Pty Ltd LEADR Case No auDRP01/13 ..................................................................................... 5.230 Messages on Hold Australia Pty Ltd v Media Group Pty Ltd LEADR Case No auDRP14/14 ..................................................................................... 6.150 Michael Sweep v Douglas Berry WIPO Case No DAU2012-0008 ...... 4.10, 5.30, 5.80, 5.290 Microsoft Corp v Mike Rushton WIPO Case No D2004-0123 ............................ 4.110 Migration Solutions Pty Ltd v Han Chung Lee t/as Australasia Migration Solutions LEADR Case No auDRP02/06 ....................................... 5.100 Mobile Communication Service Inc v WebReg, RN, supra; Centron GmbH v Michele Dinoia WIPO Case No D2006-0915 ................................... 6.120 Mobile Communication Service Inc v WebReg RN WIPO Case No D2005-1304 ................................................................................................... 6.120 Momondo A/S v Green Eye Evolvement Pty Ltd WIPO Case No DAU2013-0035 .............................................................................................. 5.210 Morrocanoil Israel Ltd v Clare Bella Ayumi Kim and Marcelo Lacerda Schoon LEADR Case No auDRP10/12 ........................................................... 6.220 Mothercare Plc and Mothercare UK Ltd v Arthur Jason Bobrow LEADR Case No auDRP01/10 ....................................................................... 4.260 Mr Price Group Ltd v Peter Duncan WIPO Case No DAU2013-0034 ................. 3.130 Mr Tim (Hatem) Shatim v Dr Douglas Ralph Morris LEADR Case No auDRP01/03 ..................................................................................................... 2.30 Mrsupplement Australia Pty Ltd and Mrsupplement.com.au Pty Ltd v Tony Hatzeandreou WIPO Case No DAU2012-0018 .......................... 5.120, 5.310 Mucos Emulsions GmbH and Marlyn Nutraceuticals Inc v Esex.org and Kim Taeho WIPO Case No D2000-1513 .......................................................... 4.60 Multi-National Concepts Pty Ltd v 1300 Directory Pty Ltd WIPO Case No DAU2009-0002 ........................................................................................ 4.140 My Brilliance Pty Ltd v Amazon Corporate Services Pty Ltd WIPO Case No DAU2014-0018 .......................................................................................... 5.10

N NFL Properties Inc et al v Rusty Rahe WIPO Case No D2000-0128 .......... 2.110, 4.60 Napoleon Perdis Cosmetics Pty Ltd v Rebecca Jones WIPO Case No DAU2006-0014 .............................................................................................. 6.220 National Association for Stock Car Auto Racing Inc v Racing Connection / The Racin’ Connection Inc WIPO Case No D2007-1524 ................................................................................................... 5.160 National Collegiate Athletic Association v Dusty Brown WIPO Case No D2004-0491 ................................................................................................... 5.330 National Dial A Word Registry Pty Ltd and others v 1300 Directory Pty Ltd WIPO Case No DAU2008-0021 ............................................................... 2.110 National Hockey League And Lemieux Group Lp v Domain For Sale WIPO Case No D2001-1185 ................................................................... 4.60, 6.50 National Office for the Information Economy v Verisign Australia Ltd LEADR Case No auDRP02/03 ............................................................ 6.140, 6.150 Navico Australia Pty Ltd v Quin Marine Pty Ltd WIPO Case No DAU2009-0004 ................................................................................... 5.160, 5.170 Nehos Communications Pty Ltd v The trustee for the Penrose & Godfrey Family Trust LEADR Case No auDRP10/11 ..................................... 4.180 Nemetschek North America Inc, OzCAD Pty Ltd v CAD Australia Pty Ltd WIPO Case No DAU2008-0014 ............................................................... 5.290 xix

Australian Domain Name Law

NetRatings Australia Pty Ltd v APT Strategies Pty Ltd LEADR Case No auDRP02/05 ................................................................................................... 4.180 NetStar Australia Pty Ltd v James Nyunt WIPO Case No DAU2007-0011 .............................................................................................. 4.200 Nikon Inc and Nikon Corp v Technilab Inc WIPO Case No D2000-1774 ........................................................................................ 5.160, 6.170 Nirvana LLC v Darren Marc Wilcox WIPO Case No DAU2014-0031 ................ 3.130 Nokia Corp v Nokia Ringtones & Logos Hotline WIPO Case No D2001-1101 ................................................................................................... 6.140 Nokia Corp v Nokiagirls.com aka IBCC WIPO Case No D2000-0102 .... 4.160, 4.200 Novus Credit Services v Personal WIPO Case No D2000-1158 ............................. 6.50

O OAMPS Insurance Brokers Ltd v Risk Mitigation Solutions Ltd (formerly OAMPS Credit Ltd) LEADR Case No auDRP07/12 ....................... 4.200 Objective Ware Pty Ltd v Select Software Telecommunications Pty Ltd IAMA Case No 2757 ............................................................................. 4.190, 6.50 Oki Data Americas Inc v ASD Inc WIPO Case No D2001-0903 .......................... 5.160 13 TAXI (Australia) Pty Ltd v Black Cabs Combined Pty Ltd LEADR Case No auDRP08/14 ..................................................................................... 4.140 1SaleADay LLC and Benyamin Federman v LivinWireless, Simon Mochkin and Eli Feiglin WIPO Case No DAU2010-0016 ............ 4.40, 4.70, 4.190 Overture Services Inc v Overture Search WIPO Case No DAU2004-0002 ................................................................................................ 5.90 Ozefax Pty Ltd v OzMedia Pty Ltd LEADR Case No auDRP06/10 .......... 4.260, 5.290

P PA Consulting Services Pty Ltd v Joseph Barrington-Lew WIPO Case No DAU2003-0002 ..................................................................................... 5.80, 6.110 PARROT v Binh An Nguyen WIPO Case No DAU2011-0016 ............................. 4.200 PFD Food Services Pty Ltd v Terence Bergagna LEADR Case No auDRP11/06 ................................................................................................... 5.270 PS Business Pty Ltd t/as Property Secrets v Wealth Dynamics International Pty Ltd CIArb Case No 07/02 ...................................................... 5.80 Peacock Media Group Pty Ltd v Darrell Wilson LEADR Case No auDRP02/12 ........................................................................................ 4.260, 5.290 Pelican Products Inc v Terri Curyer WIPO Case No DAU2011-0021 ......... 4.190, 6.20 Penelope Blair v Choice 4U Pty Ltd LEADR Case No auDRP03/11 ......... 4.240, 5.320 Penguin Books Ltd v The Katz Family and Anthony Katz ICANN Case No D2000-0204 ............................................................................................... 5.60 Penske System Inc v M Akkaoui aka Moe Akkaoui WIPO Case No DAU2014-0017 .............................................................................................. 3.130 People Telecom Ltd v Kenneath Laming LEADR Case No auDRP02/04 ............... 5.60 Pepper Australia Pty Ltd v Massive Networks Pty Ltd, Scott Julian WIPO Case No DAU2012-0007 ..................................................................... 5.290 PepsiCo Inc v Charlie Chang, supra; Merrill Lynch & Co Inc v Andrew Miller WIPO Case No D2008-1496 ................................................................ 6.200 PepsiCo Inc v Diabetes Home Care Inc and DHC Services WIPO Case No D2001-0174 ............................................................................................. 4.200 Perpetual Ltd v Perpetual Financial Solutions Pty Ltd LEADR Case No auDRP11/08 ................................................................................................... 5.210 Perpetual Ltd v Perpetual Home Loans Pty Ltd WIPO Case No DAU2009-0009 ................................................................................................ 5.80 Pharmalink Pty Ltd v Ian Simpson McDermott LEADR Case No auDRP10/09 ..................................................................................................... 5.80 Philip Morris Inc v Alex Tsypkin WIPO Case No D2002-0946 ........................... 5.160 xx

Table of Cases and Domain Name Decisions

Pickles Auctions Pty Ltd v Complete Hire Pty Ltd WIPO Case No DAU2012-0005 ............................................................. 4.150, 6.150, 6.170, 6.200 Premier Fire Protection Services (NSW) Pty Ltd and Premier Fire Services (NSW) Pty Ltd v Nixon Safety Pty Ltd LEADR Case No auDRP07/05 ..................................................................................................... 5.90 Princess Yachts International Plc v Graham Stephens LEADR Case No auDRP08/07 ..................................................................................................... 5.90 Private Real Estate Pty Ltd v Chris Papas IAMA Case No 3665 ............................ 6.20 ProCare Health Pty Ltd v Procare Consulting Pty Ltd LEADR Case No auDRP11/15 ................................................................................................... 3.130 Productreview.com.au Pty Ltd v Jobsearch Business Systems Pty Ltd IAMA Case No 3763 ...................................................................................... 5.230 Produits Berger v Lay Tee Ong WIPO Case No DAU2004-0008 .................. 5.20, 5.60 Prom Night Events v YourFormal Pty Ltd / Your Formal Australia Pty Ltd WIPO Case No D2011-1707 .................................................................... 5.250 Provisio Technologies Pty Ltd v Brenden Thomas Rolley LEADR Case No auDRP13/10 ............................................................................................. 6.110 Proxxon SA v Woodworking Machinery Specialists Pty Ltd WIPO Case No DAU2009-0017 ........................................................................................ 5.160

Q QSoft Consulting Ltd v BSP WIPO Case No DAU2009-0003 ............................. 5.210 Queensland Electricity Transmission Corp Ltd v The Trustee for Gamm Family Trust LEADR Case No auDRP11/11 ..................................................... 4.90 Questionmark Computing Ltd v Question Mark Solutions Pty Ltd WIPO Case No DAU2015-0038 ..................................................................... 6.150 Quizno’s Australia Pty Ltd v Paul Rodgerson t/as Liquid Lan LEADR Case No auDRP05/04 ....................................................................................... 5.60

R RT Quaife Engineering Ltd and Autotech Sport Tuning Corp dba Quaife America v Bill Luton WIPO Case No D2000-1201 ......................................... 5.160 Rainbow Play Systems Inc v Freeplay Pty Ltd WIPO Case No DAU2015-0035 .............................................................................................. 4.170 Rainbow Sandals Inc v Malua Point Holdings Pty Ltd, Anthony Brown / Malua Point Holdings Pty Ltd aka Malua Point Merchants WIPO Case No DAU2013-0014 ................................................................................ 5.170 Ralph Anderl v Yang Xia / Krause Adrian Scott WIPO Case No DAU2013-0008 ............................................................................ 4.170, 5.40, 5.60 Red Bull GmbH v Esia Pty Ltd / Brian Newman WIPO Case No DAU2012-0029 .............................................................................................. 4.190 Red Bull GmbH v Callaghan & Callaghan LEADR Case No auDRP06/11 ........................................................................................ 4.200, 5.210 Regional Publishers Pty Ltd v Australianews.com.au Pty Ltd LEADR Case No auDRP03/10 ..................................................................................... 5.270 Research in Motion Ltd v TechWorks Pty Ltd WIPO Case No DAU2013-0016 .............................................................................................. 5.210 RigCool Australia Pty Ltd v Optima Solutions UK Ltd, Kevin Mathieson WIPO Case No DAU2010-0006 ....................................................................... 6.20 Roku Inc v It’s So Easy Pty Ltd / Sharyn Webber WIPO Case No DAU2013-0004 .............................................................................................. 4.150 Rolex Watch USA Inc v Vadim Krivitsky WIPO Case No D2008-0396 ............... 6.160 Ronson Plc v Unimetal Sanayai ve Tic.A.S. ICANN Case No D2000-0011 ..................................................................................................... 5.60 xxi

Australian Domain Name Law

Royal Bank of Scotland Group plc, National Westminster Bank plc AKA NatWest Bank, The v Personal and Pedro Lopez WIPO Case No D2003-0166 ................................................................................................... 5.140

S SAP AG v Reffael Caspi WIPO Case No D2009-0060 ......................................... 4.200 Sambazon Inc v Christopher Andrew Norden WIPO Case No DAU2015-0031 .............................................................................................. 3.100 SanDisk Corp v ITBOX Pty Ltd WIPO Case No DAU2006-0009 ....................... 5.160 Scholastic Inc v Applied Software Solutions Inc WIPO Case No D2000-1629 ................................................................................................... 5.230 Screwfix Direct Ltd v Brian Perry WIPO Case No DAU2010-0019 .......... 4.210, 5.310 ScriptLogic Corp v Scriptlogic Pacific Pty Ltd WIPO Case No DAU2008-0009 ................................................................................................ 5.80 Seek Ltd v Arazac Nominees Pty Ltd WIPO Case No DAU2006-0010 ................ 4.200 Seek Ltd v Independent Mortgage Brokers Pty Ltd WIPO Case No DAU2006-0012 ................................................................................................ 5.50 SeekAmerica Networks Inc v Tariq Masood WIPO Case No D2000-0131 ..................................................................................................... 4.20 SellBuyYourself Pty Ltd v Westpoint Real Estate Pty Ltd LEADR Case No auDRP10/05 ............................................................................................. 4.180 Sephora & Sephora USA Inc v Atomic Group (Australia) Pty Ltd LEADR Case No auDRP13/14 ....................................................................... 3.130 Serta Inc v Charles Dawson WIPO Case No D2008-1474 ................................... 6.170 Shane Keith Warne v Sure Thing Services Pty Ltd LEADR Case No auDRP08/10 .......................................................................................... 4.110, 5.40 Sharp Corporation of Australia Pty Ltd v Sharp Computing Services Pty Ltd LEADR Case No auDRP11/09 .......................................................... 6.10, 6.20 Shigeki Kanao v JW Roberts Co CPR 0109 ......................................................... 5.160 Silpro Pty Ltd v Corey De Silva t/as Silva Service Spit Roast Catering WIPO Case No DAU2008-0013 .......................................................... 4.200, 5.120 SingTel Optus Pty v Xnet WIPO Case No D2004-0734 ....................................... 5.160 Sitecore Australia Pty Ltd v WB Solutions Pty Ltd LEADR Case No auDRP10/08 .......................................................................................... 4.60, 6.110 Skattedirektoratet v Eivind Nag WIPO Case No D2000-1314 .................... 4.80, 5.140 Skyrail Pty Ltd v William Albert Birch and Denise Lesley IAMA Case No 2959 ......................................................................................................... 6.150 Smart Voucher Ltd t/as Ukash v Chowdhury, MD Abu Russel and Sydney Business & Technology Group Pty Ltd WIPO Case No DAU2013-0006 .................................... 3.30, 4.20, 4.40, 4.170, 4.180, 5.60, 6.140 Société Air France v Vladimir Federov WIPO Case No D2003-0639 ..................... 6.30 South African Football Association (SAFA), The v Fairfield Tours (Pty) Ltd WIPO Case No D2009-0998 .................................................................... 6.240 Spanton Media Group Pty Ltd v Lion Global Pty Ltd WIPO Cases Nos DAU2007-0007 and DAU2007-0008 ............................................................... 6.20 Spencer Douglass MGA v Absolute Bonding Corp WIPO Case No D2001-0904 ..................................................................................................... 4.50 Stanley Works and Stanley Logistics Inc, The v Camp Creek Co Inc WIPO Case No D2000-0113 .......................................................................... 4.160 Start Corporation Pty Ltd v Daniel Purser t/as Startcorp (Aust) LEADR Case No auDRP11/05 ..................................................................................... 3.130 Statoil ASA v Creative Domain Pty Ltd / Christine K Hoyer WIPO Case No DAU2013-0012 ............................................................................. 4.180, 6.120 Stephens Valuation and Consultancy Pty Ltd v SLR Consulting Australia Pty Ltd WIPO Case No DAU2013-0026 ................................................ 4.240, 5.50 Sterling Marine Pty Ltd v Etolin Pty Ltd LEADR Case No auDRP03/13 ...... 6.70, 6.80 xxii

Table of Cases and Domain Name Decisions

Sterling Marine Pty Ltd v The Trustee for the Costa Family Trust LEADR Case No auDRP02/13 ................................................. 4.170, 4.180, 5.170 Stores Ltd v Mr David John Singh WIPO Case No D2001-0763 ......................... 5.140 Sunbeam Corp Ltd and Sunbeam Products Inc d/b/a Jarden Consumer Solutions v Rabbit Tracks Pty Limited WIPO Case No DAU2016-0005 .............................................................................................. 3.130 Sungen International Ltd v DCF X Solar Systems Pty Ltd WIPO Case No DAU2011-0035 ............................................................................. 5.140, 6.240 Supre Pty Ltd v Paul King WIPO Case No DAU2004-0006 ................................... 5.60 Swarovski Aktiengesellschaft AG v Paul Giles dba Banjos bead house WIPO Case No DAU2008-0001 ....................................................................... 5.40 Sweeps Vacuum & Repair Center Inc v Nett Corp WIPO Case No D2001-0031 ................................................................................................... 4.250 Swinburne University of Technology v Swinner aka Benjamin Robert Goodfellow WIPO Case No DAU2004-0003 .................................................... 4.90 Sydney, City of v Weide Marosy Corp Pty Ltd LEADR Case No auDRP14/06 ................................................................................................... 3.130

T T Rowe Price Associates Inc v J A Rich WIPO Case No D2001-1044 .................... 5.90 TMP Worldwide Inc v Jennifer L Potter WIPO Case No D2000-0536 ................. 5.140 Taser International Inc v Tasty Pty Ltd / David Serrano WIPO Case No DAU2013-0013 .............................................................................................. 5.210 TeamViewer GmbH v Nigel Burke WIPO Case No DAU2012-0027 .......... 4.40, 5.210 Technosystems Consolidated Corp, Invention Submission Corp t/as Invent Help v Hugh Godman, Royal Computer Pty Ltd WIPO Case No DAU2007-0001 ............................................................................... 4.210, 5.80 Tekla Corp v Tekla Project Management / Trango Towers Pty Ltd WIPO Case No DAU2014-0009 ................................................................................ 3.130 Telstra Corp v Nuclear Marshmallows WIPO Case No D2000-0003 .................... 6.50 Telstra Corp Ltd v CQ Media Group Pty Ltd WIPO Case No DAU2008-0023 ................................................................................... 4.190, 6.110 Telstra Corp Ltd v David John Singh WIPO Case No D2002-0260 ..................... 4.190 Telstra Corp Ltd v India Yellow Pages WIPO Case No D2002-0651 ..................... 5.80 Telstra Corp Ltd v Mikhail Doubinski and Yury Sharafutdinov t/as AAA Marketing World WIPO Case No DAU2006-0008 .............................. 4.240, 5.310 Telstra Corp Ltd v Mr Andy Kang WIPO Case No D2002-0832 ......................... 6.110 Telstra Corp Ltd v Nuclear Marshmallows WIPO Case No D2000-0003 ........... 4.170, 6.10, 6.160, 6.170 Telstra Corp Ltd v Ozurls WIPO Case No D2001-0046 ...................................... 4.210 Telstra Corp Ltd v Peter Lombardo, Marino Sussich and Ray Landers WIPO Case No D2000-1511 .......................................................................... 4.190 Telstra Corp Ltd v The Directors / Blogger Pty Ltd WIPO Case No DAU2008-0005 .............................................................................................. 5.310 Telstra Corp Ltd v kids,m-a-i-l.com 987654321 WIPO Case No D2003-0169 ................................................................................................... 4.240 Terex Corp v Peter McIntyre, Cashmere Holdings Pty Ltd WIPO Case No DAU2010-0004 .......................................................................................... 5.40 Teva Pharmaceutical Industries Ltd v Apex Domain Pty Ltd WIPO Case No DAU2014-0001 .......................................................................................... 5.60 ThinkGeek Inc v Michael Andrew Lubieniecki WIPO Case No DAU2011-0003 .............................................................................................. 4.180 Thompsons, Kelly & Lewis Pty Ltd t/as Flowserve Pump Division Australia v DNS Advertising Pty Ltd CIArb Case No 08/01 ................... 5.80, 6.150 3M Australia Pty Ltd and 3M Co v Phillip Brumby LEADR Case No auDRP06/07 ................................................................................................... 6.140 xxiii

Australian Domain Name Law

3M Australia Pty Ltd and others v Phillip Brumby and others LEADR Case No auDRP07/07 ..................................................................................... 5.160 Tigerdirect Inc v Jim Sun, Sun’s Sons Pty Ltd WIPO Case No DAU2010-0005 .............................................................................................. 4.240 Tina Arena v Enigmatic Minds Pty Ltd LEADR Case No auDRP01/07 .... 4.190, 6.120 Tony & Monika Rahme v Paul & Sharyn White LEADR Case No auDRP06/09 ........................................................................................ 5.160, 5.170 Tooling Australia Inc v Austool Ltd (in liq) IAMA Case No 3045 ........................ 4.190 Topfield Co Ltd v Jai Kemp and Digital Products Group Pty Ltd, t/as Topfield Australia, formerly Paige Communications Pty Ltd WIPO Case No DAU2008-0002 ................................................................................ 5.160 Toyota Jidosha Kabushiki Kaisha dba Toyota Motor Corp v S&S Enterprises Ltd WIPO Case No D2000-0802 ....................................... 4.160, 4.170 Transport Workers Union of NSW and Transport Workers Union of Australia Federal Branch v National Union of Workers NSW Branch IAMA Case No 3348 ...................................................................................... 6.120 Triodos Bank NV v Ashley Dobbs WIPO Case No D2002-0776 .............. 5.140, 5.160 TrueLocal Inc, Geosign Technologies Inc and True Local Ltd v News Interactive Pty Ltd WIPO Case No DAU2006-0003 ......................................... 4.50 TrueLocal Inc, Geosign Technologies Inc and True Local Ltd v News Ltd WIPO Case No DAU2006-0004 ...................................................... 4.200, 6.20 Tumblr Inc v Chris Dutton / The trustee for Bean Media Group Trust WIPO Case No DAU2013-0017 .......................................................... 5.210, 6.210 Tyre Depot Holdings Pty Ltd v Tyre Kingdom Pty Ltd WIPO Case No DAU2014-0016 .............................................................................................. 3.130

U UEFA v Funzi Furniture WIPO Case No D2000-0710 ......................................... 4.260 UEIP Pty Ltd v Fincar Pty Ltd WIPO Case No DAU2007-0010 ........................... 6.220 UFC Gym Australia Pty Ltd v The Trustee for Moose & I Trust IAMA Case No 3712 ........................................................................................ 4.260, 5.30 US Bank National Association as trustees for the First Alert Trust v Master Distributors Unit Trust, Bradley Green WIPO Case No DAU2011-0031 .......................................................................... 5.160, 5.170, 6.80 Udemy Inc v Nguyen Tai Tan / Agape Films / Roman Rothschild WIPO Case No DAU2014-0015 ................................................................................ 3.130 Uitgeverij Crux v W Frederic Isler (WIPO D2000-0575) ....................................... 4.80 United Business Media LLC v 4 Square Media Pty Ltd WIPO Case No DAU2008-0008 .............................................................................................. 6.140 United Parcel Service of America Inc v Wesley Bryant WIPO Case No DAU2009-0012 ..................................................................................... 4.240, 5.90 Universal City Studios Inc v Burns (WIPO D2001-0784) ....................................... 4.80 Universal City Studios Inc v David Burns and Adam-12 Dot Com WIPO Case No D2001-0784 ....................................................................................... 5.30 Universal City Studios Inc v GAB Enterprises (WIPO Case D2000-0416) ..... 5.70, 5.80 University of Melbourne v Union Melb WIPO Case No DAU2004-0004 .............. 4.90

V Vacaciones eDreams SL v BuyDirect Pty Ltd WIPO Case No DAU2011-0043 .............................................................................................. 6.170 Valve Corp v ValveNET Inc, ValveNET Inc, Charles Morrin WIPO Case No D2005-0038 ............................................................................................. 4.150 Vanguard Medica Ltd v Theo McCormick ICANN Case No D2000-0067 ..................................................................................................... 5.60 Vanguard Trademark Holdings USA LLC v IP Mirror Pte Ltd / Chistovich Vyacheslav WIPO Case No DAU2015-0024 ................................. 6.220 xxiv

Table of Cases and Domain Name Decisions

Veneziano Coffee Pty Ltd v Rick Caspersen WIPO Case No DAU2012-0009 ..................................................................................... 5.160, 6.80 VeriSign Inc v VeneSign CA WIPO Case No D2000-0303 ........................... 4.110, 5.60 Verizon Trademark Services LLC v Jillian Pearce WIPO Case No DAU2014-0010 .............................................................................................. 6.220 Victoria’s Secret Stores Brand Management Inc v Linda Cameron Pickard, Linda Watson WIPO Case No DAU2012-0015 ................................. 5.300 Villeroy & Boch AG v Mario Pingerna WIPO Case No D2007-1912 ....... 6.150, 6.200 Visa Europe Ltd v Name Administration Inc (BVI) WIPO Case No D2010-1531 ..................................................................................................... 5.10 Vitacost.com Inc v Ronald Lee Bradley WIPO Case No DAU2012-0003 ........... 4.180, 5.50, 5.250 Vivendi Universal v Mr Jay David Sallen and GO247.COM Inc WIPO Case No D2001-1121 ..................................................................................... 4.160

W WOW Audio Visual Superstores Pty Ltd v Comonoz Pty Ltd WIPO Case No DAU2007-0003 ............................................................................... 4.240, 5.50 Wal-Mart Stores Inc v Walmarket Canada ICANN Case No D2000-0150 ..................................................................................................... 5.60 We Buy Any Car Ltd v Highway Auto Mart and Jason Collings WIPO Case No DAU2012-0004 ......................................................................... 4.40, 4.80 Web Profits Pty Ltd v J Batra t/as Arrow Internet Marketing LEADR Case No auDRP09/10 ..................................................................................... 4.180 WebFarm Ltd v Fopoco Pty Ltd t/as “Free Parking” WIPO Case No DAU2006-0007 ....................................................................................... 4.40, 5.50 Westralia Airports Corp Pty Ltd v Package Computers Pty Ltd LEADR Case No auDRP07/08 ....................................................................................... 5.10 Woolworths Ltd v Cracka IP Pty Ltd, Calvie Brodie WIPO Case No D2011-1574 ................................................................................................... 6.120 Woolworths Ltd v Cracka IP Pty Ltd WIPO Case No DAU2011-0028 ...... 4.20, 4.110, 4.190, 6.120 Woolworths Ltd v Save Cash Pty Ltd WIPO Case No DAU2011-0019 ............... 4.200 Woopie-Do Pty Ltd v Goodwin Reading Diagnostic Centre IAMA Case No 3714 ..................................................................................... 4.170, 5.270, 6.80 World Wrestling Federation Entertainment Inc v Rift WIPO Case No D2000-1499 ..................................................................................................... 5.70 World Wrestling Federation Entertainment Inc v Ringside Collectibles WIPO Case No D2000-1306 .......................................................................... 5.160

Y Yaffa Publishing Group Pty Ltd v Australian Panorama Photography LEADR Case No auDRP19/10 ......................................................................... 4.80 Yaffa Publishing Group Pty Ltd v CA, PD and RD Scott t/as GO BOATING Publications LEADR Case No auDRP01/08 .................................... 5.10 Yaffa Publishing Group Pty Ltd v Sporting Shooters Association of Australia (Victoria) LEADR Case No auDRP15/10 ........................................ 6.110 Yakka Pty Ltd v Mr Paul Steinberg WIPO Case No D2004-0502 ........................ 5.110 Yingli Green Energy Australia Pty Ltd v The 12 Volt Shop LEADR Case No auDRP03/14 ............................................................................................. 6.110 Yola Inc v Aaron John Peter Johnson / Aaron Johnson WIPO Case No DAU2010-0017 .............................................................................................. 4.150

xxv

Australian Domain Name Law

Z ZO Skin Health Inc v PodRepairs Pty Ltd / Brian Morris and Ulla Saynajaaho WIPO Case No DAU2012-0024 .................................................. 6.110 ZTE (Australia) Pty Ltd v Killarra 328 Consulting Pty Ltd and Ken Chan IAMA Case No 2887 ............................................................................. 3.130 Zillow Inc v Felix-Hoffman Anne-Simone WIPO Case No DAU2006-0015 ................................................................................................ 5.90 Zoopla Property Group Ltd v Media Mouse Pty Ltd WIPO Case No DAU2013-0002 ................................................................................................ 5.30

xxvi

Glossary 2LDs

Second Level Domains.

auDA auDA auDRP Overview 1.0 auDRP auDRP Rules

.au Domain Administration Ltd. auDA Overview of Panel Views on Selected auDRP Questions First Edition. .au Dispute Resolution Policy. Rules for .au Dispute Resolution Policy.

ccTLDs CIArb

country code Top-Level Domains. Chartered Institute of Arbitrators Australia.

DNS DRWG

Domain Name System. Dispute Resolution Working Group.

gTLDs

generic Top-Level Domains.

IAMA IANA ICANN

The Institute of Arbitrators & Mediators Australia. Internet Assigned Numbers Authority. Internet Corporation for Assigned Names and Numbers.

LEADR

Lawyers Engaged in Alternative Dispute Resolution.

TLDs

Top-Level Domains.

UDRP UDRP Rules

Uniform Domain Name Dispute Resolution Policy. Rules for Uniform Domain Name Dispute Resolution Policy.

WIPO WIPO Overview

World Intellectual Property Organization. WIPO Overview of WIPO Panel Views on Selected UDRP Questions.

xxvii

1

Australian Domain Name Law: Overview [1.10] Introduction....................................................................................................1 [1.20] Domain Name Basics....................................................................................5 [1.30] An Overview of the International and Australian Legal and Regulatory Framework for Internet Domain Name Disputes.............................................. 6

Introduction [1.10] The extraordinary growth in the use of the internet has created a rapidly increasing demand for domain names. Domain names are “user friendly” internet addresses which provide a shorthand way to connect to other websites online. The gradual shift of most – if not all – trading activity in technologically developed economies to the online space and the exponential rise of ecommerce has resulted in a mounting demand to register and use domain names. This in turn has led to a rising number of disputes involving the contested rights of parties to specific domain names. Not surprisingly, the increasing number of disputes has resulted in the development of legal and quasi-legal rules and institutional arrangements relating to policy-making, rule-making, and management of internet domain names. The Uniform Domain Name Dispute Resolution Policy (UDRP) provides the international legal framework for resolving domain name disputes, and applies to domain name extensions known as generic Top-Level Domains (gTLDs). Familiar gTLDs include: .com, .net, .org, .biz, .info, .aero, .asia, .cat, .coop, .jobs, .mobi, .museum, .name, .pro, .tel, and .travel.1 The uDRP also applies to all New gTLDs.2 National authorities are responsible for domain name dispute resolution involving country code Top-Level Domains (ccTLDs) – such as .au. In Australia, the relevant national authority for the administration of ccTLDs is .au Domain Administration Ltd (auDA), and the relevant national policy governing .au disputes is the .au Dispute Resolution Policy (auDRP). The auDRP came into effect on 1 August 2002.3 The auDRP is closely based on the international uDRP. The underlying aim of both the uDRP and the auDRP is to provide an alternative to litigation for the quicker and cheaper resolution of disputes between the registrant of a domain name and a party with competing rights in the domain name. Both policies have been an effective 1

2

3

For a detailed scholarly analysis of gTLDs and the application of the uDRP see David Lindsay, International Domain Name Law: ICANN and the UDRP (Hart Publishing, 2007) pp 1-128. For full details of the Internet Corporation for Assigned Names and Numbers (ICANN) New gTLD program see New Generic Top-Level Domains, ICANN, http:// www.newgtlds.icann.org. The auDRP, including auDRP Rules, is available online: https://www.auda.org.au/policies/ index-of-published-policies/2016/2016-01-au-dispute-resolution-policy-audrp/. The auDRP Rules define the way in which auDRP proceedings are administered, including procedures and timelines for lodging a complaint and filing a response. See Appendix 1 for auDRP and Appendix 2 for auDRP Rules.

2

Australian Domain Name Law

[1.10]

method for resolving disputes, and since their inception some 50,000 or so decisions have been decided under the uDRP,4 while 400 or so have been decided under the auDRP.5 Although the auDRP is based on the uDRP, there are some major differences between the policies. The key difference relates to the actual requirements for obtaining an .au domain name – .au domain names must have some connection to Australia. For example, a .com.au domain name is intended for commercial entities with an Australian connection (such as an Australian registered company, an Australian partnership, a foreign company licensed to trade in Australia, or an incorporated association and so on). The major discrepancy between the numbers of uDRP and auDRP decisions is not all that surprising given the wider jurisdictional ambit of the international uDRP policy, and also the more arduous requirements for obtaining an .au domain name. What is a little more surprising is the lack of literature and commentary on the Australian experience of the auDRP. To date, there has been several scholarly works published on the uDRP (particularly in the US) and international domain name law. In contrast, there has been very little written on the auDRP policy in Australia (and elsewhere). The aim of this monograph is to begin to fill the gap in knowledge in Australian domain name law as a unique body of developing law. The uDRP system and international domain name law has attracted significant discussion by various scholars, including Froomkin,6 Mueller,7 Geist,8 Armon,9 and Efroni.10 Criticisms of international domain name law and the uDRP have ranged from concerns about its legitimacy “as an internationally binding, compulsory legal instrument drafted by a private U.S. not-for-profit organization”;11 to the limited scope provided by the uDRP for complainants to have their defeated claims reviewed by the courts;12 to an apparent recurring 4

5 6

7 8

9

10

11

12

This figure has been based on a WIPO publication which states that the total number of uDRP decisions filed (as at 8 August 2011) is 36,443. See The Uniform Domain Name Dispute Resolution Policy and WIPO, WIPO (August 2011), p 3, available online: http://www.wipo.int/export/sites/www/amc/en/docs/wipointaudrp.pdf. See auDRP Archived Proceedings, auDA, http://www.auda.org.au/policies/audrp/archivedproceedings/. See, for example, A. Michael Froomkin, “ICANN’s ”Uniform Dispute Resolution Policy” – Causes and (Partial) Cures” (2002) 67(3) Brooklyn Law Review 605; A. Michael Froomkin, “Wrong Turn in Cyberspace: Using ICANN to Route Around the APA and the Constitution” (2000) 50 Duke Law Journal 17. See, for example, Milton L. Mueller, “Rough justice: A Statistical assessment of ICANN’s Uniform Dispute Resolution Policy” (2001) 17(3) The Information Society 153. See, for example, Michael Geist, Fair.com?: An Examination of the Allegations of Systemic Unfairness in the ICANN UDRP, 2001, available online: http://www.aix1.uottawa.ca/ ~geist/geistudrp.pdf. See, for example, Orion Armon, “Is This as Good as It Gets? An Appraisal of ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP) Three Years after Implementation” (2003) 22(1) The Review of Litigation 99. See, for example, Zohar Efroni, “Names as Domains, Names as Marks: Issues Concerning the Interface between Internet Domain Names and Trademark Rights” in Peter K. Yu (ed), Intellectual Property and Information Wealth: Issues and Practices in the Digital Age, Praeger Publishers, 2007; available online at SSRN: http://www.ssrn.com/abstract=957750. See, for example, Zohar Efroni, “Names as Domains, Names as Marks: Issues Concerning the Interface between Internet Domain Names and Trademark Rights” in Peter K. Yu (ed), Intellectual Property and Information Wealth: Issues and Practices in the Digital Age, Praeger Publishers, 2007, p 388; available online at SSRN: http://www.ssrn.com/abstract= 957750. A. Michael Froomkin, “ICANN’s “Uniform Dispute Resolution Policy” – Causes and (Partial) Cures” (2002) 67(3) Brooklyn Law Review 678-688. See also Zohar Efroni,

[1.10]

1: Australian Domain Name Law: Overview

bias towards complainants under the uDRP;13 to the inconsistencies in the application of the uDRP and the uDRP by panelists.14 Suggestions for reforming the uDRP system include the random selection of panelists and the creation of an appellate process;15 to greater transparency, mandatory three member panels, and quality control mechanisms to review performance of panelists;16 to improved procedural fairness in uDRP procedure and practice;17 to making changes in the uDRP’s procedural framework that will assist panelists in their decision-making – such as the establishment of a uDRP Review Board that would specifically identify uDRP decisions worthy of precedential value.18 Other scholars have focused on the uDRP as a model for resolving other types of online intellectual property disputes.19 There have also been scholarly works by academics such as Lindsay which provide a very detailed analysis of the structure, history and development of the uDRP, uDRP practice and procedure, and the growing body of international domain name law.20 Other more recent in-depth works by academics in this area include Lipton’s comprehensive analysis of the competing interests of domain names, trade marks, privacy and personality rights;21 and Komaitis’ consideration within a property law context of domain names as a sui generis form of an “e-property” right.22 In contrast to the growing body of literature outlined above on the uDRP and international domain name law, there has been very little written on the auDRP and Australian domain name law to date. Apart from Selby’s research on the

13

14

15 16 17 18

19

20 21 22

“Names as Domains, Names as Marks: Issues Concerning the Interface between Internet Domain Names and Trademark Rights” in Peter K. Yu (ed), Intellectual Property and Information Wealth: Issues and Practices in the Digital Age, Praeger Publishers, 2007; available online at SSRN: http://www.ssrn.com/abstract=957750. See Michael Geist, Fair.com?: An Examination of the Allegations of Systemic Unfairness in the ICANN UDRP, 2001, available online: http://www.aix1.uottawa.ca/~geist/ geistudrp.pdf; Milton L. Mueller, Rough justice: A Statistical assessment of ICANN’s Uniform Dispute Resolution Policy (2001) 17(3) The Information Society 153. See Orion Armon, “Is This as Good as It Gets? An Appraisal of ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP) Three Years after Implementation” (2003) 22(1) The Review of Litigation 122-129. See also Zohar Efroni, “Names as Domains, Names as Marks: Issues Concerning the Interface between Internet Domain Names and Trademark Rights” in Peter K. Yu (ed), Intellectual Property and Information Wealth: Issues and Practices in the Digital Age, Praeger Publishers, 2007, p 390; available online at SSRN: http://www.ssrn.com/abstract=957750; A. Michael Froomkin, “ICANN’s “Uniform Dispute Resolution Policy” – Causes and (Partial) Cures” (2002) 67(3) Brooklyn Law Review 605. Milton L. Mueller, “Rough justice: A Statistical assessment of ICANN’s Uniform Dispute Resolution Policy” (2001) 17(3) The Information Society 153. Michael Geist, Fair.com?: An Examination of the Allegations of Systemic Unfairness in the ICANN UDRP, 2001, available online: http://www.aix1.uottawa.ca/~geist/geistudrp.pdf. A. Michael Froomkin, “ICANN’s “Uniform Dispute Resolution Policy” – Causes and (Partial) Cures” (2002) 67(3) Brooklyn Law Review 713-716. Orion Armon, “Is This as Good as It Gets? An Appraisal of ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP) Three Years after Implementation” (2003) 22(1) The Review of Litigation 132-134. See Andrew Christie, “The ICANN Domain-Name Dispute Resolution System as a Model for Resolving other Intellectual Property Disputes on the Internet” (2002) 1 The Journal of World Intellectual Property, 105-117. David Lindsay, International Domain Name Law: ICANN and the UDRP (Hart Publishing, 2007). Jacqueline Lipton, Internet Domain Names, Trademarks and Free Speech (Edward Elgar Publishing, 2010). Konstantinos Komaitis, The Current State of Domain Name Regulation: domain names as second-class citizens in a mark-dominated world (Routledge, 2010).

3

4

Australian Domain Name Law

[1.10]

history of contemporary institutional design of the .au space,23 there have been few scholarly articles24 or chapters25 on auDRP decisions and policy. The academic commentary on the auDRP is typically confined to a few short paragraphs within a textbook chapter on domain names and the uDRP,26 and often is only mentioned very briefly in footnotes.27 To redress this deficiency, this monograph will focus explicitly on the Australian experience of domain name disputes under the auDRP to ensure that issues and concerns to Australian users of the system are properly addressed and not simply absorbed into the international (and particularly US) critical literature. To this end, this book will first provide an overview of domain names and the international and national regulatory frameworks for internet domain name disputes in this chapter.28 Chapter 2 and Chapter 3 set out the auDRP, and auDRP procedural rules, respectively. Chapters 4 – 6 deal with the three substantive elements that must be established in order to bring a successful complaint under the auDRP. By examining the significant decisions that have arisen under the three substantive elements, this book aims to articulate some of the emerging themes of the auDRP as a relatively new area of Australian law. The material in this book endeavours to be accurate until the end of November 2015. 23

24

25

26

27

28

Among other things, John Selby has made submissions on auDA policy reviews – with a focus on technical internet issues. See further information on Selby’s webpage: http:// www.businessandeconomics.mq.edu.au/contact_the_faculty/all_fbe_staff/selby_john. Alpana Roy provides a very detailed analysis of the first ten years of auDRP decisions (from 2002 until 2012) in “Navigating the landscape of the .au Dispute Resolution Policy as it enters its second decade” (2014) 19 Media and Arts Law Review 1. Further discussion and analyses are provided by the same author in the following articles: “Internet Domain Name Dispute Resolution in Australia” (2014) 36(8) European Intellectual Property Review 492; “Reflections on the Uniform Domain Name Dispute Resolution Policy as it enters its Second Decade” (2012) 1(1) International Journal of Technology Policy and Law 15; and ““Bad faith” and “rights or legitimate interests” under domain name law – emerging themes from the UDRP and auDRP” (co-authored with Althaf Marsoof) (2015) 20 Media and Arts Law Review 282. Mark Bender provides a general overview of the auDRP in “Domain Name Disputes involving Trademarks in Australia”, in Trademarks and Internet/Cyberspace (Amicus Books, 2010), and “What’s in a Name: Domain Name Disputes Involving Trademarks in Australia” (2007) 3(3) Monash Business Review 38. Liz Williams traces the development of internet governance in Australia in “Internet Governance in Australia: Modelling Self-Regulatory Structures in the Domain Name System” (2003)(10)(2) Murdoch University Electronic Journal of Law; available online http://www.murdoch.edu.au/elaw/ issues/v10n2/williams102.html. A chapter on Australian domain name law is provided by Alistair Payne and Ravi Mohindra, “Australia” in Torsten Bettinger (ed), Domain Name Law and Practice: An International Handbook (Oxford University Press, 2005) 57-75. See also Philip Catania, Lisa Cohn and Lucy Turner, Domain Names and Trademarks (Lawbook Co., 2001) 107-116. See, for example, Tracey Berger, Mark Davison and Annette Freeman, Shanahan’s Australian Law of Trade Marks and Passing Off (5th ed, Thomson Reuters, 2012) [115.05] – [115.3285]; Andrew Stewart et al, Intellectual Property in Australia (5th ed, LexisNexis Butterworths, 2014) pp 616-625; Eugene Clark, George Cho, Arthur Hoyle and Paul Hynes, Cyber Law in Australia (Kluwer Law International, 2010) pp 146-152; Brian Fitzgerald et al, Internet and E-commerce Law: Business and Policy (Thomson Reuters, 2011) pp 603737. The auDRP is not frequently referred to in international academic journals either, but see Warren Chik, “Lord of your domain, but master of none: the need to harmonize and recalibrate the domain name regime of ownership and control” (2008) 16(1) International Journal of Law & Information Technology 8, 29, where a short description of the auDRP is provided. See, for example, Rocque Reynolds, Natalie Stoianoff and Alpana Roy, Intellectual Property: Text and Essential Cases (5th ed, Federation Press, 2015); Robert Burrell and Michael Handler, Australian Trade Mark Law (Oxford University Press, 2010) pp 468-472. See Alpana Roy, “Navigating the landscape of the .au Dispute Resolution Policy as it enters its second decade” (2014) 19 Media and Arts Law Review 1, for further analysis of the issues discussed in this chapter. This chapter is an abridged version of that work.

[1.20]

1: Australian Domain Name Law: Overview

Domain Name Basics [1.20] The technical aspects which underpin the domain name system have been extensively considered elsewhere.29 While the focus of this monograph is not on the intricate technical issues underlying internet domain names, a brief explanation is provided below in order to understand the broader context in which the auDRP and uDRP function. Armon’s description of domain names is used for the purposes of this book: Domain names are easy-to-remember combinations of letters and numbers (for example, www.collectivemed.com) that facilitate the receipt and transmission of data over the internet. Domain names were developed in the mid-1980s to make referring to IP addresses (numerical strings like “98.37.241.30” that uniquely identify internet computers and enable internet communication) simpler and easier for human computer users. Domain names, IP addresses, and the communications protocols that manage how data is sent over the internet comprise the domain name system (DNS). The DNS is constructed as a hierarchy of top-level domains (TLDs) and sub-level domains. A “root” server sits at the top of the hierarchy, maintaining a directory of all the servers that hold top-level domain directories. These servers, in turn, catalogue domain names registered under one of the more than 200 national, or country-code, TLDs (ccTLDs), or one of the generic top-level domains (gTLDs) including .com, .net, .org, .edu, .gov, .mil, .name, .info, .biz, .pro, .coop, .museum, or .aero. The servers that hold TLD directories link to other servers that maintain sub-level domain directories. When an internet user inputs a domain name into his or her computer, a domain name server breaks the address into its top-level and sub-level constituent parts, queries server registries for the IP address associated with the domain name in question, and returns it to the user’s computer, enabling it to retrieve or transmit data accurately. Like IP addresses, domain names must be unique; otherwise, computers would be unable to accurately send and receive data over the internet. This design limitation seems trivial, because a large number of variations exist for any given term an internet user might wish to use as a domain name. However, there is no question that United Airlines finds www.united.com preferable to www.ual.com, so it is not surprising that many individuals are reluctant to settle for such variations. Therefore, the domain name registration process plays an important role in the domain name system by establishing the rules under which internet users compete for prized domain names.30

As noted above, along with TLDs and gTLDs, ccTLDs denote the national domain for each nation. As noted earlier, the ccTLD for Australia is “.au”. Other examples include “.uk” for the United Kingdom, “.in” for India, “.jp” for Japan, and “.nz” for New Zealand. Application for a domain name is made to any one of the domain name Registrars authorised by the Internet Corporation for Assigned Names and 29

30

See, for example, David Lindsay, International Domain Name Law: ICANN and the UDRP (Hart Publishing, 2007) pp 1-26; WIPO, The Management of Internet Names and Addresses: Intellectual Property Issues, Final Report of the WIPO Internet Domain Name Process http://www.wipo2.wipo.int (30 April 1999), pp 1-3, available online: http:// www.wipo.int/amc/en/processes/process1/report/index.html; ICANN, FAQs: What is the Domain Name System?, http://www.icann.org/en/about/learning/faqs. Orion Armon, “Is This as Good as It Gets? An Appraisal of ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP) Three Years after Implementation” (2003) 22(1) The Review of Litigation 101-102.

5

6

Australian Domain Name Law

[1.20]

Numbers (ICANN) to issue domain names.31 Unlike trade mark law, where the same name can be registered for different classes of goods and/or services by separate entities, each domain name must have a unique designation – just like a telephone number. The domain name law system of registration is based on a first-come first-served basis, and it is difficult to prevent another entity from registering a domain name if they were the first in time to seek registration. Significantly, unlike trade mark law, there is no assessment of the nature of the registrant’s interest in the requested domain. While “[a]n entire taxonomy” has emerged in the discourse on domain name disputes, Berger et al conveniently identify three main types of disputes.32 First, “squatters”, where an entity registers a domain name knowing that other entities with a legitimate interest may wish to register that same domain name.33 Commonly in these disputes the registrant has registered a series of domain names illegitimately, with the intention of transferring and selling the domain name to entities with a legitimate interest. These registrants are commonly also referred to as “cybersquatters”.34 Second, “parasites”, where an entity without a legitimate interest registers a domain name for the purpose of drawing internet users to that website – often by registering a very similar domain name to another domain name belonging to an entity that has a legitimate interest in the name.35 This is also commonly referred to as “typosquatting”.36 Third, “twins”, where two entities – both with legitimate interests, wish to register a particular domain name.37 While the entity to first register is likely to prevail, the entity second in time may also attempt to assert a right in the domain name given its legitimate interest in the name.38

An Overview of the International and Australian Legal and Regulatory Framework for Internet Domain Name Disputes The International Framework under the Uniform Domain Name Dispute Resolution Policy (UDRP) [1.30] The uDRP was implemented by ICANN in 1999 on the basis of recommendations made by the World Intellectual Property Organization 31 32

33 34 35 36 37 38

For details of accredited registrars, see ICANN, http://www.icann.org/en/resources/ registrars. Tracey Berger, Mark Davison and Annette Freeman, Shanahan’s Australian Law of Trade Marks and Passing Off (5th ed, Thomson Reuters, 2012), [115.555]. See also Ira S Nathenson, “Showdown at the Domain Name Corral: Property Rights and Personal Jurisdiction over Squatters, Poachers and Other Parasites” (1996-1997) 58 University of Pittsburgh Law Review 911. Tracey Berger, Mark Davison and Annette Freeman, Shanahan’s Australian Law of Trade Marks and Passing Off (5th ed, Thomson Reuters, 2012), [115.565]. See generally David Lindsay, International Domain Name Law: ICANN and the UDRP (Hart Publishing, 2007) pp 95-99. Tracey Berger, Mark Davison and Annette Freeman, Shanahan’s Australian Law of Trade Marks and Passing Off (5th ed, Thomson Reuters, 2012), [115.570]. See generally David Lindsay, International Domain Name Law: ICANN and the UDRP (Hart Publishing, 2007) pp 259-261. Tracey Berger, Mark Davison and Annette Freeman, Shanahan’s Australian Law of Trade Marks and Passing Off (5th ed, Thomson Reuters, 2012), [115.560]. Tracey Berger, Mark Davison and Annette Freeman, Shanahan’s Australian Law of Trade Marks and Passing Off (5th ed, Thomson Reuters, 2012), [115.560].

[1.30]

1: Australian Domain Name Law: Overview

(WIPO). In June 1998, WIPO undertook an international consultation to develop recommendations concerning legal issues associated with domain names, including domain name dispute resolution. WIPO’s recommendations were finalised on 30 April 1999 with the publication of a Final Report: The Management of Internet Names and Addresses: Intellectual Property Issues, Final Report of the WIPO Internet Domain Name Process http:// www.wipo2.wipo.int (30 April 1999).39 The proposals contained in the Final Report were approved by ICANN, and the uDRP was established as a dispute resolution procedure for resolving domain name disputes.40 Around the same time period, the US Government considered the issue of the privatisation and transition of the management of the domain name system from the US Government to a new not-for-profit entity. The US Department of Commerce published its Statement of Policy on the “Management of Internet Names and Addresses”, 63 Federal Register 31741 (5 June 1998) (commonly referred to as the White Paper).41 The Statement of Policy addressed the privatisation and transition of the management of the domain name system, and also considered the role of WIPO to develop a set of recommendations for resolving disputes between trade mark holders and domain names: The U.S. Government will seek international support to call upon the World Intellectual Property Organization (WIPO) to initiate a balanced and transparent process, which includes the participation of trade mark holders and members of the internet community who are not trade mark holders, to (1) develop recommendations for a uniform approach to resolving trade mark/domain name disputes involving cyberpiracy (as opposed to conflicts between trade mark holders with legitimate competing rights), (2) recommend a process for protecting famous trademarks in the generic top level domains, and (3) evaluate the effects, based on studies conducted by independent organizations, such as the National Research Council of the National Academy of Sciences, of adding new gTLDs and related dispute resolution procedures on trademark and intellectual property holders. These findings and recommendations could be submitted to the board of the new corporation for its consideration in conjunction with its development of registry and registrar policy and the creation and introduction of new gTLDs.42

ICANN was established under Californian law in 1998 as the not-for-profit entity to manage the international domain name system.43 ICANN’s overall mission is to coordinate “the global internet’s systems of unique identifiers, and in particular to ensure the stable and secure operation of the internet’s unique identifier systems.”44 More specifically, ICANN’s mission is to coordinate the allocation and assignment of the three sets of unique identifiers: i. domain 39

40 41

42

43 44

WIPO, The Management of Internet Names and Addresses: Intellectual Property Issues, Final Report of the WIPO Internet Domain Name Process http://www.wipo2.wipo.int (30 April 1999), pp 1-3, available online: http://www.wipo.int/amc/en/processes/process1/ report/index.html. The UDRP is available on ICANN’s website: http://www.icann.org/en/udrp/udrp.htm. US Department of Commerce, Management of Internet Names and Addresses, Vol 63, No 111 Federal Register: Notices 31741 (10 June 1998); available online: http:// www.gpo.gov/fdsys/pkg/FR-1998-06-10/pdf/98-15392.pdf. US Department of Commerce, Management of Internet Names and Addresses, Vol 63, No 111 Federal Register: Notices 31747 (10 June 1998); available online: http:// www.gpo.gov/fdsys/pkg/FR-1998-06-10/pdf/98-15392.pdf. The major agreements establishing ICANN are available online: https://www.icann.org/ resources/pages/agreements-en. ICANN’s “Mission and Core Values” are stated in Article I of its Bylaws, available online: http://www.icann.org/en/general/bylaws.htm#I.

7

8

Australian Domain Name Law

[1.30]

names; ii. internet protocol addresses and autonomous system numbers; and iii. protocol port and parameter numbers. ICANN’s mission also includes coordinating the development and operation of the domain name root name server system, and coordinating policies in relation to these technical functions. On 24 October 1999, the ICANN Board endorsed the documents implementing the new international domain name dispute resolution system: the Uniform Domain Name Dispute Resolution Policy and the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).45 These documents established the international framework for domain name dispute resolution.

The Australian Framework under the .au Dispute Resolution Policy (auDRP) [1.40] The auDRP was drafted as part of a report by auDA into Australian country code top-level domains (that is, .au domain names). auDA is the policy and industry regulatory body which regulates .au domain names. Among its functions, auDA accredits and licenses registrars to make domain name registrations, develops and implements policy for the .au space, and represents .au domain names at ICANN and other international fora.46 In June 2001, the auDA Dispute Resolution Working Group presented a report to the auDA Board which recommended a dispute resolution policy and procedural rules based on ICANN’s uDRP “as a mechanism for handling disputes between registrants and parties with competing legal rights in a .au domain name.”47 The recommendations were adopted by the auDA Board, and the dispute resolution policy – known as the .au Dispute Resolution Policy (auDRP), commenced on 1 August 2002.48 Like ICANN, auDA was founded as a non-profit corporation registered on 23 June 1997, with the purpose of administering “the .au ccTLD for the benefit of the Australian community.”49 The object of auDA is set out in Clause 3.1 of its Constitution, which provides: The principal purposes of auDA are: a. to be the administrator of, and the Australian self regulatory policy body for the .au ccTLD and its associated Second Level Domains; 45 46

47 48 49

The Rules for Uniform Domain Name Dispute Resolution Policy (the “UDRP Rules”) is available on ICANN’s website: http://www.icann.org/en/dndr/udrp/uniform-rules.htm. See About auDA, auDA, http://www.auda.org.au/about-auda/. There is detailed information about auDA on its website. For all of auDA’s published policies (both current and historical) see Index of Published Policies, auDA, http://www.auda.org.au/policies/index-of-publishedpolicies/. For information about the auDA Board see auDA Board, auDA, http:// www.auda.org.au/about-auda/our-org/board/. For auDA’s annual reports see Annual Reports, auDA, http://www.auda.org.au/about-auda/our-org/annual-reports/. For auDA’s current and previous strategic plans see Strategic Plan, auDA, http://www.auda.org.au/ about-auda/our-org/strategic-plan/. For information on auDA’s international activities see International Activities, auDA, http://www.auda.org.au/about-auda/our-org/internationalactivities/. There is even detailed information about auDA’s budget (see Budget, auDA, http://www.auda.org.au/about-auda/our-org/budget/); auDA’s Board meetings (see auDA Board Meetings, auDA, http://www.auda.org.au/about-auda/our-org/board-meetings/); and auDA’s Annual General Meetings (see Annual General Meetings, auDA, http:// www.auda.org.au/about-auda/our-org/agm/). auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules (2001) auDA, 2, http://www.auda.org.au/pdf/drwg-audrp-final.pdf. The auDRP, including auDRP Rules, is available online: https://www.auda.org.au/policies/ index-of-published-policies/2016/2016-01-au-dispute-resolution-policy-audrp/. Constitution of .au Domain Administration Ltd – ACN 079 009 340 – A Company Limited By Guarantee (“Constitution”), Preamble, 1, available online at: http://www.auda.org.au/ assets/About-auDA/Constitution/auda-constitution-2013-2.pdf.

[1.40]

1: Australian Domain Name Law: Overview

b. to maintain and promote the operational stability and utility of the .au ccTLD and more generally, the internet’s unique identifier system, and to enhance the benefits of the internet to the wider community; (Amended by Special Resolution, 14 August 2006) c. to ensure a cost effective administration of the .au ccTLD and its subdomains; d. to develop and establish a policy framework for the development and administration of the .au ccTLD including: i. rules governing the operations of second level domain registries; ii. the creation of second level domains; iii. rules governing the accreditation of registrars and registry operators; (Amended by Special Resolution, 23 September 2002.) iv. rules governing the registration of names within second level domains and access to second level domain registries; v. ensuring that registrars have equal access to second level registry services. e. to manage the operation of critical technical functions including: i. the primary and secondary .au name servers; ii. zone files for second level domains; and iii. a searchable data base containing information on registrations within the .au ccTLD. f. to liaise with national and international bodies on issues relating to the development and administration of domain name systems. g. to establish appropriate complaints handling and dispute resolution processes to provide for conciliation or redress of grievances on matters associated with the administration of the .au ccTLD.

As provided in auDA’s Constitution, auDA is a non-profit, membership based Australian company limited by guarantee. auDA is therefore governed by both the Corporations Act 2001 (Cth) and its own Constitution. auDA’s structure – including composition of auDA’s Board (see Clause 18.2), and different classes of members (see Clause 9), are set out in the Constitution. According to the Accountability and Transparency Framework, which was approved by the auDA Board in December 2012, “The Australian Government also participates on the auDA Board as an observer.”50 auDA claims to “regularly review” its “processes, governance and organisation”, and details of various reviews are available on auDA’s website.51 There have also been two internal reviews of the auDRP by auDA to date – in 2007,52 and more recently in late 2012.53 auDA’s 50

51 52

53

Accountability and Transparency Framework (December 2012) auDA, 2, http:// www.auda.org.au/pdf/auda-atf-2012.pdf. For further information on auDA’s Accountability and Transparency Framework see Accountability and Transparency Framework, auDA http://www.auda.org.au/about-auda/our-org/accountability-and-transparency-framework/. See Reviews of auDA, auDA, http://www.auda.org.au/about-auda/our-org/reviews-of-auda/. auDA Issues Paper, .au Dispute Resolution Policy (auDRP) Review (2007), 2, available online: http://www.auda.org.au/pdf/auda-audrp-2007.pdf. See also auDA’s response to the review (published in August 2007) .au Dispute Resolution Policy (auDRP) Review (August 2007), available online: http://www.auda.org.au/pdf/auda-audrp-review.pdf. auDA Issues Paper, .au Dispute Resolution Policy (auDRP) Review (2012), available online: http://www.auda.org.au/pdf/audrp_review_261112.pdf. See also auDA’s response to the review (published in May 2013) .au Dispute Resolution Policy (auDRP) Review (November 2012), available online: http://www.auda.org.au/pdf/audrp-review-2013.pdf.

9

10

Australian Domain Name Law

[1.40]

complaint handling framework deals with complaints about breaches of auDA policies by domain name registrants, and also complaints about accredited registrars and resellers.54 The complaints process is supported by an appeals mechanism: the Registrant Review Panel (for reviews of decisions by auDA to cancel domain names due to breach of auDA policies), and the Registrar Review Panel (for reviews of decisions by auDA to suspend or terminate registrar accreditation).55 Building from the accumulation of events since 1995, the auDA organisation was eventually established to manage the .au domain space in 1999.56 On 31 December 2000, the Commonwealth Government formally endorsed auDA as the appropriate body “to hold the delegation of authority by the Internet Corporation for Assigned Names and Numbers (ICANN) for administrative authority of the au country code top level domain (ccTLD).”57 In exchange for this endorsement, auDA was required to be bound by ICANN’s policies, co-operate with the Commonwealth and/or ICANN in the case of any reassignment of authority from auDA to another party, and recognise the Commonwealth Government as “the ultimate authority” for the administration and management of the .au domain name space.58 The Commonwealth continues to have reserve powers in relation to domain names under the Telecommunications Act 1997 (Cth).59 As a result of another endorsement by the Commonwealth government,60 an Internet Assigned Numbers Authority (IANA) report61 and the ICANN Board’s approval,62 auDA and ICANN entered into a ccTLD Sponsorship Agreement on 25 October 2001 under which auDA was recognised as the “manager” for the .au ccTLD.63

auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) [1.50] The auDA auDRP Overview 1.0 was published half way through

writing this book in July 2014.64 The auDA auDRP Overview 1.0 is an informal overview of auDRP panel opinions on key procedural and substantive 54 55 56 57

58

59 60

61 62

63

64

See Submit a Complaint, auDA, http://www.auda.org.au/about-auda/our-services/submit-acomplaint/. See Complaints Policy (Policy No: 2015-01) (14/05/2015), auDA, http://www.auda.org.au/ assets/Policies/2015-01.pdf. See About auDA, auDA, http://www.auda.org.au/about-auda/. See letter from Richard Alston, Minister for Communications, Information Technology and the Arts to Greg Watson, Chairman of auDA (31 December 2000) available online at: http://www.auda.org.au/pdf/auda-govt-endorse.pdf. See letter from Richard Alston, Minister for Communications, Information Technology and the Arts to Greg Watson, Chairman of auDA (31 December 2000) available online at: http://www.auda.org.au/pdf/auda-govt-endorse.pdf. See About auDA, auDA, http://www.auda.org.au/about-auda/. Letter from Richard Alston, Minister for Communications, Information Technology and the Arts to Stuart Lynn, President and CEO of ICANN (4 July 2001) available online at: http://www.iana.org/reports/2001/au-redelegation/alston-to-lynn-04jul01.html. See IANA Report on Request for Redelegation of the .au Top-Level Domain (31 August 2001) IANA, http://www.iana.org/reports/2001/au-report-31aug01.html. See ICANN Board of Director’s approval of the ccTLD Sponsorship Agreement (10 September 2001) available online: http://www.icann.org/en/groups/board/documents/ prelim-report-10sep01-en.htm. ccTLD Sponsorship Agreement (.au), Section 3.1. The agreement and its appendices are available on the auDA website: http://www.icann.org/en/about/agreements/cctlds/au/ sponsorship-agmt-25oct01-en.htm. Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First

[1.50]

1: Australian Domain Name Law: Overview

issues that have arisen since the inception of the policy. The auDA auDRP Overview 1.0 is directly based on the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), which is now in its second edition.65 Lindsay states that the WIPO Overview: takes the form of a concise statement of the views of panellists on a number of significant issues that have arisen in the application of the uDRP, coupled with the citation of a small number of decisions that support the propositions in the overview. The statement of views identifies those issues in relation to which a consensus has emerged among uDRP panellists, as well as qualifications to the consensus views. The statement also identifies those issues where there is no consensus among uDRP panellists and, where appropriate, provides a statement of the views of the majority and minority of panellists on the relevant issue. Finally, the overview identifies issues where neither a consensus nor a majority view has yet to emerge, and which continue to divide uDRP panellists.66

The auDA auDRP Overview 1.0 does precisely the same. As will be discussed further in Chapter 3, there is no formal doctrine of precedent under the auDRP and uDRP, and the Overviews are not binding. Nevertheless, as Lindsay suggests: the interests of fairness and consistency mean that, in practice, panellists will not generally depart from a Consensus View, even if they disagree with it. Where there is no Consensus View on an issue but it is possible to identify a majority view, it seems that the majority view will usually be applied, unless the uDRP panel finds an argument not to apply the majority view to be compelling.67

The auDA auDRP Overview 1.0 has been incorporated fully in this book as it has been adopted by auDA as representing the consensus view on auDRP panel opinions. While the auDA auDRP Overview 1.0 cites a number of decisions to support its position on the consensus view, these decisions are only cited and not considered in any way. This book will attempt to expand the ambit of the auDA auDRP Overview 1.0 by discussing these decisions – either in reference to that specific question (where it has been cited in the auDA auDRP Overview 1.0) or elsewhere in this book.68

65 66 67 68

Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, http://www.auda.org.au/assets/ Policies/auDRP/auDRP-Overview/auDRP-Overview-2014.pdf. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), WIPO: http://www.wipo.int/amc/en/domains/search/overview/. David Lindsay, International Domain Name Law: ICANN and the UDRP (Hart Publishing, 2007) p 128. David Lindsay, International Domain Name Law: ICANN and the UDRP (Hart Publishing, 2007) p 128. Note that each decision that has been cited in the auDA auDRP Overview 1.0 has been reviewed somewhere in this book.

11

2

.au Dispute Resolution Policy (auDRP) [2.10] [2.20] [2.30] [2.40] [2.50]

Introduction..................................................................................................13 Background..................................................................................................14 Application of the auDRP...........................................................................16 Providers approved by auDA......................................................................18 The .au Dispute Resolution Policy (auDRP)..............................................20

Introduction [2.10] As noted in the previous chapter, the auDRP came into force on

1 August 2002.1 The auDRP is clearly based on the uDRP. Indeed, even the introductory “Notes” to both the auDRP and auDRP Rules explicitly state that the auDRP “has been adapted” from the uDRP.2 The auDRP and auDRP Rules are annexed as Schedules A and B respectively of the auDA policy document titled .au Dispute Resolution Policy (auDRP) (“auDRP policy document”).3 This policy document provides background information on the auDRP and auDRP Rules, which is then followed by the entire auDRP (in Schedule A) and the auDRP Rules (in Schedule B).4 The auDRP (and uDRP) Rules prescribe the way in which the hearings (referred to as “mandatory administrative proceedings”) are administered, including procedures and timelines for lodging a complaint and filing a response, and the relevant fees associated with the proceedings. The auDRP Rules will be discussed in the following chapter. As noted previously, the aim of both the auDRP and uDRP is to provide an alternative to litigation. The auDRP policy document explains that the underlying “purpose of the auDRP is to provide a cheaper, speedier alternative to litigation for the resolution of disputes between the registrant of a .au domain name and a party with competing rights in the domain name.”5 Although the auDRP is based on the uDRP, there are some significant differences between the policies. The auDRP policy document states:

1 2 3

4

5

The auDRP and auDRP Rules are available online: https://www.auda.org.au/assets/pdf/ auda-2016-01.pdf. The auDRP and auDRP Rules are available online: https://www.auda.org.au/assets/pdf/ auda-2016-01.pdf, pp 4, 8. The auDA policy number for this current version of the auDRP and auDRP Rules is Policy No: 2016-01, publication date 15 April 2016, available online: https://www.auda.org.au/ assets/pdf/auda-2016-01.pdf. For the avoidance of any doubt, when I refer to the “auDRP”, I am referring to Schedule A of this document; and when I refer to the “auDRP Rules”, I am referring to Schedule B of this document. .au Dispute Resolution Policy (auDRP) (Policy No: 2016-01) (15/04/2016), auDA, auDRP policy document para 1.2, https://www.auda.org.au/assets/pdf/auda-2016-01.pdf.

14

Australian Domain Name Law

[2.10]

The auDRP differs from the uDRP in two main respects: a) to take account of the policy rules that apply to .au domain names, that do not apply to gTLD domain names; and b) to improve the clarity of expression and address practical constraints that have become apparent since arbitrations under the uDRP began in 1999.6

The major difference relates to paragraph (a) above, that is the specific requirements for obtaining a .au domain name. As noted in the previous chapter, .au domain names are required to have some connection to Australia. For example, a .com.au domain name is intended for commercial entities with an Australian connection (such as an Australian registered company or an Australian partnership and so on).

Background [2.20] In March 2001, auDA established a Dispute Resolution Working Group (DRWG), which included members of two other auDA advisory panels: the Name Policy Advisory Panel and Competition Model Advisory Panel, to develop a mechanism for handling disputes in the .au domain. On 13 August 2001, the auDA Board approved the DRWG’s proposed .auDRP and auDRP Rules.7 Along with developing a framework for handling disputes between registrants and parties with competing legal rights in .au domain names, the DRWG was also requested to consider appropriate frameworks for dealing with disputes between registrants and registrars; registrars; registrars and the registry; registries; and disputes between auDA and any one of the preceding parties.8 Within these categories, the DRWG focused on disputes between registrants and registrars, as it concluded that the other types of disputes would best be dealt with contractual arrangements and general commercial arbitration processes. The DRWG concluded that “at this early stage in the development of the domain name industry in Australia, it is difficult to predict the types of disputes that may arise between industry participants and therefore not possible for a dispute resolution policy to cover the field.”9 Moreover, “any dispute resolution policy adopted by auDA should be aimed at providing consumers with a speedy, cost-effective alternative to court action. The need to do the same with regard to industry participants is not compelling at present.”10 In its work on disputes between registrants and registrars, the DRWG focused on disputes relating to domain name eligibility and allocation policy rules for the registration and renewal of .au second level domains (2LDs). The DRWG concluded that “registrants (or would-be registrants) who are dissatisfied with 6 7 8

9

10

.au Dispute Resolution Policy (auDRP) (Policy No: 2016-01) (15/04/2016), auDA, auDRP policy document para 1.3, https://www.auda.org.au/assets/pdf/auda-2016-01.pdf. .au Dispute Resolution Policy (auDRP) (Policy No: 2016-01) (15/04/2016), auDA, auDRP policy document para 1.1, https://www.auda.org.au/assets/pdf/auda-2016-01.pdf. auDA Dispute Resolution Working Group, Proposed .au Domain Name Application Appeals Process: Report to auDA Board (October 2001), auDA, p 1, http:// www.auda.org.au/pdf/drwg-aap-final.pdf. auDA Dispute Resolution Working Group, Proposed .au Domain Name Application Appeals Process: Report to auDA Board (October 2001), auDA, p 2, http:// www.auda.org.au/pdf/drwg-aap-final.pdf. auDA Dispute Resolution Working Group, Proposed .au Domain Name Application Appeals Process: Report to auDA Board (October 2001), auDA, p 2, http:// www.auda.org.au/pdf/drwg-aap-final.pdf.

[2.20]

2: .au Dispute Resolution Policy (auDRP)

a registrar’s decision to reject their registration or renewal application should have access to an independent arbitrator to hear their complaint. In line with the principle of separation of policy and operations, it would not be appropriate for auDA to perform this role.”11 To this end, the DRWG adapted the auDRP and auDRP Rules to draft a policy that would deal with disputes about the correct application of the domain name eligibility and allocation rules. The draft policy, titled .au Domain Name Application Appeals Process and Rules for .au Domain Name Application Appeals Process was reported to the auDA Board in October 2001,12 however was never adopted as policy as the Board’s view was that the proposed appeals process was not required at the time.13 The DRWG completed its brief for auDA in October 2001. The main task of the DRWG was to draft a policy to deal with .au domain name disputes. In May 2001, the DRWG released its proposed auDRP and auDRP Rules – heavily adapted from the uDRP and uDRP Rules, for public consultation.14 As a result of this process, the DRWG received seven submissions,15 and incorporated some of the suggested amendments in its Report to the auDA Board in June 2001.16 The DRWG’s original intention was that the auDRP and auDRP Rules would apply to “all disputes that may arise in relation to domain name policy and service”, including disputes between registrants and parties with competing legal rights in the .au domain name; registrants and registrars; registrars; registrars and the registry; registries; and disputes between auDA and any one of the preceding parties.17 However, in response to the public consultation process, the DRWG concluded that it was not practical to have one policy apply to all types of possible .au domain name disputes, and decided to limit the auDRP and auDRP Rules to registrants of .au domain names and parties with competing rights in the domain name.18 In its Report to the auDA Board in June 2001, the DRWG recommended the auDRP and auDRP Rules to be based on the uDRP, as “the uDRP offers some clear benefits, such as simplicity, cost effectiveness and a growing case history. 11

12

13 14 15 16

17

18

auDA Dispute Resolution Working Group, Proposed .au Domain Name Application Appeals Process: Report to auDA Board (October 2001), auDA, p 1, http:// www.auda.org.au/pdf/drwg-aap-final.pdf. The draft .au Domain Name Application Appeals Process and Rules for .au Domain Name Application Appeals Process are annexed as “Attachment A” and “Attachment B” in auDA Dispute Resolution Working Group, Proposed .au Domain Name Application Appeals Process: Report to auDA Board (October 2001), auDA, p 3-16, http://www.auda.org.au/ pdf/drwg-aap-final.pdf. For a list of auDA’s current published policies, see Current Policies, auDA, http:// www.auda.org.au/policies/current-policies. See auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules (May 2001), auDA, http://www.auda.org.au/pdf/drwg-audrp-draft.pdf. See auDA Dispute Resolution Working Group, Public Submissions, auDA, http:// www.auda.org.au/policies/panels-and-committees/dispute-resolution-working-group. auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf. auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 1, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf. auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 1, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf.

15

16

Australian Domain Name Law

[2.20]

The uDRP procedural Rules have proved to be straightforward and streamlined, for arbitrators, complainants and respondents alike.”19 With respect to the scope of the policy, the DRWG recommended the auDRP and auDRP rules to “apply to all open second level domains (2LDs). For the sake of consistency, the DRWG considers it would be desirable for the auDRP to apply to all closed 2LDs; however, this is a matter for negotiation between auDA and the closed 2LD administrators.”20 The DRWG also recommended that auDA – as the manager of the .au domain name space “should play a facilitative role to encourage consistency of decisions under the auDRP.”21

Application of the auDRP [2.30] The auDRP is a “mandatory administrative proceeding” which applies to “[a]ll domain name licences issued or renewed in the open 2LDs from 1 August 2002”.22 The open 2LDs are currently the following: asn.au, com.au, id.au, net.au and org.au.23 auDA’s Domain Name Eligibility and Allocation Policy Rules for Open 2LDs prescribe the rules which govern the eligibility criteria in the .au domain for the various open 2LDs, and will be discussed in further detail below.24 The auDRP is limited to domain name disputes which satisfy the criteria in paragraph 4(a) of the auDRP – it does not apply to all types of domain disputes.25 The auDRP clearly states that it “is an alternative dispute resolution mechanism”, which means that either party is not prevented from initiating separate legal proceedings in a court of competent jurisdiction at any time.26 Along with outlining the eligibility and allocation rules for all open 2LDs, auDA’s Domain Name Eligibility and Allocation Policy Rules for Open 2LDs also explains the nature of proprietary rights in domain names, and the structure of .au domains. With respect to the legal rights which attach to domain name licences, the policy makes clear that: 19

20

21

22 23 24 25

26

auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 2, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf. auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 2, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf. auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 2, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf. .au Dispute Resolution Policy (auDRP) (Policy No: 2016-01) (15/04/2016), auDA, auDRP policy document para 2.1, https://www.auda.org.au/assets/pdf/auda-2016-01.pdf. .au Dispute Resolution Policy (auDRP) (Policy No: 2016-01) (15/04/2016), auDA, auDRP policy document para 2.1, https://www.auda.org.au/assets/pdf/auda-2016-01.pdf. Domain Name Eligibility and Allocation Policy Rules for Open 2LDs (Policy No: 2012-04) (17/12/2012), auDA, http://www.auda.org.au/pdf/auda-2012-04.pdf. .au Dispute Resolution Policy (auDRP) (Policy No: 2016-01) (15/04/2016), auDA, auDRP policy document para 2.2, https://www.auda.org.au/assets/pdf/auda-2016-01.pdf. For example, in Mr Tim (Hatem) Shatim v Dr Douglas Ralph Morris LEADR Case No auDRP01/03 (16 March 2003), p 3 [6], the panelist held that the issue between the parties would need to be resolved under auDA’s eligibility policy relating to .com.au, and not under the auDRP: “Clearly the issue between the parties is whether the respondent has complied with the eligibility requirements of paragraphs 2(a), 2(b) or 2(c) of Schedule C to the eligibility policy, relating to com.au. That issue cannot be resolved in an administrative proceeding under the auDRP but rather under the auDA Complaints (Registrant Eligibility) Policy published on 27 August 2002 (Policy No: 2002-25).” .au Dispute Resolution Policy (auDRP) (Policy No: 2016-01) (15/04/2016), auDA, auDRP policy document para 2.3, https://www.auda.org.au/assets/pdf/auda-2016-01.pdf.

[2.30]

2: .au Dispute Resolution Policy (auDRP)

There are no proprietary rights in the domain name system (DNS). A registrant does not “own” a domain name. Instead, the registrant holds a licence to use a domain name, for a specified period of time and under certain terms and conditions… There is no hierarchy of rights in the DNS. For example, a registered trade mark does not confer any better entitlement to a domain name than a registered company or business name. Domain name licences are allocated on a “first come, first served” basis. Provided the relevant eligibility and allocation rules are satisfied, the first registrant whose application for a particular domain name is submitted to the registry will be permitted to license it.27

The terms and conditions of domain name licences are set out in the Domain Name Eligibility and Allocation Policy Rules for Open 2LDs and other applicable auDA published policies, and any agreements between domain name registrants and registrars.28 Significantly, as stated above, there is no hierarchy of rights in the allocation of domain name licences – they are allotted on a “first come, first served” basis. How this principle is played out in the context of the auDRP and domain name disputes will be examined at length in the following chapters. The Domain Name Eligibility and Allocation Policy Rules for Open 2LDs document also details the structure of .au domain names in paragraph 3 of the policy: 3.1 The .au domain is sub-divided into a number of 2LDs (for example, com.au, edu.au, id.au). All .au domain names are registered as third level domains (3LDs). It is not possible to register domain names as 2LDs directly under .au. 3.2 Each 2LD has a purpose. For example, com.au is for commercial entities, gov.au is for government bodies and org.au is for non-commercial organisations. The purpose of each 2LD dictates the eligibility and allocation rules applicable in that 2LD. 3.3 The 2LDs are divided into 2 categories: a) “open 2LDs” – those 2LDs that are basically open to all users, subject to some eligibility criteria; and b) “closed 2LDs” – those 2LDs with a defined community of interest that are closed to the general public. 3.4 Schedule A of this document sets out the eligibility and allocation rules that apply to all open 2LDs. Schedules B-F of this document set out the eligibility and allocation rules that apply to each open 2LD. 3.5 The eligibility and allocation rules that apply to closed 2LDs are determined by the relevant 2LD Manager and approved by auDA.

As stated above, paragraph 3.4 of auDA’s Domain Name Eligibility and Allocation Policy Rules for Open 2LDs outlines the specific rules for the different types of open .au 2LDs – such as com.au,29 net.au,30 27

28 29 30

Domain Name Eligibility and Allocation Policy Rules for Open 2LDs (Policy No: 2012-04) (17/12/2012), auDA, para 2.1 and para 2.3, http://www.auda.org.au/pdf/auda-2012-04.pdf. For discussion on whether a domain name confers rights as a form of property, see Cash Converters Pty Ltd v Casshies Investments Pty Ltd WIPO Case No DAU2013-0040 (6 May 2014). Domain Name Eligibility and Allocation Policy Rules for Open 2LDs (Policy No: 2012-04) (17/12/2012), auDA, para 2.2, http://www.auda.org.au/pdf/auda-2012-04.pdf. Domain Name Eligibility and Allocation Policy Rules for Open 2LDs (Policy No: 2012-04) (17/12/2012), auDA, Schedule C, http://www.auda.org.au/pdf/auda-2012-04.pdf. Domain Name Eligibility and Allocation Policy Rules for Open 2LDs (Policy No: 2012-04) (17/12/2012), auDA, Schedule E, http://www.auda.org.au/pdf/auda-2012-04.pdf.

17

18

Australian Domain Name Law

[2.30]

org.au,31 asn.au,32 and id.au.33 For example, com.au and net.au 2LDs are intended for commercial purposes and registrants must be: a) an Australian registered company; or b) trading under a registered business name in any Australian State or Territory; or c) an Australian partnership or sole trader; or d) a foreign company licensed to trade in Australia; or e) an owner of an Australian Registered Trade Mark; or f) an applicant for an Australian Registered Trade Mark; or g) an association incorporated in any Australian State or Territory; or h) an Australian commercial statutory body.34 In addition, a potential registrant of a com.au and/or net.au 2LD must reflect its name or trade mark in the domain name it seeks, and is required to be “otherwise closely and substantially connected to the registrant.”35 There are similar requirements for org.au,36 asn.au,37 and id.au38 domains. As stated in paragraph 3.4 (see above), Schedule A of auDA’s Domain Name Eligibility and Allocation Policy Rules for Open 2LDs outlines the general requirements for all open 2LDs, and prescribes rules relating to the number, licence period and renewal policy for domain names, the composition of domain names, standard requirements for registrants to be Australian, and so on.39

Providers approved by auDA [2.40] A number of “providers” or organisations, such as WIPO, have been approved by auDA (and ICANN) to provide a dispute resolution service under the auDRP40 (and uDRP respectively).41 Paragraph 4(d) of the auDRP (and uDRP) state that the complainant is required to select an approved provider by 31 32 33 34

35 36 37 38 39 40

41

Domain Name Eligibility and Allocation Policy Rules for Open 2LDs (Policy No: 2012-04) (17/12/2012), auDA, Schedule F, http://www.auda.org.au/pdf/auda-2012-04.pdf. Domain Name Eligibility and Allocation Policy Rules for Open 2LDs (Policy No: 2012-04) (17/12/2012), auDA, Schedule B, http://www.auda.org.au/pdf/auda-2012-04.pdf. Domain Name Eligibility and Allocation Policy Rules for Open 2LDs (Policy No: 2012-04) (17/12/2012), auDA, Schedule D, http://www.auda.org.au/pdf/auda-2012-04.pdf. Domain Name Eligibility and Allocation Policy Rules for Open 2LDs (Policy No: 2012-04) (17/12/2012), auDA, Schedule C, para 1, and Schedule E, para 1, http://www.auda.org.au/ pdf/auda-2012-04.pdf. Domain Name Eligibility and Allocation Policy Rules for Open 2LDs (Policy No: 2012-04) (17/12/2012), auDA,, para 2, http://www.auda.org.au/pdf/auda-2012-04.pdf. Domain Name Eligibility and Allocation Policy Rules for Open 2LDs (Policy No: 2012-04) (17/12/2012), auDA, Schedule F, http://www.auda.org.au/pdf/auda-2012-04.pdf. Domain Name Eligibility and Allocation Policy Rules for Open 2LDs (Policy No: 2012-04) (17/12/2012), auDA, Schedule B, http://www.auda.org.au/pdf/auda-2012-04.pdf. Domain Name Eligibility and Allocation Policy Rules for Open 2LDs (Policy No: 2012-04) (17/12/2012), auDA, Schedule D, http://www.auda.org.au/pdf/auda-2012-04.pdf. Domain Name Eligibility and Allocation Policy Rules for Open 2LDs (Policy No: 2012-04) (17/12/2012), auDA, Schedule A, http://www.auda.org.au/pdf/auda-2012-04.pdf. .au Dispute Resolution Policy (auDRP) (Policy No: 2016-01) (15/04/2016), auDA, auDRP policy document para 3.1, https://www.auda.org.au/assets/pdf/auda-2016-01.pdf. See auDRP Providers, auDA, http://www.auda.org.au/audrp/providers. See List of Approved Dispute Resolution Service Providers, ICANN, http://www.icann.org/ en/dndr/udrp/approved-providers.htm.

[2.40]

2: .au Dispute Resolution Policy (auDRP)

submitting the complaint to that provider. Further, paragraph 4(g) of the auDRP (and uDRP) provide that the complainant is also responsible for paying the fees charged by the provider for the dispute – except in cases where the panel is enlarged from a one member panel to a three member panel (as provided in paragraph 5(b)(iv) of the auDRP Rules). In this case, the provider fees are shared equally between the complainant and respondent: paragraph 4(g) of the auDRP (and uDRP). The current auDRP providers approved by auDA are: WIPO, and the Resolution Institute (formerly LEADR Association of Dispute Resolvers, and the Institute of Arbitrators & Mediators Australia (IAMA)).42 The process for becoming an auDA-approved provider is outlined in a policy document titled Approval Process for auDRP Providers.43 Potential providers are typically organisations which have a track record in handling alternative dispute resolution (ADR) proceedings, and the policy document succinctly outlines the approval process for potential providers.44 Each provider follows the respective policies as well as their own supplemental rules.45 The supplemental rules deal with various procedural matters, such as submission of complaints and responses (and annexes), panelist appointment procedures, the appointment of a case administrator, fees. The providers are required to inform auDA of their decisions, which are then published in full text online (except in rare cases where the panelist decides to redact certain sections of the decision): paragraph 4(j) of the auDRP (and uDRP). The panelists appointed by the auDA-approved providers typically include practising lawyers and legal academics. Only one of auDA-approved provider is a local dispute resolution organisation – with WIPO being the only other provider approved by both ICANN and auDA. Arguably, the use of Australian dispute resolution providers in auDRP disputes has resulted in local practice influencing auDRP decisions. While auDA must approve each provider, the providers themselves are solely responsible for the appointment of their panelists, and auDA does not approve or accredit individual panelists or supervise their activities in any way.46 For this reason, the policy prescribes that “queries or complaints about a panelist should be directed to the relevant provider in the first instance.”47

42 43 44 45

46 47

Note that the Chartered Institute of Arbitrators (CIArb) was also originally an auDA approved auDRP provider – but it no longer serves in that capacity. Approval Process for auDRP Providers (Policy No: 2008-02) (1/3/2008), auDA, http:// www.auda.org.au/pdf/auda-2008-02.pdf. See Approval Process for auDRP Providers (Policy No: 2008-02) (1/3/2008), auDA, http://www.auda.org.au/pdf/auda-2008-02.pdf. The supplemental rules for each provider are available on the respective websites. See auDRP Providers, auDA, http://www.auda.org.au/audrp/providers; List of Approved Dispute Resolution Service Providers, ICANN, http://www.icann.org/en/dndr/udrp/ approved-providers.htm. .au Dispute Resolution Policy (auDRP) (Policy No: 2016-01) (15/04/2016), auDA, auDRP policy document para 3.2 https://www.auda.org.au/assets/pdf/auda-2016-01.pdf. .au Dispute Resolution Policy (auDRP) (Policy No: 2016-01) (15/04/2016), auDA, auDRP policy document para 3.2, https://www.auda.org.au/assets/pdf/auda-2016-01.pdf.

19

20

Australian Domain Name Law

[2.50]

The .au Dispute Resolution Policy (auDRP) [2.50] As noted above, the auDRP – which is annexed as Schedule A of the auDA policy document titled .au Dispute Resolution Policy (auDRP), has been extracted in full in Appendix 1.

Purpose [2.60] The purpose of the auDRP is succinctly articulated in paragraph 1, and states that the policy: sets forth the terms and conditions that govern a dispute between you and any party other than us (the registrar) over the registration and use of an Internet domain name registered by you in one of the open .au second level domains (2LDs). Proceedings under Paragraph 4 of this Policy will be conducted according to the Rules for the auDRP (the “auDRP Rules”), which are at Schedule B of this document, and the selected administrative dispute resolution service Provider’s Supplemental Rules.48

There were no substantive changes made to the final version of paragraph 1 above from the earlier drafts produced by the DRWG in May 200149 and June 2001,50 with only some minor alterations in the wording of the policy. For example, change from “.au Domain Name Dispute Resolution Policy (the ‘Policy’)” in June 200151 to the final “.au Dispute Resolution Policy (‘auDRP’)”. There is also no specific reference in the final version of paragraph 1 that the “the Policy” has been adopted by auDA – as this is referred to in the auDRP policy document.52 Paragraph 9 of the auDRP simply states that the auDRP “may only be modified by auDA.” Paragraph 9 of the uDRP provides a little more detail and states that the uDRP may be modified “at any time” with ICANN’s permission, and that the revised policy will be posted online at least thirty (30) days before its commencement date. However, paragraph 9 of the uDRP makes it clear that the revised policy will not be retroactive, meaning that “the version of the Policy in effect at the time it was invoked will apply”. The earlier drafts of the auDRP produced by the DRWG in May 200153 and June 200154 faithfully follow the wording of paragraph 9 of the uDRP, however this is not what is currently adopted in paragraph 9 of the auDRP. 48 49 50

51

52 53

54

.au Dispute Resolution Policy (auDRP) (Policy No: 2016-01) (15/04/2016), auDA, Sch A, para 1, https://www.auda.org.au/assets/pdf/auda-2016-01.pdf. See auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules (May 2001), auDA, http://www.auda.org.au/pdf/drwg-audrp-draft.pdf. auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf. auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 7, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf. .au Dispute Resolution Policy (auDRP) (Policy No: 2016-01) (15/04/2016), auDA, auDRP policy document para 1.1, https://www.auda.org.au/assets/pdf/auda-2016-01.pdf. See auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules (May 2001), auDA, p 10, http://www.auda.org.au/pdf/drwg-audrpdraft.pdf. auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 11,http:// www.auda.org.au/pdf/drwg-audrp-final.pdf.

[2.80]

2: .au Dispute Resolution Policy (auDRP)

Cancellations, Transfers and Changes to Domain Name Registrations [2.70] Paragraph 3 of the auDRP (and uDRP) sets out the circumstances under which a registrar will cancel, transfer or make changes to domain name registrations: on receipt from the domain name holder (paragraph 3(a)), on receipt from a court or arbitral tribunal order (paragraph 3(b)), and/or as a result from an auDRP proceeding (paragraph 3(c)). Paragraph 7 of the auDRP (and uDRP) also explicitly states that the registrar “will not cancel, transfer, activate, deactivate, or otherwise change the status of any domain name registration” except as permitted under paragraph 3 of the auDRP (and uDRP). With respect to paragraph 3(c) above, the DRWG proposed (in June 2001) that a successful complainant would need to demonstrate eligibility against the relevant criteria before the registrar could transfer the domain name – in line with the final recommendations of the Name Policy Advisory Panel that registrants for .au 2LDs would need to demonstrate eligibility against set criteria.55 This requirement is again reiterated in paragraph 4(i) of the auDRP, which sets out the limited remedies available under the auDRP (discussed below).

Mandatory Administrative Proceedings Applicable Disputes [2.80] Paragraph 4(a) of both the auDRP (and uDRP) detail the three separate but related elements that the complainant must establish to prove breach. Under the auDRP, the complainant must establish that: i. the domain name is identical or confusingly similar to a name (which refers to the complainant’s personal name, company, business or other legal or trading name) trade mark or service mark in which the complainant has rights; and ii. the domain name registrant has no rights or legitimate interests with respect to the domain name; and iii. the domain name has been registered or subsequently used in bad faith. The corresponding paragraph 4(a) uDRP provisions are almost identical, except that paragraph 4(a)(i) does not include a complainant’s name, and only refers to the complainant’s trade mark or service mark. With respect to the inclusion of a complainant’s name in paragraph 4(a)(i), the DRWG stated in its June 2001 (and May 2001)56 report that: The DRWG notes the final recommendations of the Name Policy Advisory Panel, that there is to be no hierarchy of rights in the DNS and that trademark rights are not to be accorded any special significance. The addition of the words “a name” is intended to provide a ground of complaint where a respondent has registered or is

55

56

auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 3, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf. See auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules (May 2001), auDA, p 3, http://www.auda.org.au/pdf/drwg-audrpdraft.pdf.

21

22

Australian Domain Name Law

[2.80]

using in bad faith the business (or other) name of another person. A complainant would not need to have trademark rights in the name in order to bring a dispute under the auDRP.57

Another major difference in the wording between the auDRP and uDRP is that the corresponding paragraph 4(a)(iii) of the uDRP provides that domain name holders are required to both register and use the domain name in bad faith (as opposed to the auDRP’s register or use the domain name in bad faith). In its June 2001 (and May 2001)58 report, the DRWG recommended the replacement of “and” with “or subsequently”, as “uDRP decisions to date have shown that the wording of this clause effectively protects a respondent who has registered the domain name in bad faith but not used it. It also protects a respondent who did not register the domain name in bad faith, but has subsequently used it in bad faith.”59 While that concern may have been warranted in June 2001, the majority of uDRP decisions today have in fact interpreted paragraph 4(a)(iii) to mean or – as opposed to and. As Lindsay states: “In practice, the ICANN debates in relation to this issue have meant very little, as almost all panels have interpreted the ‘and’ in the third element to mean ‘or’.”60

Evidence of Registration or Use of the Domain Name in Bad Faith [2.90] Paragraph 4(b) of the auDRP (and uDRP) outline the four nonexhaustive circumstances which would provide evidence of the registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii). The auDRP lists the following four instances (without limitation): i. where the domain name has been registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the registration to another person for valuable consideration. As Lindsay suggests with respect to the uDRP, this first instance could be described as “classic cybersquatting”: where a domain name is registered primarily for the purpose of making a profit, with the intention to sell or transfer the domain name.61 The wording in the corresponding provision in the uDRP is slightly narrower, where “the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant” is used, as opposed to the auDRP’s “another person”. Thus, paragraph 4(b)(i) of the uDRP requires a complainant to demonstrate that the respondent intended to sell or transfer the domain name either to the complainant, or to a competitor of the complainant. In its June 2001 (and May 2001)62 report, the DRWG argued that the wording of paragraph 4(b)(i) of the uDRP was “unnecessarily restrictive”, and suggested that the scope of 57

58

59

60 61 62

auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 3, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf. See auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules (May 2001), auDA, p 3, http://www.auda.org.au/pdf/drwg-audrpdraft.pdf. auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 3, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf. David Lindsay, “Internet Domain Name Dispute Resolution” (Paper presented at the BLEC Congress, Melbourne, 30 April 2002) p 32. David Lindsay, International Domain Name Law: ICANN and the UDRP (Hart Publishing, 2007) p 111. See auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy

[2.90]

2: .au Dispute Resolution Policy (auDRP)

the paragraph 4(b)(i) in the auDRP should be broadened “to encompass the situation where the respondent, in bad faith, intends to sell the domain name to another person, whether or not that person is directly connected with the complainant.”63 The auDA Board agreed with the DRWG’s recommendation, and the wider scope of paragraph 4(b)(i) of the auDRP reflects this. ii. the domain name has been registered to prevent the owner of a name, trade mark or service mark from reflecting that name or mark in a corresponding domain. The intention underlying paragraph 4(b)(ii) of the auDRP is to deal with situations where cybersquatters prevent legal owners of a name, trade mark or service mark from registering a domain name (which reflects their identifier(s)) because that domain has already been registered first by the cybersquatter. As Lindsay explains in relation to the uDRP, the purpose underlying this second circumstance is “to prevent cybersquatters from evading the prohibition on making offers to sell…[by] effectively achieving the same result by mere registration.”64 The wording in paragraph 4(b)(ii) of the auDRP closely follows the corresponding provision in the uDRP, although paragraph 4(b)(ii) of the uDRP also requires the respondent to “have engaged in a pattern of such conduct”, and obviously does not include “name”. As noted earlier, the DRWG argued for the inclusion of the words “a name” in its June 2001 (and May 2001)65 report as trade mark rights were not to be elevated over legal rights in a name under the auDRP. Further, the DRWG argued for the removal of the clause “have engaged in a pattern of such conduct” as this was not “relevant to individual disputes.”66 iii. the domain name has been registered “primarily for the purpose of disrupting the business or activities of another person”. The wording in the corresponding paragraph 4(b)(iii) of the uDRP refers to “a competitor”, instead of the words “another person”. In its June 2001 (and May 2001)67 report, the DRWG argued for using the broader phrase because “cybersquatting activity is not necessarily confined to activity that disrupts the business of the complainant. If other criteria are satisfied, and the activities (commercial or otherwise) of another person are

63

64 65

66

67

(auDRP) and Rules (May 2001), auDA, p 3-4, http://www.auda.org.au/pdf/drwg-audrpdraft.pdf. auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 4, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf. David Lindsay, International Domain Name Law: ICANN and the UDRP (Hart Publishing, 2007) p 111. See auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules (May 2001), auDA, p 4, http://www.auda.org.au/pdf/drwg-audrpdraft.pdf. auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 4, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf. See auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules (May 2001), auDA, p 4, http://www.auda.org.au/pdf/drwg-audrpdraft.pdf.

23

24

Australian Domain Name Law

[2.90]

being disrupted, the DRWG sees no reason for a complainant to have no remedy.”68 iv. the domain name has been registered to intentionally attract users to a website or other online location for commercial gain “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 location or of a product or service on that website or location.” The corresponding uDRP provision uses the words “your web site” – the auDRP thus differentiating itself from the uDRP by making it clear that attracting users to any websites, and not just websites owned by the respondent, amounts to bad faith. As the wording in the uDRP is unclear as to whether it covers situations where the respondent’s website automatically directs users to other websites not owned by the respondent, the DRWG argued for replacing the words “your web site” with “a website” in its June 2001 (and May 2001)69 report.70

Evidence of Rights and Legitimate Interests in the Domain Name [2.100] Paragraph 4(c) of the auDRP (and uDRP) outline three non-exhaustive circumstances which would provide evidence of rights or legitimate interests in the domain name for the purposes of paragraph 4(a)(ii): i. before any notice of the subject matter of the dispute, bona fide use, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with offering goods or services (not being the offering of domain names that have been acquired for the purpose of selling, renting or otherwise transferring). The corresponding uDRP provision does not include the words “subject matter” of the dispute. In its June 2001 report, the DRWG argued for including the words “subject matter of the dispute” because the “uDRP experience to date has shown that a respondent may have received ample notice of the complaint prior to receiving formal notice of the dispute. For example, before submitting a complaint under the uDRP, the complainant may have contacted the respondent in an attempt to resolve the matter without recourse to arbitration. The DRWG considers that a letter of demand or similar communication from the complainant is sufficient to constitute notice to the respondent of the subject matter of the dispute.”71 The auDRP has been drafted again with the underlying aim of capturing a wider range of circumstances with respect to what would constitute “notice” of the dispute. The use of the word “bona fide” is also 68

69

70

71

auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 4, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf. See auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules (May 2001), auDA, p 4, http://www.auda.org.au/pdf/drwg-audrpdraft.pdf. auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 4, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf. auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 5, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf.

[2.110]

2: .au Dispute Resolution Policy (auDRP)

slightly different in paragraph 4(c)(i) of the uDRP, which reads “in connection with a bona fide offering of goods or services”. The DRWG recommended the changing of the wording in paragraph 4(c)(i) of the auDRP “to make it clear that it is the use of the domain name that must be bona fide, not the offering of goods or services.”72 Finally, paragraph 4(c)(i) of the uDRP does not include the words in brackets at the end of paragraph 4(c)(i) of the auDRP: “not being the offering of domain names that… have [been] acquired for the purpose of selling, renting or otherwise transferring.” The DRWG suggested including these words based on “the final recommendations of the Name Policy Advisory Panel, that licensing a domain name for the sole purpose of selling it is not considered bona fide. To maintain consistency with this principle, the DRWG has explicitly excluded it as a defence to a complaint under the auDRP.”73 ii. the relevant individual, business, or other organisation has commonly been known by the domain name, even if they have not acquired any trade mark or service mark rights. Thus, being commonly known by a domain name – even if no trade mark or service mark rights have been acquired, would satisfy the evidentiary requirements of paragraph 4(c)(ii) of the auDRP (and uDRP) with respect to rights or legitimate interests in the domain name for the purposes of paragraph 4(a)(ii). The wording of paragraph 4(c)(ii) is the same for both policies. iii. a legitimate non-commercial or fair use of the domain name is being made, without the intent for commercial gain to misleadingly divert consumers or to tarnish the name, trade mark or service mark at issue. Paragraph 4(c)(iii) of the auDRP (and uDRP) outlines the third nonexhaustive circumstance which would provide evidence of rights or legitimate interests in the domain name for the purposes of paragraph 4(a)(ii). Both policies have been worded the same – except, of course, for the inclusion of “name” in the auDRP for reasons discussed above.

Consolidation of Multiple Disputes, and the availability of Court Proceedings [2.110] The procedure for initiating a complaint under both the auDRP and uDRP is relatively straightforward. Complainants must submit to the jurisdiction of both policies in the event of a dispute, and adjudicating panelists are required to adhere to the policies when deciding a dispute. The process for initiating and conducting a proceeding are prescribed in detail in the auDRP Rules (and uDRP Rules): see paragraph 4(e) of the auDRP (and uDRP). 72

73

auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 5, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf. auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 5, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf. See also auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules (May 2001), auDA, p 4, http://www.auda.org.au/pdf/drwg-audrp-draft.pdf.

25

26

Australian Domain Name Law

[2.110]

In the event of multiple disputes, either party may petition to consolidate the disputes – provided that the disputes being consolidated are governed by the respective policies: see auDRP and uDRP paragraph 4(f).74 On the issue of whether multiple complainants can bring a single consolidated complaint against a respondent, paragraph 4.16(i) of the auDA auDRP Overview 1.0 states: The general position is the same as that under the uDRP. While the Policy and the Rules neither expressly permit nor expressly prohibit a consolidation of multiple complainants in a single complaint against a respondent, such consolidation will be permitted where the multiple complainants have a “common grievance” against the respondent, subject to the general requirement that it is equitable and procedurally efficient to have consolidation. The most obvious case of multiple complainants having a common grievance against a single respondent is where the complainants have a common legal interest in the rights on which the complaint is based. Examples of such a common legal interest include: (i) where the multiple complainants have a shared interest in a trademark, such as may exist between a licensor and a licensee; (ii) where the multiple complainants form part of a single entity, such as being individual companies that are part of a larger corporate group or a joint venture; and (iii) where the multiple complainants are members of an association or league – such as an authors’ guild, an artists’ collecting society or a sporting association – which is authorised to enforce the members’ rights. Where the multiple complainants do not have a common legal interest in the rights on which the complaint is based, the complainants would need to make a compelling case that the respondent has engaged in common conduct that has affected their individual rights in like fashion. Examples of conduct affecting individual rights in like fashion include: (i) where the respondent has clearly targeted multiple rights holders; (ii) where the rights relied on and all of the domain names complained about involve certain obvious and specific commonalities; and (iii) where there appears to be a clear pattern to the registration and use of all disputed domain names. Factors that are relevant to determining whether or not a consolidation would be equitable and procedurally efficient include the number of complainants and the strength of the contest between the complainants and the respondent over the substantive aspects of the complaint. Multiple complainants to a complaint should decide between themselves, and state in the complaint, which complainant is to receive transfer of which domain name(s) in the event the complaint is successful [see paragraph 4.16A].75

The auDA auDRP Overview 1.0 cites the following decisions to be relevant on this issue: National Dial A Word Registry Pty Ltd and others v 1300 Directory Pty Ltd,76 and HCOA Pty Ltd, Molescan Australia Pty Ltd v The Trustee for the Terantica Trust / Terry Lockitch.77 These decisions are considered further in the following chapters. 74

75

76 77

For a discussion of paragraph 4(f) of the auDRP see Smart Voucher Ltd t/as Ukash v Chowdhury, MD Abu Russel and Sydney Business & Technology Group Pty Ltd, WIPO Case No DAU2013-0006 (8 May 2013); ESET, spol sro v Antivirus Australia Pty Ltd, Rodney Fewster, ESET Pty Ltd, WIPO Case No DAU2015-0014 (19 May 2015). Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, pp 32-33, http:// www.auda.org.au/assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2008-0021 (6 March 2009). WIPO Case No DAU2013-0003 (18 April 2013).

[2.110]

2: .au Dispute Resolution Policy (auDRP)

Referring to both the decisions in National Dial A Word Registry Pty Ltd and others v 1300 Directory Pty Ltd,78 and HCOA Pty Ltd, Molescan Australia Pty Ltd v The Trustee for the Terantica Trust / Terry Lockitch,79 the panelist in Pangaea Laboratories Ltd, Pacific Direct Intertrading Pty Ltd v Astrix Pty Ltd80 accepted that both the complainants (Pangaea and Pacific Direct) had a common grievance against the respondent, and thus permitted the complaint to be filed jointly. In contrast, the panel in Smart Fee Pty Ltd and KJR Passover Pty Ltd v Quickfee Pty Ltd81 did not accept that all of the companies in the corporate group SV Group had a common legal interest in the disputed domain name “Smart Fee” (although accepted that the two named complainants were proper complainants), and held: In Ken Done, Ken Done & Associates Pty Ltd, and Ken Done Down Under Pty Ltd v Ted Gibson, eResolution Case No AF-0638, the panel concluded that a complaint may be submitted by multiple related parties where there are common interests in a single domain name. In that case, the joint complainants failed to present their claim adequately as they obscured the trade mark ownership interests among each of the parties, requested an ambiguous remedy by not stating to which of the complainants the contested domain name should be transferred to, and avoided the identification of each party’s stake in the remedy. That is very close to the situation here, and the complaint almost fails for this reason. Previous panels have permitted a single complaint where the complainants have a ″common grievance″ against the respondent, as long as it is equitable and procedurally efficient to do so (National Dial A Word Registry Pty Ltd and others v 1300 Directory Pty Ltd WIPO Case No DAU2008-0021; Bettina Liano and Bettina Liano Pty Ltd v Khanh Kim Huynh WIPO Case No D2000-0891; NFL Properties Inc et al v Rusty Rahe WIPO Case No D2000-0128)… While multiple complainant companies may be considered to have rights to a trade mark where those companies form part of a larger corporate group (National Dial A Word Registry Pty Ltd and others v 1300 Directory Pty Ltd supra), the SV Group is not a separate legal entity and so this reasoning does not apply.

On the issue of whether a single consolidated complaint can be brought against multiple respondents, paragraph 4.16(ii) of the auDA auDRP Overview 1.0 provides: The position is uncertain. Paragraph 3(c) of the auDRP Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain holder. auDRP panels have come to different views on whether the proviso in paragraph 3(c) has the effect of prohibiting consolidation of a single complaint against multiple respondents that are not the one and the same entity as the registrant of the domain names. Whereas one panel refused to permit consolidation even though the complainant contended that the registrants “had a unity of interest under related control”, another panel permitted a single complaint to be brought in relation to multiple registrants where they were sufficiently closely associated or related to mean that the domain names were subject to common control [see paragraph 4.8A].82 78 79 80 81 82

WIPO Case No DAU2008-0021 (6 March 2009). WIPO Case No DAU2013-0003 (18 April 2013). WIPO Case No DAU2015-0013 (3 June 2015). WIPO Case No DAU2015-0032 (27 October 2015). Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 33, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf.

27

28

Australian Domain Name Law

[2.110]

The auDA auDRP Overview 1.0 cites the following decisions to be relevant on this question: Jacuzzi Inc v Wangra Pty Ltd,83 and Smart Voucher Ltd t/as Ukash v Chowdhury, MD Abu Russel and Sydney Business & Technology Group Pty Ltd.84 Both these decisions have been considered in later chapters. On the question of to whom should a domain name be transferred in the event a complaint brought by multiple complainants succeeds, paragraph 4.16A of the auDA auDRP Overview 1.0 states: The general position is similar to that under the uDRP. The practice of domain name registration is generally that only one entity is listed as the registrant of a domain name. For this reason, where a complaint is successfully brought under the Policy by multiple complainants and the remedy sought by the complainants is transfer of the disputed domain name, the issue arises as to which of the complainants the panel should order the transfer of the domain name. As a matter of principle, a panel should only order transfer of a domain name to a complainant that, in its individual capacity, has an entitlement to the trademark(s) on which the complaint is based. In a case brought by multiple complainants where more than one of the complainants has entitlement to the trademark(s) on which the complaint is based, the decision about to which of the complainants the domain name should be transferred preferably should be decided by the complainants, not the panel. Where the complainants have the same interest in the domain name and the remedy requested is transfer to all complainants, it is permissible for the panel to choose to which of the complainants to transfer the domain name. Where, however, the complainants’ interests in the domain name are divergent, the complainants request an ambiguous remedy by not stating to which of the complainants the contested domain name should be transferred, or the complainants have avoided the identification of each party’s stake in the remedy, it is generally considered impermissible for the panel to choose one of the complainants to which to transfer the domain name; in that situation, an order of cancellation has been made instead.85

The auDA auDRP Overview 1.0 cites the following decisions to be relevant: Jupitermedia Corp and Australia.Internet.com Pty Ltd v Spotpress Pty Ltd t/as Internet Printing;86 Premier Fire Protection Services (NSW) Pty Ltd and Premier Fire Services (NSW) Pty Ltd v Nixon Safety Pty Ltd;87 The Calvin Klein Trademark Trust and Calvin Klein Inc v Yangjae Kim (t/as Primary Blue);88 and HCOA Pty Ltd, Molescan Australia Pty Ltd v The Trustee for the Terantica Trust / Terry Lockitch.89 These decisions are discussed in the following chapters. On a separate but related issue, it is not the panel’s responsibility to determine whether the party to whom it orders transfer of the disputed domain name satisfies the eligibility requirements. As the panelist in Jersey Mike’s Australia 83 84 85

86 87 88 89

WIPO Case No DAU2005-0001 (24 August 2005). WIPO Case No DAU2013-0006 (8 May 2013). Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 34, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2003-0005 (17 February 2004). LEADR Case No auDRP07/05 (17 August 2005). LEADR Case No auDRP08/08 (23 December 2008). WIPO Case No DAU2013-0003 (18 April 2013).

[2.120]

2: .au Dispute Resolution Policy (auDRP)

Pty Limited, Jersey Mike’s Franchise Systems Inc v The Trustee for Puleys Dental Trust and The Trustee for VSS Dental Unit Trust held:90 The complainant has requested transfer of the disputed domain name to JMAPL. The evidence on the record provided by the complainant does not disclose whether JMAPL meets the eligibility requirements for registration of the disputed domain name. However, the panel is of the view that its responsibility does not extend to determining, definitively, whether or not the party to whom it orders transfer of the disputed domain name in fact satisfies the eligibility requirements for such a transfer to take place. Rather, that responsibility rests elsewhere. Thus, while the panel will order transfer of the disputed domain name to JMAPL as requested, it recognizes that such an order may be subject to the responsible entity requiring JMAPL either to demonstrate that it satisfies the eligibility requirements or to nominate another person (being a person that does satisfy the eligibility requirements) to be the person to whom the disputed domain name should be transferred under this order.

[2.120] Both the auDRP and the uDRP are designed to provide an alternative dispute resolution system for clear-cut cases of domain name disputes – and are explicitly not intended for proceedings that involve disputes where more than one party can demonstrate legitimate rights in the domain name. Paragraph 4(k) in both the auDRP and uDRP provide that the mandatory jurisdiction of the policies do not prevent the parties from submitting to a court of competent jurisdiction for independent resolution of the dispute before auDRP (or uDRP) proceedings are commenced or after such proceedings are concluded.91 Indeed, paragraph 4(k) in the auDRP (and uDRP) specifies that the registrar is required to wait ten (10) business days before implementing the panel’s decision to allow for court proceedings to be commenced.92 Panel decisions under the auDRP and uDRP are binding on the parties, and there is no appeals process.93 Any claim for damages are made through separate court proceedings. As noted above, the policies do not preclude the availability 90 91

92

93

WIPO Case No DAU2016-0002 (1 March 2016). See .au Dispute Resolution Policy (auDRP) (Policy No: 2016-01) (15/04/2016), auDA, auDRP policy document para 2.3, https://www.auda.org.au/assets/pdf/auda-2016-01.pdf. Paragraph 5 of the auDRP (and uDRP) also explicitly states that all other disputes regarding the domain name registration that are not initiated under the auDRP’s mandatory administrative proceedings are required to be resolved in court, arbitration, or any other type of proceeding available. If the registrar receives official documentation during the ten (10) day period that legal proceedings have been commenced, no further action will be taken until (i) evidence is produced that the matter has been resolved between the parties; (ii) evidence is produced that legal proceedings have been dismissed, withdrawn or abandoned; or (iii) a copy of a court order is produced either dismissing the proceeding, or ordering that the domain name holder does not have the right to continue to use the domain name. Note that legal proceedings also possibly being abandoned (in (ii) above) is not included under the uDRP under para 4(k), and was also not included in the DRWG’s first auDRP draft in May 2001. See auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules (May 2001), auDA, para 4(k), p 9, http://www.auda.org.au/pdf/drwgaudrp-draft.pdf. However, in June 2001, the DRWG proposed the inclusion of the possibility of abandoned legal proceedings in order to deal with situations where the losing respondent may “seek to delay implementation of the panel’s decision by initiating legal proceedings with no realistic expectation of success”. See auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 5, http://www.auda.org.au/pdf/drwg-audrp-final.pdf. .au Dispute Resolution Policy (auDRP) (Policy No: 2016-01) (15/04/2016), auDA, auDRP policy document para 7.1 https://www.auda.org.au/assets/pdf/auda-2016-01.pdf.

29

30

Australian Domain Name Law

[2.120]

of court proceedings either during or after the mandatory administrative proceeding: see auDRP and uDRP paragraph 4(k).94 With respect to the parameters of the relationship between auDRP proceedings and court proceedings, paragraph 4.14 of the auDA auDRP Overview 1.0 states: The general position is the same as that under the uDRP. Paragraph 4(k) of the auDRP states that neither the complainant nor the respondent is prevented from submitting the dispute to a court of competent jurisdiction for independent resolution, either before an administrative proceeding under the Policy has commenced or after it has concluded. Where either party initiates legal proceedings in relation to a domain name the subject of a complaint, either prior to or during the administrative proceeding, paragraph 18(a) of the auDRP Rules provides that the panel has the discretion to decide whether to suspend, to terminate or to continue with the proceeding. Although at least one auDRP panel has considered a request under paragraph 18(a) of the auDRP Rules to suspend or terminate a complaint due to a pending court proceeding, it appears that no auDRP panel has yet exercised its discretion to do so. In considering whether to exercise this discretion (which it declined), one panel took account of the following factors: (i) paragraph 4(k) contemplates the parallel operation of both auDRP and court proceedings; (ii) even where both sets of proceedings deal with the same issues and offer similar relief, court proceedings are determined using very different rules of evidence and procedure; and (iii) a decision to terminate or suspend proceedings requires strong justifying circumstances, to ensure the result is not at odds with the purpose of the Policy, described in paragraph 1.2 of the “Background” to the Policy as being “to provide a cheaper, speedier alternative to litigation for the resolution of disputes between the registrant of a .au domain name and a party with competing rights in the domain name”.95

The auDA auDRP Overview 1.0 cites Jacuzzi Inc v Wangra Pty Ltd,96 to be a relevant decision on this issue, which is discussed further in later chapters. On the question of whether auDRP proceedings can be suspended for purposes of settlement, paragraph 4.12 of the auDA auDRP Overview 1.0 provides: The position is unknown. Paragraph 17(a) of the auDRP Rules states that if, before the panel’s decision, the parties agree on a settlement, the panel shall terminate the administrative proceeding. However, the Rules and the Policy are silent on whether a panel can and should suspend proceedings during, or to permit, settlement discussions. It appears that no auDRP case has yet addressed the issue of suspending a complaint for the purposes of settlement. Thus, it is not clear whether – and, if so, in what circumstances – a complaint should be suspended during, or to permit, settlement discussions.97 94

95

96 97

See IAMA Case No 3065 (20 July 2007) with respect to the disputed domain name “unforgettable.com.au”. The “Outcome” of the decision on auDA’s website states: “No Further Action pursuant to Para 4(k) of the auDRP.” Note: the name of the parties are not visible on the auDRP Archived Proceedings 2007, auDA, http://www.auda.org.au/policies/ audrp/archived-proceedings/archive?year=2007. Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, pp 31-32, http:// www.auda.org.au/assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2005-0001 (24 August 2005). Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First

[2.130]

2: .au Dispute Resolution Policy (auDRP)

If the domain name is cancelled, it becomes available again for registration on a first to file basis. It is important to note that a domain name is not actually “owned” by the registrant – rather, it is “held” as a renewable licence. As the entitlement to hold a domain name is based in contract law (ie as a licence), it is possible to transfer the licence for a domain name to other entities. Both the auDRP and uDRP explicitly state that the registrars will not be involved in the conduct or administration of any proceedings before a panel (paragraph 4(h) of the auDRP and uDRP), nor be otherwise involved in any other dispute regarding the registration and use of the domain name (see paragraph 6 of the auDRP and the uDRP). On the issue of whether a registrar can be liable as a registrant under the auDRP, paragraph 4.11 of the auDA auDRP Overview 1.0 states: The position is unknown. It appears that no auDRP case has yet addressed the situation where the named registrant of the domain name is a registrar. Thus, it is not clear whether – and, if so, in what circumstances – the proper respondent can or should be a registrar. However, given the approach of auDRP panels to the issue of who is the proper respondent [see paragraph 4.9A], there appears to be no reason why a registrar could not be subject to an auDRP complaint in the event that it is the named registrant of a domain name.98

Finally, paragraph 8 of the auDRP (and uDRP) places certain limits on transfers of domain name registrations during a dispute. Paragraph 8(a)(i) of the policies provide that the domain name registration may not be transferred during a pending proceeding for at least fifteen (15) business days until after the proceeding has concluded; or during a pending court or arbitration proceeding, unless the transferee agrees (in writing) to be bound by the court or arbitration decision (see paragraph 8(a)(ii) of the auDRP and uDRP). Paragraph 8(b) of the policies provide that the domain name registration may not be transferred to another registrar during a pending proceeding for fifteen (15) business days until after the proceeding has concluded. However, paragraph 8(b) of the policies also provide that the domain name registration may be transferred to another registrar during a pending court or arbitration proceeding, provided that the registered domain name (that was registered with the original registrar) continue to be the subject of the commenced proceedings.

Remedies [2.130] Paragraph 4(i) of the auDRP outlines the remedies available to a complainant under the policy: The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant (provided that the complainant is otherwise eligible to hold that domain name).

Paragraph 4(i) of the uDRP is identical, except for the following words (which are in brackets in the auDRP): “provided that the complainant is otherwise eligible to hold that domain name”. These additional words were included in paragraph 4(i) of the auDRP based on the recommendations of the DRWG in

98

Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 31, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 31, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf.

31

32

Australian Domain Name Law

[2.130]

its June 2001 report to the auDA Board, which stated that successful complainants should be required to demonstrate eligibility against relevant criteria before the domain name could be transferred.99 As discussed above, this proposal was consistent with auDA’s Name Policy Advisory Panel’s final recommendations that registrants for .au 2LDs would need to demonstrate eligibility against set criteria.100 Thus, the remedies available under both the auDRP and uDRP are limited to either cancellation of the domain name, or transfer of the domain name to the complainant. If complainants are interested in pursuing additional remedies – such as damages or an injunction, they will need to pursue separate proceedings in court.

99

100

auDA Dispute Resolution Working Group, (auDRP) and Rules: Report to the auDA www.auda.org.au/pdf/drwg-audrp-final.pdf. auDA Dispute Resolution Working Group, (auDRP) and Rules: Report to the auDA www.auda.org.au/pdf/drwg-audrp-final.pdf.

Proposed .au Dispute Resolution Policy Board (June 2001), auDA, p 5, http:// Proposed .au Dispute Resolution Policy Board (June 2001), auDA, p 5, http://

3

Rules for .au Dispute Resolution Policy (auDRP Rules) [3.10] [3.20] [3.80] [3.100] [3.110] [3.120] [3.130]

Introduction..................................................................................................33 Relevant Provisions..................................................................................... 33 The Panel and Panel Decisions...................................................................44 Panels’ Approach in Decision Making..................................................... 49 Reverse Domain Name Hijacking............................................................ 50 Language of Proceedings.......................................................................... 52 Standard of Proof...................................................................................... 52

Introduction [3.10] As discussed in the previous chapter, the procedural rules for auDRP proceedings are governed by the auDRP Rules, and also the supplemental rules for individual providers. Both the auDRP and auDRP Rules have been adapted from the uDRP and uDRP. As noted previously, the auDRP Rules are annexed as Schedule B of the auDA policy document titled .au Dispute Resolution Policy (auDRP). The auDRP Rules are extracted in full in Appendix 2.

Relevant Provisions [3.20] Key terms in the auDRP Rules and uDRP are defined in paragraph 1 of the Rules. There were only minor changes made to the final version of paragraph 1 of the auDRP Rules from the earlier drafts produced by the DRWG in May 20011 and June 2001.2 The most significant change was in the definition of “Supplemental Rules” the earlier May3 and June4 versions stated that the providers’ supplemental rules could not be inconsistent with the auDRP or auDRP Rules. This is not reflected in the current version of paragraph 1, which only states that the “Supplemental Rules must be approved by auDA” – with no reference at all to inconsistency. The other significant change between the earlier versions of the auDRP Rules drafted by the DRWG 1 2

3

4

See auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules (May 2001), auDA, http://www.auda.org.au/pdf/drwg-audrp-draft.pdf. auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf. See auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules (May 2001), auDA, p 12, http://www.auda.org.au/pdf/drwg-audrpdraft.pdf. auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 13, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf.

34

[3.20]

Australian Domain Name Law

in May 20015 and June 20016 was the inclusion of a definition of “Written Notice” – which was not incorporated in the earlier drafts at all. Paragraph 2 of the auDRP Rules specifies the way in which a complaint must be communicated to a respondent by the provider, including what would constitute achieving “actual notice”. Again, there are no substantive differences between paragraph 2 of the auDRP Rules and the earlier versions produced by the DRWG in May 20017 and June 2001.8

The Complaint [3.30] Paragraph 3(a) of the auDRP and uDRP provides that “[a]ny person or entity” may submit a complaint to an auDA approved provider under the auDRP and auDRP Rules. Paragraph 3(b) of the auDRP and uDRP stipulates that the complaint (including any annexes) must be submitted to an approved provider in electronic form,9 and is required to: • request that the complaint be submitted for decision in accordance with the auDRP and auDRP Rules: paragraph 3(b)(i); • provide the name, postal and email addresses, and telephone and fax numbers of the complainant (and any of the complainant’s authorised representatives): paragraph 3(b)(ii); • specify the complainant’s paragraph 3(b)(iii);

preferred

method

for

communications:

• specify whether the complainant elects to have the dispute decided by a single member or a three member panel. If the complainant elects a three member panel: provide the names and contact details of three candidates to serve as one of the panelists (these may be drawn from any auDA approved list of panelists): paragraph 3(b)(iv); • provide the name of the respondent and all information known to complainant about how to contact the respondent (or any representative of the respondent): paragraph 3(b)(v); • specify the domain name(s) that are the subject of the dispute: paragraph 3(b)(vi); 5 6

7 8

9

See auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules (May 2001), auDA, http://www.auda.org.au/pdf/drwg-audrp-draft.pdf. auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf. See auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules (May 2001), auDA, http://www.auda.org.au/pdf/drwg-audrp-draft.pdf. auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf. Not surprisingly, the earlier drafts of paragraph 3(b) of the auDRP Rules produced by the DRWG in May and June 2001 required that the complaint be submitted both in hard copy and electronic form – hardcopy form is no longer stipulated. See auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules (May 2001), auDA, p 14, http://www.auda.org.au/pdf/drwg-audrp-draft.pdf; auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 15, http://www.auda.org.au/pdf/drwg-audrp-final.pdf.

[3.30]

3: Rules for .au Dispute Resolution Policy (auDRP Rules)

• specify the registrar(s) with whom the domain name(s) are registered: paragraph 3(b)(vii); • specify the name(s), trade mark(s), or service mark(s) on which the complaint is based and, for each mark, describe the goods or services with which the mark is used (the complainant may also separately state other goods and services with which it intends to use the mark in the future): paragraph 3(b)(viii); • specify the grounds on which the complaint is made: paragraph 3(b)(ix); • specify the remedies sought: paragraph 3(b)(x); • specify whether any other legal proceedings have been commenced or terminated in connection with the dispute: paragraph 3(b)(xi); • state whether a copy of the complaint has been sent or transmitted to the respondent in accordance with paragraph 2(b) of the auDRP Rules: paragraph 3(b)(xii);10 • state that the complainant will submit to the jurisdiction of the courts in at least one specified mutual jurisdiction:11 paragraph 3(b)(xiii); • conclude with a prescribed statement that: 1. waives all claims and remedies against (a) the dispute resolution provider and panelists (except in the case of deliberate wrongdoing), (b) the registrar, (c) the registry administrator, and (d) auDA (including its directors, officers, employees, and agents); and 2. certifies that the complaint is to the best of complainant’s knowledge complete and accurate, is not being presented for any improper purpose, and that assertions in the complaint are warranted under the auDRP Rules and applicable law: paragraph 3(b)(xiv); and • annex any documentary or other evidence, including any name, trade mark or service mark registration: paragraph 3(b)(xv). Paragraph 3(c) of the auDRP and uDRP stipulates that “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”12 Under the general powers of the 10

11

12

Note that paragraph 3(b)(xii) of the uDRP are slightly different, and require the complainant to state that a copy of the complaint has been sent or transmitted to the respondent before (or at the same time as) it has been sent to the provider. In the DRWG’s report to the auDA Board in June 2001, it recommended amending this paragraph to include the word “whether” because “this early notification gives a bad faith respondent time to avoid the complaint by, for example, setting up a bogus website to show ‘use’ of the domain name. The DRWG has amended this clause so that a complainant is not required to send a copy of the complaint to the respondent before it is sent to the Provider; however, if the complainant does so, then it should advise the Provider accordingly.” See auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 16, http://www.auda.org.au/pdf/drwg-audrp-final.pdf. Paragraph 1 of the auDRP Rules defines “mutual jurisdiction” as “a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain name holder has submitted in its Registrant Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain name holder’s address as shown for the registration of the domain name in the registry database at the time the complaint is submitted to the Provider.” For a discussion of paragraph 3(c) of the auDRP Rules see Smart Voucher Ltd t/as Ukash v Chowdhury, MD Abu Russel and Sydney Business & Technology Group Pty Ltd WIPO Case No DAU2013-0006 (8 May 2013).

35

36

[3.30]

Australian Domain Name Law

panel, multiple domain name disputes paragraph 10(e) of the auDRP and uDRP.

may

also

be

consolidated:

On the question of when may further domain names be added to a filed complaint, paragraph 4.8 of the auDA auDRP Overview 1.0 states: The position is unknown. Paragraph 3(c) of the auDRP Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain holder [see paragraph 4.8A]. However, the Rules and the Policy are silent on when additional domain names may be added to a complaint after it has been filed. It appears that no auDRP case has yet addressed the issue of adding further domain names to a complaint that has already been filed. Thus, it is not clear whether – and, if so, in what circumstances – additional domain names may be added to a complaint after it has been filed.13

[3.40] Similarly, on the question of under what circumstances may a complaint be filed in relation to multiple domain names, paragraph 4.8A of the auDA auDRP Overview 1.0 provides: The position is uncertain. Paragraph 3(c) of the auDRP Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain holder. One auDRP panel, citing advice from auDA that the paragraph 3(c) proviso is intended to apply strictly, has refused to permit a single complaint to be brought in relation to multiple domain names where the registrant of each domain name was not the same person, even though the complainant contended that the registrants “had a unity of interest under related control”. However, another auDRP panel has permitted a single complaint to be brought in relation to multiple domain names even though the registrant of each was a separate legal entity, in circumstances where: (i) the two registrants were sufficiently closely associated or related to mean that the domain names were subject to common control (the first, an individual, was the Director and Company Secretary of the second, a company); and (ii) there was no denial of a relationship between the two respondents made in the single response filed (by the first respondent). [See paragraph 4.16(ii) on the issue of when a single consolidated complaint can be brought against multiple respondents].14

The auDA auDRP Overview 1.0 cites Jacuzzi Inc v Wangra Pty Ltd,15 and Smart Voucher Ltd t/as Ukash v Chowdhury, MD Abu Russel and Sydney Business & Technology Group Pty Ltd16 to be relevant decisions on this issue. These decisions have been discussed in later chapters. On the issue of under what circumstances can a refiled case be accepted, paragraph 4.4 of the auDA auDRP Overview 1.0 states: The general position is the same as that under the uDRP. 13

14

15 16

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 29, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 29, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2005-0001 (24 August 2005). WIPO Case No DAU2013-0006 (8 May 2013).

[3.40]

3: Rules for .au Dispute Resolution Policy (auDRP Rules)

A refiled case is one where the complainant submits a second complaint involving the same domain name(s) and the same respondent(s) as in an earlier complaint that was denied. A refiled case will only be accepted in limited circumstances. These circumstances include: (i) that relevant new actions have occurred since the original decision; (ii) that a breach of natural justice or of due process occurred; or (iii) that there was some other serious misconduct in the original case, such as perjured evidence. A refiled complaint would usually also be accepted if it includes newly presented evidence that was reasonably unavailable to the complainant during the original case. In certain, highly limited circumstances, a panel in a previous case may have found it appropriate to record in its decision that a future refiled complaint should be accepted if certain conditions are met. Where this has occurred, the extent to which any such previously-stipulated panel conditions have been met may also be a relevant consideration in determining whether the refiled complaint should be accepted.17

The auDA auDRP Overview 1.0 cites the following decisions to be relevant on this issue: Curtain Communications Pty Ltd v Leann Webb;18 Doteasy Technology Inc v M Makras & EA Nahed, Dot Easy Australia Pty Ltd;19 Inbound Telecommunications Pty Ltd, Phonename Marketing Australia Pty Ltd v 1300 Directory Pty Ltd, Demetrio Padilla.20 These decisions have been considered in the following chapters. The issue of a refiled complaint was considered in Cash Converters Pty Ltd v Casshies Investments Pty Ltd,21 where the the panelist found the refiled complaint inadmissible. The panelist held: There was no allegation by the complainant of serious misconduct or denial of natural justice in the deliberations under the previous complaint. A serious burden rests with the complainant to show that the dispute should be revisited. The matter raised by the Refiled Complaint has either been considered already and/or has no influence of the assessment of possible respondent’s bad faith behaviour.22

On the question of whether delay in bringing a complaint prevents a complainant from filing under the auDRP, paragraph 4.10 of the auDA auDRP Overview 1.0 suggests: The general position is the same as that under the uDRP. auDRP panels have recognised that the doctrine or defence of laches does not generally apply under the auDRP. Thus, delay in bringing a complaint (judged by reference to the time since registration of the disputed domain name) does not, of itself, prevent a complainant from filing under the auDRP or from succeeding under the auDRP. However, panels have also noted that a delay in bringing a complaint may make it more difficult for a complainant to establish its case on the merits, especially in relation to the second and third elements of the Policy. In 17

18 19 20 21 22

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 27, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2008-0022 (16 February 2009). WIPO Case No DAU2011-0041 (4 February 2012). WIPO Case No DAU2009-0018 (21 April 2010). WIPO Case No DAU2014-0035 (21 February 2015). Interestingly, the panelist referred to the WIPO Overview 2.0 instead of the auDA auDRP Overview 1.0 on refiled cases. See WIPO Overview 2.0, WIPO, paragraph 4.4:http:// www.wipo.int/amc/en/domains/search/overview/.

37

38

Australian Domain Name Law

[3.40]

particular, delay in bringing a complaint in the situation where the respondent is using the domain name in connection with relevant goods or services may result in the respondent acquiring a right or legitimate interest in the domain name, when it previously had none, that is sufficient to defeat a claim under the Policy – even where the initial registration of the domain name was in bad faith.23

The auDA auDRP Overview 1.0 cites the following decisions to be relevant on this issue: Jacuzzi Inc v Wangra Pty Ltd;24 Colmar Brunton Pty Ltd v Alta Computer Systems Pty Ltd;25 Clinic Care Pty Ltd v Emma Redgate Payne (aka Emma Johnson);26 and Victoria’s Secret Stores Brand Management Inc v Linda Cameron Pickard, Linda Watson.27 These decisions are analysed in later chapters. With respect to the issue of delay, the panelist in the recent decision of Illycaffè SpA v John Frisco & Associates Pty Ltd t/as Illycafe / CEW Pty Ltd28 observed: As paragraph 4.10 of the auDRP Overview 1.0 explains, auDRP panels have recognised that the doctrine or defence of laches does not generally apply under the auDRP. Thus, delay in bringing a complaint does not, of itself, prevent a complainant from filing under the auDRP or from succeeding under the auDRP. However, panels have also noted that a delay in bringing a complaint may make it more difficult for a complainant to establish its case on the merits, especially in relation to the second and third elements of the Policy. In particular, delay in bringing a complaint in the situation where the respondent is using the domain name in connection with relevant goods or services may result in the respondent acquiring a right or legitimate interest in the domain name, when it previously had none, that is sufficient to defeat a claim under the Policy.29

Notification of the Complaint [3.50] Paragraph 4(a) of the auDRP and uDRP require the provider to “review the complaint for administrative compliance” and, if in compliance, send “written notice”30 of the complaint to the respondent within three calendar days following receipt of fees to be paid by the complainant. Paragraph 2(a) of the auDRP Rules require the provider to use “reasonably available means calculated to achieve actual notice to Respondent”, and the following measures will discharge this responsibility: • sending the complaint to all postal mail and facsimile addresses supplied by registrar to the provider (paragraph 2(a)(i) of the auDRP Rules); and 23

24 25 26 27 28 29 30

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 30-31, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2005-0001 (24 August 2005). LEADR Case No auDRP18/10 (16 December 2010). WIPO Case No DAU2011-0027 (15 December 2011). WIPO Case No DAU2012-0015 (3 July 2012). WIPO Case No DAU2015-0009 (23 April 2015). However, the panelist found for the complainant in this decision as the respondent’s use of the disputed domain name was not in connection with a bona fide offering of goods. Paragraph 1 of the auDRP Rules defines “written notice” as “hardcopy notification by the Provider to the Respondent of the commencement of an administrative proceeding under the Policy which shall inform the respondent that a complaint has been filed against it, and which shall state that the Provider has electronically transmitted the complaint including annexes to the Respondent by means specified herein. Written notice does not include a hardcopy of the complaint itself or of any annexes.”

[3.60]

3: Rules for .au Dispute Resolution Policy (auDRP Rules)

• sending the complaint by email to: (a) the email addresses for the respondent; (b) postmaster@; and (c) any email addresses or email links on active web pages to which the disputed domain name resolves (paragraph 2(a)(ii) of the auDRP Rules); and • sending the complaint to any email address preferred by the respondent and, to the extent practicable, all other email addresses provided by the complainant to the provider (paragraph 2(a)(iii) of the auDRP Rules). Paragraph 4(c) of the auDRP and uDRP states that the date of commencement of the proceeding will be the date on which the provider completes its responsibilities under paragraph 2(a) of the auDRP and uDRP with respect to notifying the respondent of the complaint. Paragraph 4(d) of the auDRP and uDRP also requires the provider to immediately notify the complainant, the respondent, the concerned registrar(s), and auDA of the date of commencement of the proceeding.

The Response [3.60] Paragraph 5 of the auDRP and uDRP outlines the procedure for the respondent to submit their response to the provider. Paragraph 5(a) of the auDRP Rules provides: “No later than twenty (20) days after the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider.” The wording in the corresponding paragraph 5(a) of the uDRP is slightly different, and instead states: “Within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider.” The DRWG in its June 2001 report recommended this change as “the wording of this clause has caused some confusion as to whether the 20 days is inclusive or exclusive of the date of commencement of the administrative proceeding. The DRWG has amended the wording to make it clear that the 20 days does not include the date of commencement.”31 Despite the requirement for the respondent to file a response no later than 20 days under paragraph 5(a) of the auDRP Rules, paragraph 5(d) of the auDRP and uDRP state that this period may be extended by the provider at the request of the respondent, or by written stipulation between the parties. Paragraph 5(e) of the auDRP and uDRP also provides that if a response is not submitted the panel will decide the dispute based on the complaint (in exceptional circumstances). Paragraph 5(e) of the auDRP and uDRP is reinforced by the rules relating to default under paragraph 14(a) which states: “In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.” As will be explored in the following chapters, there is a divergence of views amongst panelists in auDRP decisions to date with respect to what would be counted as “exceptional” circumstances. Paragraph 5(b) of the auDRP and uDRP stipulates that the response (including any annexes) is to be submitted in electronic form,32 and is required to: 31

32

auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 6, http:// www.auda.org.au/pdf/drwg-audrp-final.pdf. Not surprisingly, the earlier drafts of paragraph 5(b) of the auDRP Rules produced by the DRWG in May and June 2001 required that the complaint be submitted both in hard copy and electronic form – hardcopy form is no longer stipulated. See auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules (May 2001),

39

40

Australian Domain Name Law

[3.60]

• respond specifically to the statements and allegations contained in the complaint, and include any and all bases for the respondent to retain registration and use of the disputed domain name: paragraph 5(b)(i); • provide the name, postal and email addresses, and telephone and telefax numbers of the respondent (and any of the respondent’s authorised representatives): paragraph 5(b)(ii); • specify the respondent’s preferred method for communications for electronic-only material, and hard copy material: paragraph 5(b)(iii); • if the complainant has elected a single member panel (under paragraph 3(b)(iv) of the auDRP Rules), state whether the respondent elects instead to have the dispute decided by a three member panel: paragraph 5(b)(iv);33 • if either the complainant or the respondent elects a three member panel, provide the names and contact details of three candidates to serve as one of the panelists (these may be drawn from any auDA approved list of panelists): paragraph 5(b)(v); • specify whether any other legal proceedings have been commenced or terminated in connection with the dispute: paragraph 5(b)(vi); • state that a copy of the response has been sent or transmitted to the complainant (in accordance with paragraph 2(b) of the auDRP Rules): paragraph 5(b)(vii); and • conclude with a prescribed statement that 1. waives all claims and remedies against (a) the dispute resolution provider and panelists (except in the case of deliberate wrongdoing), (b) the registrar, (c) the registry administrator, and (d) auDA (including its directors, officers, employees, and agents);34 and 2. certifies that the response is to the best of the respondent’s knowledge complete and accurate, is not being presented for any improper purpose, and that assertions in the response are warranted under the auDRP Rules and applicable law: paragraph 5(b)(viii); and • annex any documentary or other evidence upon which the respondent relies: paragraph 5(b)(ix).

33

34

auDA, p 16, http://www.auda.org.au/pdf/drwg-audrp-draft.pdf; auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 17, http://www.auda.org.au/pdf/drwg-audrp-final.pdf. Note that paragraph 5(c) of the auDRP (and uDRP) Rules states that: ″If complainant has elected to have the dispute decided by a single member panel and respondent elects a three member panel, respondent shall be required to pay one-half of the applicable fee for a three member panel as set forth in the Provider’s Supplemental Rules.″ Note that this first prescribed statement is not included in the corresponding paragraph 5(b)(viii) of the uDRP. This was included in paragraph 5(b)(viii) of the auDRP Rules based on the recommendation of the DRWG in its Report to the auDA Board in June 2001 for the following reason: “The uDRP include a waiver clause that restricts the complainant’s claims and remedies to the respondent, and explicitly excludes all other parties. The DRWG sees value in including a similar waiver clause with regard to respondents.” See auDA Dispute Resolution Working Group, Proposed .au Dispute Resolution Policy (auDRP) and Rules: Report to the auDA Board (June 2001), auDA, p 6, http://www.auda.org.au/pdf/drwg-audrp-final.pdf.

[3.70]

3: Rules for .au Dispute Resolution Policy (auDRP Rules)

Despite the formal requirements set out above under paragraph 5(b) of the auDRP Rules, the majority of auDRP panels have held that they have a discretion to consider responses – even if not all of the formal requirements are met. Where the respondent fails to respond to the complaint, paragraph 4.6 of the auDA auDRP Overview 1.0 states: The general position is the same as that under the uDRP. A respondent’s default does not automatically result in a decision in favor of the complainant. Subject to the principles described in [paragraph 2.1] with regard to the second element of the auDRP, the complainant must establish each of the three elements required by paragraph 4(a) of the Policy. However, panels may draw appropriate inferences from a respondent’s default, including that the complainant’s factual allegations that are not inherently implausible are true, and that any evidence the respondent might have given would not have been in its favour.35

The auDA auDRP Overview 1.0 cites the following to be relevant on this point: MGM Home Entertainment and others v McIlroy Group Management Pty Ltd;36 Supre Pty Ltd v Paul King;37 and Harness Racing Australia v Acronym Wiki Pty Ltd.38 These decisions have been considered in the following chapters. The auDA auDRP Overview 1.0 also cites Jasham Pty Ltd v Perfume Empire Pty Ltd39 to be a relevant decision, where the panelist held on this issue: The panel notes that the Respondent’s failure to make any submission in relation to this complaint does not automatically result in a decision in favour of the complainant. The complaint is still required to establish each of the three basic elements as required by paragraph 4 of the auDRP. However, the panel is satisfied that the complainant to have successfully demonstrated the required elements of paragraph 4 of auDRP.

[3.70] On the question of who is the proper respondent in a case involving a privacy or proxy registration service, paragraph 4.9 of the auDA auDRP Overview 1.0 explains: The position is unknown. It appears that no auDRP case has yet addressed the situation where the named registrant of the domain name is a privacy or proxy registration service. Thus, it is not clear whether – and, if so, in what circumstances – the proper respondent can or should be a privacy or proxy registration service. The reason for this is auDA’s policy prohibiting the use of privacy or proxy registration services (currently “2010-07 – Registrant Contact Information Policy”). Under paragraph 2.4(b) of that policy, a registrant must not “do anything which may have the effect of concealing the true identity of the registrant or the registrant contact (eg by using a private or proxy registration service), unless specifically permitted otherwise by another auDA published policy” [see paragraph 3.9].40 35

36 37 38 39 40

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 28, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2003-0006 (29 December 2003). WIPO Case No DAU2004-0006 (22 December 2004). WIPO Case No DAU2011-0007 (13 May 2011). LEADR Case No auDRP01/06 (20 February 2006). Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First

41

42

Australian Domain Name Law

[3.70]

With respect to the broader question of who is the proper respondent generally, paragraph 4.9A of the auDA auDRP Overview 1.0 provides the following guidance: The general position is somewhat different from that under the uDRP. Paragraph 1 of the auDRP Rules defines the “respondent” to be “the holder of a domain name registration against which a complaint is initiated”. Consistent with this, paragraph 3(b)(v) of the auDRP Rules requires that “the name of the Respondent (domain name holder)” be provided in the complaint. It is clear that the entity listed in the relevant WHOIS record as being the registrant of the domain name is a “holder” of the domain name. What is not clear, however, is when other entities can also be treated as a “holder” of the domain name. At least one auDRP panel has held that a complaint filed against an individual who was most likely related to the company identified as the registrant of the domain name – in the capacity of being either a Director or Company Secretary of the company – was not brought against the proper respondent; and, for this reason, the complaint was denied.41

This was found in Bikram Yoga Australia Pty Ltd v Mark Reinierse.42 The auDA auDRP Overview 1.0 also cites Clark Equipment Co v AllJap Machinery Pty Ltd43 to be a relevant decision on this issue, which is discussed further in later chapters. On the issue of whether a panel can decide a case based on a respondent’s consent to transfer, paragraph 4.13 of the auDA auDRP Overview 1.0 suggests: The general position is the same as that under the uDRP. Where a respondent has stated, either in its response or some other communication to the panel, that it consents to a transfer of a domain name, auDRP panels have given effect to this by ordering transfer without consideration of whether the paragraph 4(a) requirements of the Policy are satisfied. For this to occur, the respondent’s consent to transfer must be genuine, unconditional and unilateral. Where the consent to transfer is conditional – for example, in return for payment of a fee – panels generally proceed to consider the merits of the complaint.44

As the panelist in People Telecom Ltd v A Marshall Computer Services Pty Ltd45 found: The respondent has asserted that they would have no objections to transferring the domain name to the complainant. It is important to note that at the time of this decision, no formal settlement had been agreed upon between the parties and therefore, Rule 17(a) of the auDRP fails to come into effect and the administrative proceedings have not been terminated. Rule 10 of auDRP provides the panel with general powers to conduct the administrative proceedings in such a manner as it considers appropriate in accordance with the Policy and the Rules. Additionally,

41

42 43 44

45

Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 29-30, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 30, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. LEADR Case No auDRP17/10 (3 December 2010), p 7-8 [5.2.1]. WIPO Case No DAU2011-0042 (5 March 2012). Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 31, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. LEADR Case No auDRP03/04 (18 June 2004), p 3.

[3.70]

3: Rules for .au Dispute Resolution Policy (auDRP Rules)

the panel is empowered to ensure that the parties are treated equally. Rule 15 of auDRP states that: “A panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and rules and principles of law that it deems applicable.” The panel has the general power to grant the transfer of the domain name based on the facts and Rule 15. The complainant is eligible to register the domain name, due its use of the common law trade mark PEOPLE TELECOM; and the respondent is willing to transfer the domain name to the complainant. The panel finds, as respondent is willing to transfer the domain name, that there is no need to discuss the other contentions between the parties and that the domain name should be transferred. Please note that other issues relating to Clause 4 of Schedule A of the auDRP are not relevant as both Parties have agreed to the transfer of the domain name. There is no need to discuss the other issues further.

This was repeated (almost verbatim) by the panelist John Royle in ABC Learning Centres Ltd v MJ Central Pty Ltd,46 where he held: The respondent has asserted that it would consent to the transfer of the domain names to the complainant. It is important to note that at the time of this decision, no formal settlement had been agreed upon between the parties and therefore, Rule 17(a) of the auDRP fails to come into effect and the administrative proceedings have not been terminated. Rule 10 of auDRP provides the panel with general powers to conduct the administrative proceedings in such a manner as it considers appropriate in accordance with the Policy and the Rules. Additionally, the panel is empowered to ensure that the Parties are treated equally. Rule 15 of auDRP states that: “A panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and rules and principles of law that it deems applicable.” The panel has the general power to grant the transfer of the domain names based on the facts and Rule 15. The complainant is eligible to register the domain names… The panel finds, as the respondent is willing to transfer the domain names, that the domain names should be transferred. Please note that other issues relating to Clause 4 of Schedule A of the auDRP are not relevant as both parties have agreed to the transfer of the domain names. There is no need to discuss any other issues.

On this topic, the panelist in Marvel Characters Inc Pixar and Disney Enterprises Inc v Jason Carmody, James Kite47 held: the respondent has consented to the transfer of the disputed domain names to the complainant. “[A] genuine unilateral consent to transfer by the respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements” (See Cartoon Network LP, LLLP v Mike Morgan). The panel agrees with this approach.

The auDA auDRP Overview 1.0 also cites PARROT v Binh An Nguyen48 to be a relevant decision on this issue, which is discussed further in later chapters. The issue of a respondent’s consent to transfer was recently considered in BlackBerry Ltd v Computer Ezy Pty Ltd,49 where the panel found that the respondent had failed to provide “genuine, unconditional and unilateral” consent to transfer. 46 47 48 49

LEADR Case No auDRP04/04 (2 August 2004), p 3. WIPO Case No DAU2013-0036 (21 January 2014). WIPO Case No DAU2011-0016 (24 August 2011). WIPO Case No DAU2015-0029 (11 November 2015).

43

44

Australian Domain Name Law

[3.80]

The Panel and Panel Decisions [3.80] There are several provisions in the auDRP Rules that deal specifically with the panel, panel decisions, the duties and obligations of the panel, and the general powers of the panel. Several of these have already been discussed above and in the previous chapter. The broad powers of the panel are outlined in paragraph 10 of the auDRP and uDRP: (a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules. (b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. (c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel. (d) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence. (e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.

On the question of whether a panel can perform independent research when reaching a decision, paragraph 4.5 of the auDA auDRP Overview 1.0 suggests the following: The general position is the same as that under the uDRP. Panels have undertaken limited factual research into matters of public record where it has considered this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name, consulting an Internet archive repository in order to obtain an indication of how a domain name may have been used in the past, reviewing dictionaries or encyclopedias to determine any common meaning of words, or discretionary referencing of online trademark registration databases. A panel may also rely on personal knowledge.50

The auDA auDRP Overview 1.0 cites the following decisions to be relevant on this issue: Frenbray Pty Ltd v Weyvale Pty Ltd;51 Google Inc v Dmitri Rytsk;52 Skycity Adelaide Pty Ltd v Trellian Pty Ltd;53 and Virtual Industries Group Ltd v Mr Simon Totonjian.54 These decisions have been discussed in other chapters. A number of auDRP panels have clearly enunciated when they have performed independent research for verifying the evidence (or lack thereof). For example, the panelist in TeamViewer GmbH v Nigel Burke55 stated: “The panel performed independent research, as it is entitled to (see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected uDRP Questions, Second 50

51 52 53 54 55

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 28, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. LEADR Case No auDRP06/06 (24 June 2006). WIPO Case No DAU2007-0004 (8 August 2007). IAMA Case No 3353 (24 October 2009), p 4. LEADR Case No auDRP03/12 (22 May 2012). WIPO Case No DAU2012-0027 (19 December 2012).

[3.80]

3: Rules for .au Dispute Resolution Policy (auDRP Rules)

Edition (‘WIPO Overview 2.0’).” On this same issue, the learned three member panel in GlobalCenter Pty Ltd v Global Domain Hosting Pty Ltd56 held (in a footnote): Panelist Limbury takes the view that the panel is precluded by Rules 10(a) and 15(a) from conducting its own factual investigations and may not therefore visit websites unless invited by a party to the dispute to do so as part of its submission. Quite apart from this requirement of the Rules, a visit to a respondent’s site after the commencement of proceedings inevitably raises the question, as it has here, whether the site has changed since notice of the subject matter of the dispute was given to the respondent. See: Jazid Inc/Michelle McKinnon v Rennemo Steinar, eResolution Case No AF-0807: “[It is not] the burden of the panel to seek further evidence (other than judicial knowledge) to sustain the parties’ allegations, as this may be disruptive of the arbitration process. Therefore, the burden rests on the parties to either support or sustain their allegations with the appropriate documentation whenever possible.” Panelist Argy takes the view that the panel is entitled to have regard to any freely available online public material that is germane to an issue in dispute. Although not relevant in this case, resort to the Wayback Machine at “http:// www.archive.com” would be an example of a tool that panelist Argy would regard as legitimate for a panel to use to view prior versions of websites where there is a dispute as to their content.

The general duties of impartiality and independence of the panel are provided for in paragraph 7 of the auDRP and uDRP: A Panelist shall be impartial and independent and shall have, before accepting appointment, disclosed to the Provider any circumstances giving rise to justifiable doubt as to the Panelist’s impartiality or independence. If, at any stage during the administrative proceeding, new circumstances arise that could give rise to justifiable doubt as to the impartiality or independence of the Panelist, that Panelist shall promptly disclose such circumstances to the Provider. In such event, the Provider shall have the discretion to appoint a substitute Panelist.

Paragraph 15 of the auDRP and uDRP details the obligations and duties of the panel with respect to panel decisions. Paragraph 15(b) of the auDRP and uDRP stipulates that in the absence of exceptional circumstances, the panel is required to forward its decision to the provider within fourteen (14) days of its appointment pursuant to paragraph 6 of the auDRP and uDRP. Paragraph 6 outlines the rules for the appointment of panels and the timing of panel decisions. Paragraph 6(b) of the auDRP and uDRP states that where neither the complainant nor the respondent has elected a three member panel, the provider shall appoint a single member panel from its publicly available list of panelists.57 The fees for a single member panel is required to be paid entirely by the complainant.58 Paragraph 6(c) of the auDRP and uDRP states that where either party elects to have the dispute decided by a three member panel, the provider is required to appoint three panelists in accordance with paragraph 6(e) of the auDRP and uDRP. The fees for a three member panel is to be paid wholly by the complainant, except where the respondent elects to have a three member 56 57 58

WIPO Case No DAU2002-0001 (5 March 2003). Paragraph 6(a) of the auDRP and uDRP state that each provider is required to publish and maintain a publicly available list of panelists and their qualifications. Paragraph 6(b) of the auDRP and uDRP. See further paragraph 19 of the auDRP and uDRP which deal specifically with fees.

45

46

Australian Domain Name Law

[3.80]

panel – in which case the applicable fees are shared equally between the parties.59 Paragraph 6(e) of the auDRP and uDRP provide: In the event that either the Complainant or the Respondent elects a three member Panel, the Provider shall endeavour to appoint one Panelist from the list of candidates provided by each of the Complainant and the Respondent. In the event the Provider is unable within five (5) calendar days to secure the appointment of a Panelist on its customary terms from either Party’s list of candidates, the Provider shall make that appointment from its list of panelists. The third Panelist shall be appointed by the Provider from a list of five candidates submitted by the Provider to the Parties, the Provider’s selection from among the five being made in a manner that reasonably balances the preferences of both Parties, as they may specify to the Provider within five (5) calendar days of the Provider’s submission of the five candidate list to the Parties.

[3.90] Finally, paragraph 6(d) of the auDRP and UDRP Rules provides that unless the complainant has already elected a three member panel, the complainant will submit to the provider the contact details of three candidates to serve as one of the panelists within five (5) calendar days of communication of a response in which the respondent also elects a three member panel. With respect to three member panels, paragraph 15(c) of the auDRP and uDRP provide that the decision will be made by majority. Decisions must be made in writing (see paragraph 15(d) of the auDRP and uDRP), and panel decisions (including dissenting opinions) should normally comply with the guidelines as to length outlined in the providers’ supplemental rules (see paragraph 15(e) of the auDRP and uDRP). After the panel forwards its decision to the provider within fourteen days (pursuant to auDRP and uDRP paragraph 15(b)), the provider is then required to communicate the decision to each party within three days after receiving the decision from the panel: auDRP and uDRP paragraph 16(a). The provider is also required to publish the full text of the decision on a publicly accessible website: auDRP and uDRP paragraph 16(b). The panels are given fairly broad discretionary powers with respect to how they should go about actually deciding a dispute. Paragraph 15(a) of the auDRP and uDRP provides: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Further, paragraph 12 of the auDRP and uDRP states that the panel has sole discretion to request or permit further statements or documents from the parties in addition to the complaint and the response. The importance of using proper form in the submissions was highlighted by the panelist (Philip Argy) in Yaffa Publishing Group Pty Ltd v Jackaroo Solutions Pty Ltd:60 The complaint is poorly constructed and relatively bald in its submissions. Little attempt is made to cite which portions of the evidence support which submission. For the most part it seems to assume that the panel will find amongst the annexed evidence enough to make good the complaint. This is not an approach the panel would like to encourage. A complainant needs to put a bit more effort into its complaint if it is not to risk getting a panel offside. A panellist should not have to 59 60

Paragraph 6(c) of the auDRP and uDRP. See further paragraph 19 of the auDRP and uDRP which deal specifically with fees. LEADR Case No auDRP05/10 (31 March 2010).

[3.90]

3: Rules for .au Dispute Resolution Policy (auDRP Rules)

wade through the evidence to find the salient bits to support the complaint, despite the language of paragraph 15(a) of the Rules.

On the issue of the relevance of national law(s) for panels when assessing rights and legitimate interests and/or bad faith, paragraph 4.15 of the auDA auDRP Overview 1.0 states: The general position is the same as that under the uDRP. Paragraph 15 (a) of the auDRP Rules provides that a panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Like the uDRP from which it is adapted, the auDRP is rooted in generally-recognised principles of trademark law and is designed to operate in the context of the Internet – and, for this reason, generally does not require resort to concepts or jurisprudence specific to national law. In the few cases where a panel has referred to Australian legal principles or case law, it is has been to trademark law, either for the purpose of assessing whether the complainant has rights in a trademark or for determining whether the respondent has rights or legitimate interests in a domain name.61

The auDA auDRP Overview 1.0 cites the following decisions to be relevant on this issue: The Crown in Right of the State of Tasmania t/as Tourism Tasmania v Gordon James Craven,62 and Emirates, Emirates Group v Bluecom Consulting Group Pty Ltd.63 These decisions are discussed in later chapters. With respect to the question of whether a provider will submit an unsolicited supplemental filing before a panel, and in what circumstances would a panel accept such filing, paragraph 4.2 of the auDA auDRP Overview 1.0 suggests: The general position is the same as that under the uDRP. Rule 12 of the auDRP Rules provides that, in addition to the complaint and the response, the panel may request or permit, in its sole discretion, further statements or documents from either of the parties. It appears that the service provider will, as a matter of course, put unsolicited statements before the panel, on the basis that it is for the panel to decide whether to admit such statements into the case record. In exercising their discretion whether to accept an unsolicited supplemental filing from either party, panels bear in mind the need for procedural efficiency, the obligation to ensure that each party has a fair opportunity to present its case, and the obligation to treat each party with equality. Generally, panels will only accept an unsolicited supplementary filing in “exceptional” circumstances – such as where the information or evidence was unanticipated as relevant, or was unavailable, at the time of the original filing. The party submitting a supplemental filing would normally need to show its relevance to the case and why the circumstances are exceptional. In at least one case, the panel admitted the respondent’s supplemental filings, because they were submitted “only marginally later” than the response and gave details not previously provided to the complainant of a matter on which the respondent relied in its response; the panel also admitted the complainant’s supplementary filing insofar as it addressed that issue. Panels that have accepted a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing. In either 61

62 63

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 32, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2003-0001 (16 April 2003). WIPO Case No DAU2008-0004 (18 April 2008).

47

48

Australian Domain Name Law

[3.90]

scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of an administrative panel order.64

The auDA auDRP Overview 1.0 cites the following to be relevant on this issue: Jupitermedia Corp and Australia.Internet.com Pty Ltd v Spotpress Pty Ltd t/as Internet Printing;65 Jenna IP Holding Company LLC v Mobile Alive Pty Ltd;66 Clark Equipment Co v AllJap Machinery Pty Ltd;67 Terra Plana International Ltd v The Summer House Australia Pty Ltd/Tanya Greenwood;68 Brilliance Publishing Inc v My Brilliance Pty Ltd / Ceinwen Schneider;69 Productreview.com.au Pty Ltd v Jobsearch Business Systems Pty Ltd;70 and M/s Info Edge (India) Ltd v Harjeet Singh / Harry Singh.71 In Pindan Pty Ltd v Kre8 Brand Pty Ltd and Different Pty Ltd,72 the panelist observed: “Generally, panels will only accept supplementary filings in exceptional circumstances.” The panelist accepted the parties supplementary statements in this decision “to the extent that they clarify the proper respondent to the proceeding.” Interestingly, while the majority panel decided to admit the complainant’s supplemental filing in Orthopaedics SA PL v Tony Spriggins,73 the minority panelist disagreed with this decision. The minority panelist argued that the auDRP and uDRP “are intended to be a summary process with limited formality, tight time lines and limited remedies” and supplemental filings should be “granted only sparingly and in very limited circumstances.”74 The panel in Twitter Inc v Jason Boyce75 allowed the complainant’s supplemental filing, because it related to issues raised in the original response which the complainant could not have reasonably known when it made its primary submission. The panel held: The principles which the panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under both the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) see, ie, The E.W. Scripps Co v Sinologic Industries The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known of the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.

64

65 66 67 68 69 70 71 72 73 74 75

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 26-27, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2003-0005 (17 February 2004). WIPO Case No DAU2006-0013 (7 February 2007). WIPO Case No DAU2011-0042 (5 March 2012). WIPO Case No DAU2012-0025 (22 November 2012). WIPO Case No DAU2013-0007 (28 May 2013). IAMA Case No 3763 (18 June 2013). WIPO Case No DAU2013-0022 (29 November 2013). WIPO Case No DAU2013-0039 (17 February 2014). LEADR Case No auDRP08/15 (23 November 2015). LEADR Case No auDRP08/15 (23 November 2015), p 15. WIPO Case No DAU2015-0034 (4 November 2015).

[3.100]

3: Rules for .au Dispute Resolution Policy (auDRP Rules)

Panels’ Approach in Decision Making What deference is owed to past auDRP and uDRP decisions dealing with similar

factual matters or legal issues? [3.100] As discussed in Chapter 1, while the auDRP does not have a formal doctrine of precedent, panels tend to follow the approach of previous panels – particularly in cases where a number of previous panels have come to the same conclusion on a specific issue.76 On the question of precedent (stare decisis), paragraph 4.1 of the auDA auDRP Overview 1.0 states: The general position is the same as that under the uDRP. Panels deciding cases under the auDRP consider it desirable that their decisions are consistent with prior auDRP panel decisions dealing with similar fact situations. Thus, although the auDRP does not have a formal doctrine of precedent (stare decisis), panels tend to follow the approach of prior panels to the same issue, at least where a number of such panels have come to the same conclusion. One panel has gone so far as to state that “in the interests of consistency it is loathe to depart from an interpretation that has been followed by a number of distinguished panels … even if the result could theoretically result in a conflict with the position under Australian national law”. Where the relevant provision of the auDRP is the same as its equivalent provision in the uDRP, auDRP panels will treat uDRP decisions on that provision as equally persuasive as auDRP decisions on the issue.77

The auDA auDRP Overview 1.0 cites the following decisions to be relevant on this point: GlobalCenter Pty Ltd v Global Domain Hosting Pty Ltd,78 and American Future Technology Corp v Rex Hall.79 The auDA auDRP Overview 1.0 also cites National Dial A Word Registry Pty Ltd and others v 1300 Directory Pty Ltd80 to be a relevant decision, where the panelist discussed general principles relating to the consolidation of disputes at length inter alia. The complaints are nearly always dealt with on-written submissions, and auDRP and uDRP paragraph 13 provides that in-person hearings will only be held if the panel determines it is necessary. In the event that legal proceedings are commenced prior to or during a hearing, it remains within the panel’s discretionary power to suspend or terminate the hearing, or hand-down a decision: auDRP and uDRP paragraph 18(a). In the case of a party’s default, paragraph 14(b) of the auDRP and uDRP also provides: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.” Indeed, on the issue of default, a study of the first 10 years of auDRP decisions revealed that the default rate by respondents in auDRP proceedings is reasonably high.81 76 77

78 79 80 81

As reiterated again in the recent decision Sambazon Inc v Christopher Andrew Norden WIPO Case No DAU2015-0031 (16 October 2015). Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 26, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2002-0001 (5 March 2003). WIPO Case No DAU2009-0007 (6 October 2009). WIPO Case No DAU2008-0021 (6 March 2009). See Alpana Roy, “Navigating the landscape of the .au Dispute Resolution Policy as it enters its second decade” (2014) 19 Media and Arts Law Review 1, 16, 24.

49

50

Australian Domain Name Law

[3.110]

Reverse Domain Name Hijacking [3.110] Paragraph 15(e) of the auDRP and uDRP states that if “the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” Paragraph 1 of the auDRP and uDRP define “Reverse Domain Name Hijacking” to mean: “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” While respondents fairly frequently claim Reverse Domain Name Hijacking, this study of auDRP decisions has found that panels are often reluctant to make such a finding. Further, given the limited nature of remedies under the auDRP (and uDRP), a finding of Reverse Domain Name Hijacking is of little consequence in practical terms. On the question of when should a finding of Reverse Domain Name Hijacking or abuse of process be made, paragraph 4.17 of the auDA auDRP Overview 1.0 suggests: The general position is the same as that under the uDRP. Paragraph 15(e) of the auDRP Rules provides that, if the panel finds that the complaint “was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder”, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. Paragraph 1 of the auDRP Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. Circumstances that panels have considered to be indicative of a complaint having been brought in bad faith include: (i) the complainant knew it had no rights in the trademark or name upon which it relied and nevertheless brought the complaint; (ii) the complainant had, by the time the complaint was filed, been informed of and had otherwise ascertained all the facts necessary, to establish that the respondent had legitimate interests in the disputed domain name; (iii) the complainant had, in communications with the respondent, expressly acknowledged that the respondent had rights to the domain name; (iv) the complainant had knowledge of the respondent’s rights or legitimate interests in the domain name and engaged in harassment or similar conduct in the face of such knowledge (such as repeated cease-and-desist communications, or prolonging the dispute in order to exploit superior financial resources); (v) the complainant had known from the beginning that its rights in the domain name were not exclusive, that the domain name was generic, and that the domain name described the activities for which the respondent used it; (vi) the complainant knew that its trademark was limited to a narrow field, and that the respondent’s registration and use of the domain name could not, under any fair interpretation of the facts, constitute bad faith; and (vii) the complainant intentionally attempted to mislead the panel by omitting relevant evidence. A finding of Reverse Domain Name Hijacking will rarely be made where there is a genuine dispute. Where a complainant has an arguable case that is merely weak on the evidence, a panel is unlikely to find the complaint to have been brought in bad faith.82 82

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 34-35, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf.

[3.110]

3: Rules for .au Dispute Resolution Policy (auDRP Rules)

The auDA auDRP Overview 1.0 cites the following to be relevant: The Crown in Right of the State of Tasmania t/as Tourism Tasmania v Gordon James Craven;83 WOW Audio Visual Superstores Pty Ltd v Comonoz Pty Ltd;84 Blurb Inc v Rethink IT Pty Ltd;85 United Parcel Service of America Inc v Wesley Bryant;86 Environics Pty Ltd v Connectus Pty Ltd;87 Adjudicate Today Pty Ltd v The Institute of Arbitrators and Mediators;88 Cairns Airport Pty Ltd v Chris Ford (Christopher William Ford) / C and C Family Discretionary Trust;89 and Stephens Valuation and Consultancy Pty Ltd v SLR Consulting Australia Pty Ltd.90 These decisions are discussed in the following chapters. The following recent auDRP decisions have considered the issue of Reverse Domain Name Hijacking. Referring to paragraph 4.17 of the auDA auDRP Overview 1.0, the panelist in Australian Postal Corp v Jason Soares91 was not able to make a finding that the complainant had engaged in Reverse Domain Name Hijacking. In contrast, the panel in Paessler AG v Assured IT Pty Ltd92 was able to make a finding of Reverse Domain Name Hijacking on the grounds that the complainant “exhibited a total lack of candour in failing to disclose the history and nature of its relationship with the Respondent going back to 2007. That failure could have left the panel with a totally distorted impression of the nature of the dispute between the parties and, in the panel’s view, warrants the sanction.” Similarly, the three member panel in Orient Express Travel Group Pty Ltd v Mookstar Media Pty Ltd (ACN 083 167 293)93 found that the complaint was brought in bad faith and constituted an abuse of process because the filed complaint was not complete and accurate, and omitted certain relevant information (the complainant’s complaint to auDA about the respondent had been dismissed, and the complainant’s attempt to purchase the disputed domain name from the respondent had been rejected). The panelist in Carman’s Fine Foods Pty Ltd v Ross Wayne Carman, Carmans Consulting94 found that the complainant had engaged in Reverse Domain Name Hijacking even though the respondent had not sought such a finding in the case. The panelist observed: It is open to the panel to make such a finding without a request from the respondent. In fact, the panel in Dumankaya Yapi Malzemeleri SAN VE TiC AS v Domain Administrator, Name Administration Inc (BVI) stated that “[i]f abuse is apparent on the face of the case papers, the Panel is under an obligation to declare it”.95

83 84 85 86 87 88 89 90 91 92 93 94 95

WIPO Case No DAU2003-0001 (16 April 2003). WIPO Case No DAU2007-0003 (24 July 2007). WIPO Case No DAU2009-0008 (28 October 2009). WIPO Case No DAU2009-0012 (11 February 2010). LEADR Case No auDRP03/09 (9 June 2009). WIPO Case No DAU2012-0033 (13 March 2013). WIPO Case No DAU2013-0023 (24 October 2013). WIPO Case No DAU2013-0026 (14 November 2013). WIPO Case No DAU2015-0003 (2 April 2015). WIPO Case No DAU2015-0030 (19 October 2015). WIPO Case No DAU2015-0004 (17 April 2015). WIPO Case No DAU2015-0041 (2 February 2016). WIPO Case No DAU2015-0041 (2 February 2016).

51

52

Australian Domain Name Law

[3.120]

Language of Proceedings [3.120] Paragraph 11 of the auDRP and uDRP state: (a) Unless otherwise agreed by the Parties, or specified otherwise in the Registrant Agreement, the language of the administrative proceeding shall be the language of the Registrant Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. (b) The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding.

On the issue of what is the proper language of the proceeding, paragraph 4.3 of the auDA auDRP Overview 1.0 provides the following guidance: The position is unknown. Paragraph 11 of the auDRP Rules provides that the language of the proceeding is the language of the registration agreement, unless both parties agree otherwise, or the panel determines otherwise having regard to the circumstances of the proceeding. It appears that no auDRP case has yet addressed the issue of the proper language of the proceedings. Thus, it is not clear whether – and, if so, in what circumstances – the proper language of the proceedings will be other than the language of the registration agreement (as per paragraph 11 of the auDRP Rules).96

Standard of Proof [3.130] On the question of what is the standard of proof under the auDRP, paragraph 4.7 of the auDA auDRP Overview 1.0 states: The general position is the same as that under the uDRP. The general standard of proof under the auDRP is “on balance” – often expressed as the “balance of probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party would typically need to establish that it is more likely than not that the claimed fact is true.97

The auDA auDRP Overview 1.0 cites the following decisions to be relevant on this point: WOW Audio Visual Superstores Pty Ltd v Comonoz Pty Ltd;98 ESPA International (UK) Ltd, ESPA House v Espa of Australia Pty Ltd;99 and Victoria’s Secret Stores Brand Management Inc v Linda Cameron Pickard, Linda Watson.100 These decisions are discussed in the following chapters.

96

97

98 99 100

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 27, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 28-29, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2007-0003 (24 July 2007). WIPO Case No DAU2011-0010 (17 May 2011). WIPO Case No DAU2012-0015 (3 July 2012).

[3.130]

3: Rules for .au Dispute Resolution Policy (auDRP Rules)

Panels will sometimes explicitly refer to the “balance of probabilities” in their reasoning,101 however, more often than not this is implied and not expressly stated.102

101

102

See, for example, Arla Foods Amba v William Wong WIPO Case No DAU2016-0007 (6 April 2016)Compass Capital Partners Pty Ltd v Nationwide Appliance Repairs LEADR Case No auDRP12/15 (26 January 2016); Sunbeam Corp Ltd and Sunbeam Products Inc d/b/a Jarden Consumer Solutions v Rabbit Tracks Pty Limited WIPO Case No DAU20160005 (31 March 2016); Mecu Limited v OZ8 Pty Ltd WIPO Case No DAU2016-0003 (15 March 2016); Sephora & Sephora USA Inc v Atomic Group (Australia) Pty Ltd LEADR Case No auDRP13/14 (27 December 2014), p 5 [6.15], p 6 [6.23]; Mr Price Group Ltd v Peter Duncan WIPO Case No DAU2013-0034 (24 January 2014); City of Sydney v Weide Marosy Corp Pty Ltd LEADR Case No auDRP14/06 (18 December 2006), p 10 [35]; Start Corporation Pty Ltd v Daniel Purser t/as Startcorp (Aust) LEADR Case No auDRP11/05 (9 November 2005), p 7 [6.4]; Dr Jeremy Hunt t/as Sydney Skin Institute v Edward Mishricky t/as Visage Clinic LEADR Case No auDRP 12/12 (13 March 2013). See, for example, Kathleen Chan v Todd Raumer LEADR Case No auDRP10/15 (1 February 2016); ProCare Health Pty Ltd v Procare Consulting Pty Ltd LEADR Case No auDRP11/15 (18 January 2016); Christine Schrammek Kosmetik GmbH & Co KG v Advanced Laser Therapy Clinics Australia Pty Ltd WIPO Case No DAU2014-0034 (21 December 2014); Aloha Pools Pty Ltd v Palatial Pools & Spas Pty Ltd WIPO Case No DAU2014-0033 (31 December 2014); Nirvana LLC v Darren Marc Wilcox WIPO Case No DAU2014-0031 (3 November 2014); Alibaba Group Holding Ltd v Yifeng Tan WIPO Case No DAU20140029 (11 November 2014); ATB Engineering Pty Ltd ACN 073 445 280 v Jacqst Trading Pty Ltd ACN 167 839 278 t/as Megatilt Heavy Haulage LEADR Case No auDRP10/14 (24 September 2014); Automobili Lamborghini Holding SpA v Rose Bay Automotive Pty Ltd WIPO Case No DAU2014-0026 (1 October 2014); Aruba Networks Inc v Hedloc Pty Ltd / Technical Manager WIPO Case No DAU2014-0023 (8 September 2014); Brivis Climate Systems Pty Ltd v The Trustee for the Ferreri Family Trust / Dynamic Services HVAC&R Pty Ltd WIPO Case No DAU2014-0025 (27 August 2014); Asahi Group Holdings Ltd v David Whittle WIPO Case No DAU2014-0024 (23 August 2014); Lytro Inc v Drift Alliance Pty Ltd WIPO Case No DAU2014-0019 (29 July 2014); Emirates v Shellball Pty Ltd (in liq) ABN 44 055 035 839 LEADR Case No auDRP 08/14 (23 July 2014); Grace Garrett Design Pty Ltd v Levitt Consulting Pty Ltd LEADR Case No auDRP06/14 (1 August 2014); Lucas Film Entertainment Company Ltd LLC v Moxomo Pty Ltd WIPO Case No DAU2014-0012 (21 July 2014); Penske System Inc v M Akkaoui aka Moe Akkaoui WIPO Case No DAU2014-0017 (8 July 2014); Anadarko Petroleum Corp v Alan Meltzer WIPO Case No DAU2014-0020 (10 August 2014); Tekla Corp v Tekla Project Management / Trango Towers Pty Ltd WIPO Case No DAU2014-0009 (16 July 2014); Tyre Depot Holdings Pty Ltd v Tyre Kingdom Pty Ltd WIPO Case No DAU2014-0016 (15 July 2014); Udemy Inc v Nguyen Tai Tan / Agape Films / Roman Rothschild WIPO Case No DAU2014-0015 (27 June 2014); Mark Livesey QC and The New South Wales Bar Assn v Derek Minus and Dispute Resolution Associates Pty Ltd WIPO Case No DAU2014-0011 (25 August 2014); JJ Davies & Sons Pty Ltd v Australian Felt Specialists Pty Ltd IAMA Case No 2864 (20 October 2005), p 2 [11]; Australian Drivers Rights Assn v Australian Dust Removalists Assn IAMA Case No 2351 (3 January 2003); ZTE (Australia) Pty Ltd v Killarra 328 Consulting Pty Ltd and Ken Chan IAMA Case No 2887 (11 November 2005).

53

4

Identical or Confusingly Similar .au Domain Names [4.10] [4.20] [4.60] [4.70] [4.110] [4.120] [4.130] [4.140] [4.150] [4.160] [4.190] [4.220] [4.230] [4.240] [4.250] [4.260]

Introduction..................................................................................................55 Registered Trade Marks.............................................................................. 56 Evidence Required for Establishing Rights................................................63 Common Law and Unregistered Trade Marks........................................... 66 Rights in Personal Names......................................................................... 74 Rights in Corporate or Business Names...................................................75 Licensee or Other Related Entity Rights..................................................75 “Smart Numbers” or “Phone Words” under the auDRP..........................76 Time at which Rights Arise under the auDRP.........................................78 “Identical or Confusingly Similar”........................................................... 80 Confusingly Similar Generic, Descriptive, or Geographical Terms........ 84 Geographical Terms or Identifiers............................................................ 94 “Sucks”-type Domain Name Disputes......................................................95 Typosquatting.............................................................................................95 Disclaimed or Design Elements................................................................98 Threshold of Proof Required.................................................................. 100

Introduction [4.10] As examined in Chapter 2, paragraph 4(a) of the auDRP details the three separate but related elements that the complainant must establish to prove breach in order to have the disputed domain name either transferred or cancelled. The first element of paragraph 4(a) provides: (i) your domain name is identical or confusingly similar to a name [Note 1], trademark or service mark in which the complainant has rights.1 The footnote to “name” in paragraph 4(a)(i) reads: For the purposes of this policy, auDA has determined that a “name … in which the complainant has rights” refers to: a) the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or b) the complainant’s personal name.

With respect to footnotes in the auDRP, the panelist in Frenbray Pty Ltd v Weyvale Pty Ltd commented: “a panel ought to give due deference to a complainant’s good faith reliance on the note.”2 Indeed, the purpose of the footnotes in the auDRP is to further expand and explain the ambit and intended meaning underlying the policy. 1 2

au Dispute Resolution Policy (auDRP) (Policy No: 2016-01) (15/04/2016), auDA, Sch A, para 4(a)(i), https://www.auda.org.au/assets/pdf/auda-2016-01.pdf. LEADR Case No auDRP06/06 (24 June 2006) p 5 (Philip Argy, panelist).

56

Australian Domain Name Law

[4.10]

As discussed earlier, a key difference between the auDRP and the uDRP is that the auDRP also applies to instances where a disputed domain name is identical or confusingly similar to a “name” along with a trade mark or service mark in which the complainant has rights.3 In the words of the panel in David Harry Birch and Judith Alison Birch t/as Aussie Soap Supplies v Yvonne Tracey Cowell t/as Aussie Soap Supply: “unlike the uDRP, which requires a complainant to establish rights in trade marks, the auDRP offers an additional ground to a complainant that can establish rights in a name.”4 Similarly, the panel in Michael Sweep v Douglas Berry held: “unlike the uDRP, the Policy allows a complainant to put forward a case that a disputed domain name is identical or confusingly similar to a name in which it has rights. In the absence of the complainant establishing rights in a mark, the alternative question is whether the complainant relevantly has rights in a name.”5 As will be discussed in further detail below, there are now several instances under the auDRP where complainants have successfully established the first element by demonstrating rights in a name – as opposed to rights in a trade mark. This chapter will examine the way in which paragraph 4(a)(i) has been interpreted under the auDRP by looking at a number of decisions decided under the policy to date. This chapter will also incorporate in detail the findings of the auDA auDRP Overview 1.0 on paragraph 4(a)(i) (or to use the terminology from the auDA auDRP Overview 1.0 the “first auDRP element”).6 As outlined in Chapter 1, the auDA auDRP Overview 1.0 was published half way through writing this book in July 2014, and presents the consensus view on auDRP decisions to date. While the auDA auDRP Overview 1.0 cites a number of decisions to support its position on the consensus view, these decisions are only referenced and not discussed in any way. This chapter will expand the ambit of the auDA auDRP Overview 1.0 by extracting the relevant principles from the findings by the panels (where those decisions have not otherwise been dealt with in this book).

Registered Trade Marks [4.20] As outlined earlier, paragraph 4(a)(i) of the auDRP requires the complainant to establish that the domain name is identical or confusingly similar to a name, trade mark or service mark in which the complainant has rights. The terms “trade mark” and “service mark” are not defined by the 3

4 5

6

Paragraph 4(a)(i) of the uDRP reads “your domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights.” The uDRP is available at ICANN, Uniform Domain Name Dispute Resolution Policy (24 October 1999), http://www.icann.org/en/help/dndr/udrp/policy (“uDRP”). There are clearly numerous examples in auDRP decisions where panels have found that the disputed domain name is identical or confusingly similar to the complainant’s name. See, for example, Jarpich Investments Pty Ltd (and its subsidiary Aspire Solar Pty Ltd) v Ivanka Joanne Klaric LEADR Case No auDRP13/12 (15 February 2013); Adjudicate Today Pty Ltd v The Institute of Arbitrators and Mediators WIPO Case No DAU2012-0033 (13 March 2013); First Alliance Pty Ltd v Bengamen David Hall IAMA Case No 5017 (1 October 2013). LEADR Case No auDRP22/10 (21 February 2011). Michael Sweep v Douglas Berry WIPO Case No DAU2012-0008 (23 May 2012). In this decision, the panelist held that the complainant had established this first element of the auDRP – even though the decision was found to be for the respondent (as the complainant had failed to establish the second element of the auDRP, that is rights or legitimate interests). Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, http://www.auda.org.au/assets/ Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf.

[4.30]

4: Identical or Confusingly Similar .au Domain Names

policies. For this reason, “[r]ecourse to principles established under national trade mark laws is therefore necessary to determine whether indicia are, or are not, ‘trade marks’ or ‘service marks’.”7 Paragraph 15(a) of the auDRP Rules also provide: A panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

In relation to the uDRP Lindsay suggests that “panels often refer to national legal principles where both parties reside in the same legal jurisdiction.”8 An analysis of auDRP decisions also show that panels refer to Australian trade mark law when determining the meaning of a “trade mark” under paragraph 4(a)(i) of the auDRP. For example, the panel in Tigerdirect Inc v Jim Sun, Sun’s Sons Pty Ltd9 held: “It is also relevant that the complainant has a registered mark which, as such, is entitled to a presumption of distinctiveness, which the respondent has done nothing to rebut.”10 The auDRP does not distinguish between registered and unregistered (or common law) trade marks, and therefore remedies under the auDRP benefit both registered and unregistered/common law trade mark owners.11 However, auDRP decisions to date indicate that complainants seeking to establish rights in common law/unregistered trade marks have a high burden of proof in establishing such rights before this onus can be discharged to the satisfaction of the panel.12

Registered Trade Marks under the auDRP Does ownership of a registered trade mark13 to which the domain name is identical or confusingly similar automatically satisfy the requirements of paragraph 4(a)(i) of the auDRP?

[4.30] On this question, paragraph 1.1 of the auDA auDRP Overview 1.0 states: The general position is the same as that under the uDRP. If the complainant owns a registered trademark, then it generally satisfies the auDRP paragraph 4(a)(i) threshold requirement of having rights in a “trademark or service mark”… The location of the trademark’s registration [see paragraph 1.1A], its date of registration (or first use) [see paragraph 1.4], and the 7 8 9 10 11

12 13

David Lindsay, International Domain Name Law: ICANN and the UDRP (Hart Publishing, 2007) pp 171-172. David Lindsay, International Domain Name Law: ICANN and the UDRP (Hart Publishing, 2007) p 172. WIPO Case No DAU2010-0005 (5 May 2010). WIPO Case No DAU2010-0005 (5 May 2010). For example, see Smart Voucher Ltd t/as Ukash v Chowdhury, MD Abu Russel and Sydney Business & Technology Group Pty Ltd WIPO Case No DAU2013-0006 (8 May 2013); Woolworths Ltd v Cracka IP Pty Ltd WIPO Case No DAU2011-0028 (8 December 2011), citing Bennett Coleman & Co Ltd v Steven S Lalwani WIPO Case No D2000-0014 (11 March 2000) and SeekAmerica Networks Inc v Tariq Masood WIPO Case No D2000-0131 (13 April 2000). For example, see Adjudicate Today Pty Ltd v The Institute of Arbitrators and Mediators WIPO Case No DAU2012-0033 (13 March 2013). Note that in the auDA auDRP Overview 1.0 the term “trade mark” includes “service mark” unless indicated otherwise.

57

58

Australian Domain Name Law

[4.30]

goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark or service mark under the first element of the auDRP.14

The auDA auDRP Overview 1.0 cites TrueLocal Inc, Geosign Technologies Inc and True Local Ltd v News Interactive Pty Ltd15 as a relevant decision, where the panelist examined whether the complainant’s rights based on its company and business name, trade mark applications, common law trade marks and licence to use trade mark registrations were sufficient bases for the complainant to establish its rights. This decision will be discussed again below.

Registered Trade Marks outside of Australia under the auDRP Does ownership of a registered trade mark outside of Australia to which the domain name is identical or confusingly similar automatically satisfy the requirements of paragraph 4(a)(i) of the auDRP?

[4.40] On this point, paragraph 1.1A of the auDA auDRP Overview 1.0 states: The issue does not arise under the uDRP. The auDRP does not restrict a complainant’s trademark rights to a trademark registered with the Australian trademark authority. Thus, a trademark registered outside of Australia satisfies the requirements of the Policy.16

The auDA auDRP Overview 1.0 cites the following decisions as relevant authorities: Doteasy Technology Inc v M Makras and EA Nahed dba Dot Easy Australia,17 where the panel held: The reference in paragraph 4(a)(i) of the Policy to a trademark or service mark is not to be construed as a reference to an Australian trademark or service mark. A complainant is entitled to rely on a foreign trademark in invoking the Policy: WebFarm Ltd v Fopoco Pty Ltd t/as “Free Parking” WIPO Case No DAU2006-0007.

Similarly, in American Future Technology Corp v Rex Hall18 the panel held: The Policy does not specify that trade mark rights must be located in Australia and previous panels have expressly found that the first element under the Policy does not require a finding of trade mark rights in Australia, but rather trade mark rights for this purpose can be located anywhere in the world, even in circumstances such as in this case where there is no adequate evidence of such rights in Australia. (See for example Doteasy Technology Inc v M Makras and EA Nahed dba Dot Easy Australia WIPO Case No DAU2006-0011 and WebFarm Ltd v Fopoco Pty Ltd t/as “Free Parking” WIPO Case No DAU2006-0007).

Echoing this same sentiment, the panel in Rainbow Sandals Inc v Malua Point Holdings Pty Ltd, Anthony Brown / Malua Point Holdings Pty Ltd aka Malua Point Merchants19 held: Even without owning Australian rights this foreign trade mark registration would be adequate for the purposes of establishing the necessary trade mark rights under 14

15 16

17 18 19

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 4, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2006-0003 (29 May 2006). Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, pp 4-5, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2006-0011 (31 January 2007). WIPO Case No DAU2009-0007 (6 October 2009). WIPO Case No DAU2013-0014 (7 July 2013).

[4.40]

4: Identical or Confusingly Similar .au Domain Names

limb 1 of the Policy (see for example the panel decision in Marshmallow Skins Inc v Piipiinoo Australia Pty Ltd WIPO Case No DAU2013-0015).

The auDA auDRP Overview 1.0 also cites the following decisions to be relevant on this point: Mass Nutrition Inc and Todd Rosenfeld v Mass Nutrition Pty Ltd now known as Tweed Holdings Pty Ltd, Luke McNally;20 1SaleADay LLC and Benyamin Federman v LivinWireless, Simon Mochkin and Eli Feiglin;21 Smart Voucher Ltd t/as Ukash v Chowdhury, MD Abu Russel and Sydney Business & Technology Group Pty Ltd;22 and Marshmallow Skins Inc v Piipiinoo Australia Pty Ltd.23 These decisions are discussed further below in this chapter and in the following chapters. This issue of whether the registration of trade marks outside Australia is sufficient to satisfy the requirements under the auDRP was extensively addressed in Marshmallow Skins Inc v Piipiinoo Australia Pty Ltd,24 where the complainant held trade mark registrations for the ZIPZ mark in numerous countries outside Australia and had applied to register the ZIPZ mark in Australia. The panel observed: The Policy as written does not restrict the complaint’s rights to a trade mark registered with an Australian government authority. Previous cases under the Policy have come to different views on this issue, with Smart Voucher Ltd t/as Ukash v Chowdhury, MD Abu Russel and Sydney Business & Technology Group Pty Ltd WIPO Case No DAU2013-0006; TeamViewer GmbH v Nigel Burke WIPO Case No DAU2012-0027; and Hutchinson Wines v Amphora Wine Group Pty Ltd, William Howard WIPO Case No DAU2011-0008 finding that a trade mark registered overseas (but not in Australia) satisfies the first element in the Policy while Brilliance Publishing Inc v My Brilliance Pty Ltd / Ceinwen Schneider WIPO Case No DAU2013-0007 and We Buy Any Car Ltd v Highway Auto Mart and Jason Collings WIPO Case No DAU2012-0004 take the opposite approach and require the complainant establish rights, be they registered or unregistered rights, in Australia to satisfy the first element. The panel considers that the appropriate interpretation of the Policy is the former one (that a complainant satisfies the first element of the Policy when they show a trade mark registration that is identical or confusingly similar to a domain name, regardless of where the mark is registered). The panel does not seek to insert a nationality requirement in the Policy, which does not exist in the text of the Policy. Furthermore, while there may be a practical concern that a broad interpretation of “trade mark” could allow a complainant with no connection to Australia to satisfy the first element of the Policy and thereby acquire a “.au” domain name, this concern can be addressed in three ways: a) It is highly unlikely that a complainant would expend legal resources preparing a complaint for a “.au” domain name if it has no connection to or interest in Australia. b) If the complainant has no connection with Australia, it will have difficulty in satisfying the bad faith requirement under the Policy, as a finding of bad faith will often require the panel to reach a conclusion that the respondent had or must have had some knowledge or awareness of the complainant’s mark. 20 21 22 23 24

WIPO Case No DAU2010-0002 (15 March 2010). WIPO Case No DAU2010-0016 (27 September 2010). WIPO Case No DAU2013-0006 (8 May 2013). WIPO Case No DAU2013-0015 (24 June 2013). WIPO Case No DAU2013-0015 (24 June 2013).

59

60

Australian Domain Name Law

[4.40]

c) The Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (2012-04) for the “.au” domain state in paragraph 2 of schedule A that domain name licences may only be allocated to a registrant who is Australian, as defined under the eligibility and allocation rules for each second level domain (2LD). Each 2LD then has its own requirements as to who is eligible to register a domain name, generally requiring some connection to Australia, such as a registered trade mark in Australia. The Domain Name Eligibility and Allocation Policy Rules operate to prevent a complainant who relies solely on a foreign registered trade mark and has with no connection with Australia from taking possession of a domain name in the “.au” space that it is not entitled to, even if it obtained an order for transfer under the Policy. The creation of a “nationality requirement” under the first element of the Policy requires the reading of words into the Policy that do not exist and is practically unnecessary. The panel finds that the complainant has trade mark rights in the ZIPZ Mark under the Policy and therefore it is not necessarily to determine whether or not the complainant established common law trade mark rights in Australia.25

An example where rights in a mark registered outside of Australia was accepted by the panel to be sufficient under the first limb of the auDRP was in Heavenly Holidays LLC v Mark One Visual Promotions Pty Ltd,26 where the complainant had rights in the word mark “TREE CLASSICS” registered in the United States. Another example is in the M/s Info Edge (India) Ltd v Harjeet Singh / Harry Singh decision,27 where the auDRP panel not only accepted the complainant’s Indian trade mark registrations for both “99ACRES” and “99ACRES.COM”, but also accepted the complainant’s claim that it had common law rights in Australia in relation to both these marks. The panel further held: On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the complainant’s trade marks: see for example, GlobalCenter Pty Ltd v Global Domain Hosting Pty Ltd WIPO Case No DAU2002-0001. This is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, 25

26 27

WIPO Case No DAU2013-0015 (24 June 2013). See also Corporate Mobile Recycling Ltd v Mazuma Mobile Pty Ltd WIPO Case No DAU2011-0034 (9 December 2011) where the panel held that the date of registration is irrelevant for the purpose of finding rights in a trade mark under paragraph 4(a)(i) of the auDRP, and cited 1SaleADay LLC and Benyamin Federman v LivinWireless, Simon Mochkin and Eli Feiglin WIPO Case No DAU2010-0016 (27 September 2010) with approval which further stated: “The requirement of paragraph 4(a)(i) of the Policy is not limited to trade marks that are registered in Australia (as, indeed, it is not limited to trade marks that are registered). This Panel accepts the view expressed in Mass Nutrition Inc and Todd Rosenfeld v Mass Nutrition Pty Ltd now known as Tweed Holdings, Luke McNally WIPO Case No DAU2010-0002, to the effect that a right to a trade mark registered outside Australia (in that case, in the United States of America) is sufficient for the purposes of the Policy. As the panelist in that case explained, the inquiry required by paragraph 4(a)(i) of the Policy for the purpose of establishing application of the Policy is different from the inquiry required by Australian trade mark law for the purpose of establishing trade mark infringement. The Policy requires only a comparison of the disputed domain name with any relevant rights proved by the complainant. Considerations such as the priorities in time of competing claims to a trade mark or the ‘location’ of the goodwill attaching to a trade mark do not fall for consideration under paragraph 4(a)(i) of the Policy, although they may arise for consideration under other paragraphs of the Policy such as paragraphs 4(a)(ii) or 4(a)(iii).” WIPO Case No DAU2013-0028 (29 October 2013). WIPO Case No DAU2013-0022 (29 November 2013).

[4.50]

4: Identical or Confusingly Similar .au Domain Names

geographical location or timing. Similarly, it is not relevant at this stage of the inquiry that the complainant’s trade marks are registered in India rather than Australia for which .au is the ccTLD.28

Applications for Registration Does ownership of an application to register a trade mark in Australia to which the domain name is identical or confusingly similar automatically satisfy the requirements of paragraph 4(a)(i) of the auDRP?

[4.50] On this issue, paragraph 1.1C of the auDA auDRP Overview 1.0 states: The general position is the same as that under the uDRP. Most of the panels considering the issue have expressed the view that an application (even an accepted application) for trademark registration in Australia that has not proceeded to grant does not, of itself, satisfy the requirement of the complainant having rights for the purposes of paragraph 4(a)(i) of the Policy. For the complainant to satisfy that requirement, the trademark that is the subject of the application must either: (i) satisfy the test for being a common law or unregistered trademark [see paragraph 1.7]; or (ii) constitute a “name” within Note 1 of the Policy – that is, be the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority, or be the complainant’s personal name. One panel has come to a different view, on the basis that an application for an Australian registered trade mark is treated as conferring sufficient rights to support the grant of a domain name licence under the auDA domain name eligibility and allocation rules (currently “2012-04 – Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs”). However, all subsequent cases have unequivocally reached the opposite conclusion. The reasons given by the later cases include: that the basis on which a domain name is granted to a respondent is not the same as the basis on which a complainant may assert its rights under the Policy; that paragraph 4(a)(i) of the Policy is not stated to have any relationship with auDA’s eligibility rule; that there is nothing in the terms of the Policy indicating that a mere trademark application may support a complainant’s rights under paragraph 4(a)(i); that the Policy generally contains notes where there are substantive differences with the uDRP and there is no note on this issue; and that such an approach would be contrary to the great majority of decisions under the uDRP.29

The auDA auDRP Overview 1.0 cites the following decisions as relevant authorities for this proposition: GE Capital Finance Australasia Pty v Dental Financial Services Pty Ltd;30 TrueLocal Inc, Geosign Technologies Inc and True Local Ltd v News Interactive Pty Ltd;31 Telstra Corp Ltd v Mandino Pty Ltd;32 Marshmallow Skins Inc v Piipiinoo Australia Pty Ltd;33 and Debbie Morgan Macao Commercial Offshore Ltd, Missguided Ltd v Samir Vora.34 28 29

30 31 32 33 34

WIPO Case No DAU2013-0022 (29 November 2013). Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, pp 5-6, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2004-0007 (7 January 2005). WIPO Case No DAU2006-0003 (29 May 2006). WIPO Case No DAU2006-0006 (28 July 2006). WIPO Case No DAU2013-0015 (24 June 2013). WIPO Case No DAU2013-0024 (30 October 2013).

61

62

Australian Domain Name Law

[4.50]

Thus, a mere application for trade mark registration is insufficient to establish rights.35 While the Domain Name Eligibility and Allocation Rules for the Open 2LDs allows an application for a trade mark to be sufficient grounds to support the grant of a domain name licence, in TrueLocal Inc Geosign Technologies Inc and True Local Ltd v News Interactive Pty Ltd36 the panel held that there is no relationship between the auDRP and Domain Name Eligibility and Allocation Rules for the Open 2LDs. In this decision, the panel referred to GE Capital Finance Australasia Pty v Dental Financial Services Pty Ltd37 which found that a trade mark application was sufficient to establish “rights” under paragraph 4(a)(i) of the auDRP: The complainant has only to show that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. Under auDA’s published Domain Name Eligibility and Allocation Rules for the Open 2LDs (http:// www.auda.org.au/policies/auda-2002-07), an application for an Australian registered trade mark is treated as conferring sufficient rights to support the grant of a domain name licence (but that domain name will not be renewable unless the application proceeds to acceptance). Accordingly, and unlike the case of the uDRP where a mere application for a trademark would not be sufficient, that is the threshold of rights that a complainant must reach under the auDRP if it wishes to challenge on the basis of a trade mark. The complainant’s accepted application for registration of the “CARECREDIT” trademark in Australia is entirely sufficient to show that it has the requisite level of rights in the trademark “CARECREDIT” for the purposes of paragraph 4(a)(i) of the Policy.38

Similarly, in relation to the disputed domain name “walmart.com.au”, the three member panel in Wal-Mart Stores Inc v Lars Grothe39 held that the complainant’s pending application to register “WALMART” as a trade mark in Australia was “of no consequence” in the auDRP proceeding, because the application had not yet given rise to any trade mark rights. However, the panel found that the complainant’s Australian registered trade mark “WAL-MART” was confusingly similar to the disputed domain name because the mark was so well known, and differed only with the inclusion of a hyphen. The panel in TrueLocal Inc Geosign Technologies Inc and True Local Ltd v News Interactive Pty Ltd restates the consensus view on this issue, and confirms that a mere trade mark application is not sufficient to attract rights under paragraph 4(a)(i) of the auDRP: The panel in the GE Capital Finance decision made its finding on the basis that auDA’s Domain Name Eligibility and Allocation Rules for the Open 2LDs allows that an application for a trademark is sufficient to support the grant of a domain name licence. However the basis on which a domain name is granted to a respondent is not the same as the basis on which a complainant may assert its rights under the Policy. Paragraph 4(a)(i) of the Policy is not stated to have any relationship with auDA’s eligibility rules. Further, there is nothing in the terms of the Policy indicating that a mere trademark application may support a 35

36 37 38 39

See, for example, Avid Life Media Inc v Melody Carstairs WIPO Case No DAU2011-0001 (9 March 2011) citing Aspen Grove Inc v Aspen Grove WIPO Case No D2001-0798 (5 October 2001) and Spencer Douglass MGA v Absolute Bonding Corp WIPO Case No D2001-0904 (5 September 2001). WIPO Case No DAU2006-0003 (29 May 2006). WIPO Case No DAU2004-0007 (7 January 2005). GE Capital Finance Australasia Pty v Dental Financial Services Pty Ltd WIPO Case No DAU2004-0007 (7 January 2005). LEADR Case No auDRP07/14 (7 August 2014), [59] – [60].

[4.60]

4: Identical or Confusingly Similar .au Domain Names

complainant’s rights under paragraph 4(a)(i). It is notable that the Policy is stated to be based on the uDRP, with some substantive differences, many of which are noted in the Policy. However there are no notes suggesting that a mere application for a trademark registration, on its own, is enough to meet the first element of the Policy. Such an approach would also be contrary to the great majority of decisions under the uDRP. For all these reasons, the panel finds that a mere application for a registered trademark is not sufficient to establish rights under paragraph 4(a)(i) of the Policy.40

Given the number of decisions that support this view, it is clear that a mere application for a trade mark registration is insufficient to assert “rights” under the first limb of paragraph 4(a) of the auDRP.

Evidence Required for Establishing Rights [4.60] As discussed in Chapter 2, the onus remains with the complainant to prove each of the three elements of paragraph 4(a) of the auDRP. Thus, with respect to paragraph 4(a)(i) of the auDRP, the complainant must establish that the domain name is identical or confusingly similar to a name, trade mark or service mark in which the complainant has rights. There are two parts to this inquiry: first, the complainant must demonstrate that it has rights in a mark or name; and, if so, secondly, the complainant must demonstrate that the disputed domain name is identical or confusingly similar to that mark or name.41 This then raises the question of how can these rights be established by the complainant. A mere assertion that one possesses rights in a name, trade mark or service mark is not sufficient. The complainant must prove that it has a “right” over a specific name (or names), or is the owner of specific trade marks or service marks, or is otherwise lawfully authorised by a third party to use such names or marks. In Automatix Pty Ltd t/as Popcake v Todd Polke,42 a party other than the registered business name and trade mark owner brought a complaint disputing the registration of the domain name “popcake.com.au”. The panelist considered the issue of whether the complainant had rights in the business name “popcake” or in the trade mark “popcake” as these were not registered in the name of the complainant, but in the name of Marek Szymanski – a third party independent of the complainant. The panelist observed: A consensus view arising from prior panel decisions under the uDRP on the question of what evidence may be sufficient for a complainant to support that it has a right to a trade mark (when seeking to make its proofs analogous to those under paragraph 4(a)(i) of the Policy) may be of assistance in the present case. In collected prior decisions, the World Intellectual Property Organisation’s (WIPO) Overview 2.0 notes that prior panels have in certain cases been prepared, in the absence of more direct evidence, to infer the existence of a license and/or authorisation from the particular facts… There must be persuasive evidence to enable the drawing of an inference by the panel to support that the complainant possessed rights to the registered business name or the two Trade Marks due to some relevant relationship, assignment or licence. The complainant has not 40 41 42

TrueLocal Inc, Geosign Technologies Inc and True Local Ltd v News Interactive Pty Ltd WIPO Case No DAU2006-0003 (29 May 2006). Hall & Wilcox Lawyers v Mookstar Media Pty Ltd ACN 038 167 293 WIPO Case No DAU2014-0040 (9 March 2015). IAMA Case No 3710 (5 March 2013).

63

64

Australian Domain Name Law

[4.60]

provided any evidence of a relationship between it and Mr. Szymanski. It has not provided any evidence of a license to use the business name or Trade Marks held by Mr Szymanski.43

The panelist followed the uDRP decision Applegate Directory Ltd v Interlution aka Matthew Bessette,44 where insufficiency of evidence to enable drawing an inference was considered, and concluded that there was insufficient evidence linking the complainant to the person under whose name the business name and trade mark “popcake” was registered.45 Applegate Directory Ltd v Interlution aka Matthew Bessette was contrasted with DigiPoll Ltd v Raj Kumar,46 where documentary evidence established that the complainant had been granted a licence to use the trade marks, which were owned by two shareholders of the complainant’s company. Thus, it may be concluded that for the purposes of paragraph 4(a)(i) of the auDRP, documentary evidence is required which can prove the complainant’s link to the relevant marks or name.47 The need for documentary evidence establishing rights in a registered trade mark was emphasised in Mark Kingsley Williams v Bbhinds Pty Ltd.48 In this decision the complainant, an entity providing advisory services in relation to intellectual property rights in the United Kingdom, had failed to provide any independent documentary evidence of the registration of its trade mark in Australia. The panel observed: the complaint (remarkably for a complaint purporting to offer advisory services in relation to intellectual property) contains only an extract of the wording of the relevant trade mark with no further evidence of the claimed registration, that it is the complainant itself that has rights in the trade mark, the date of registration, or evidence of any prior common law trade mark rights. This is wholly inadequate as an evidentiary basis upon which to establish that the trade mark it is alleged is identical or confusingly similar to the disputed domain name is one in which the complainant has rights.

Where a complainant establishes conclusive evidence of registration of a trade mark, that will be sufficient to discharge the onus under the first limb of paragraph 4(a) of the auDRP. In Carrier Air Conditioning Pty Ltd v The Trustee for the Ferreri Family Trust t/as Dynamic Services HVAC&R,49 the panelist noted the Australian trade mark registration number and filing date and found that the complainant has “demonstrated that they are the rightful owners of the trade mark, and have conclusively demonstrated that they have 43 44 45

46 47

48 49

IAMA Case No 3710 (5 March 2013) p 8 (Michael JF Sweeney, panelist). WIPO Case No D2004-0181 (26 May 2004). See also Sitecore Australia Pty Ltd v WB Solutions Pty Ltd LEADR Case No auDRP10/08 (20 January 2009) where the panelist found for the respondent, and concluded that the complainant had failed to demonstrate that they are entitled to own the trade mark in Australia. WIPO Case No D2004-0939 (3 February 2005). See Avid Life Media Inc v Melody Carstairs WIPO Case No DAU2011-0001 (9 March 2011) citing Danfoss A/S v Coldwell Banker Burnet et al WIPO Case No DBIZ2001-00020 (27 March 2002); Graphisoft Australia v CAD Australia Pty Ltd, CIArb Case No 05/01 (23 August 2005). See also AW Faber-Castell (Aust) Pty Ltd v Pen City Pty Ltd/Atf Diblasi Jones Unit Trust WIPO Case No DAU2013-0018 (15 August 2013) where the three member panel found “The complainant is not itself the owner of those trade marks. However, it has provided a written statement from Faber-Castell Aktiengesellschaft confirming that the complainant is an authorized user of the trade marks in Australia.” WIPO Case No DAU2013-0010 (21 May 2013). LEADR Case No LEADR-auDRP02/10 (23 February 2010).

[4.60]

4: Identical or Confusingly Similar .au Domain Names

used the trade mark or name in Australia, as per the understanding of Australian case law regarding ‘use of a trade mark’ in the jurisdiction of Australia.”50 The panelist noted under Factual Background: “The complainant is the current owner of Registered Australian Trade Mark 237455 BRIVIS in class 11, which was originally filed 25 March 1970.” Under Australian trade mark law, “use” or “intended use” of a mark is necessary to apply for trade mark registration (see Trade Marks Act 1995 (Cth) s 27), and continual commercial use is necessary to maintain the trade mark registration. In contrast, the auDRP does not require a complainant to demonstrate that it has used a name or mark in order to establish rights in a name or mark when there is proof of registration. Evidence of “use”, however, might be necessary in establishing rights in a common law (or unregistered) marks, or in cases where a mark is registered overseas but used in Australia without registration, or is pending registration. So long as a mark has been registered, the fact that it had not been used in a given period in time is irrelevant, absent any evidence of the mark being expunged from the trade marks registry.51 Accordingly, registration of a mark, by itself, is sufficient to discharge a complainant’s onus of establishing rights in a trade mark or service mark. Where two or more entities might have rights – for example, one entity being the registered owner of a trade mark, while the other being a licensee – both would usually need to be named as joint complainants in the dispute. In this case, however, both entities would need to clearly demonstrate the nature of rights being claimed by each complainant, and to which entity the domain name is to be transferred (if applicable). The failure to do so would result in an ambiguous claim and in all probability fail – as was the case in Jupitermedia Corp and Australia.Internet.com Pty Ltd v Spotpress Pty Ltd t/as Internet Printing.52 In this decision, the three member panel denied the complaint for the following reasons: The complainants have provided the registration documents for the “internet.com” and “australia.internet.com” marks. These are all registered in the name of the first-named complainant. The complainants further provided evidence of the use of “internet.com” in various contexts and with significant advertising in a number of jurisdictions, all of which contexts were related to the first-named complainant. In the ordinary course of events this would be sufficient to establish that the first-named complainant has rights in a trademark (without, of course, saying anything about whether the domain name is identical or confusingly similar to those rights). However, the complainants have also provided evidence of the registration of the company name of the second-named complainant. Under the auDRP, and unlike the uDRP, rights in a name, including a company name, are enumerated grounds for a complainant’s claim under paragraph 4(a)(i). Therefore, it would seem that the second-named complainant has also established its claim under the first element of paragraph 4(a)(i). That is, the second-named complainant appears to have established that it has rights in a name pursuant to paragraph 4(a)(i)… 50

51 52

LEADR Case No LEADR-auDRP02/10 (23 February 2010) pp 3-4, [6.8]. The panelist noted under Factual Background: “The complainant is the current owner of Registered Australian Trade Mark 237455 BRIVIS in class 11, which was originally filed 25 March 1970.” LEADR Case No LEADR-auDRP02/10 (23 February 2010) p 2, [5.2]. General Television Pty Ltd v Laszlo Till LEADR Case No auDRP08/09 (15 October 2009) p 4, [7.7]. WIPO Case No DAU2003-0005 (17 February 2004).

65

66

Australian Domain Name Law

[4.60]

The remedy claimed is to transfer the domain name “to the complainants,” a remedy which is impossible as the transfer can only be to one legal person. Various panels have concluded that it is permissible for multiple complainants to request a transfer to all of themselves–and for the panel to choose which of the complainants to transfer the name to–where the complainants have the same interest in the domain name, see Bettina Liano and Bettina Liano Pty Ltd v Khanh Kim Huynh WIPO Case No D2000-0891; NFL Properties Inc et al v Rusty Rahe WIPO Case No D2000-0128; Mucos Emulsions GmbH and Marlyn Nutraceuticals Inc v Esex.org and Kim Taeho WIPO Case No D2000-1513; National Hockey League And Lemieux Group Lp v Domain For Sale WIPO Case No D2001-1185. However, it is impermissible for the panel to choose one of the complainants to transfer the name to, where the interests in the name are divergent, where the complainants requested an ambiguous remedy by not stating to which of the complainants the contested domain name should be transferred to, and where the complainants avoided the identification of each party’s stake in the remedy, see Ken Done, Ken Done & Associates Pty Ltd, and Ken Done Down Under Pty Ltd v Ted Gibson eResolution Case No AF-0638. We conclude that the principle laid down in the Ken Done case applies here. It is obvious that the complainants’ interests in the domain name stem from different interests in, respectively, the trade mark registration and application, and the company name registration. Moreover the complainants have requested an ambiguous remedy by not stating to which of the complainants the contested domain name should be transferred to. Even upon a close reading of the complaint it is impossible to parse out who is the “real” complainant in this case. As a result, it is impermissible for the panel to choose arbitrarily whose interests are the relevant ones in the paragraph 4(a)(i) requirements. This conclusion occurs as a result of the way in which the complainants plead their case. Although we make no finding as to the second requirement of paragraph 4(a)(i), it is possible that both complainants could independently satisfy the requirements of 4(a)(i). This would pose a difficulty in a case where the complainants made out all of the other necessary elements of paragraph 4(a). However, as we shall shortly conclude, the complainants fail on the other elements of paragraph 4(a). Therefore, we need not make a decision about how to reconcile such a difficult case. We can merely conclude that, by defect of pleading, the complainants have failed to satisfy the requirements of paragraph 4(a)(i) of the Policy.53

Common Law and Unregistered Trade Marks What needs to be shown for the complainant to successfully assert common law or unregistered trade mark rights?

[4.70] On this issue, paragraph 1.7 of the auDA auDRP Overview 1.0 states: The general position is the same as that under the uDRP. The requirement that the complainant has rights in a trademark or service mark is satisfied where the complainant can show that a name has acquired “secondary meaning” and become a distinctive identifier associated with the complainant or its goods or services – that is, that it is a common law or unregistered trademark. Evidence relevant to establishing such secondary meaning includes the length and amount of sales under the name, the nature and extent of advertising using the 53

Jupitermedia Corp and Australia.Internet.com Pty Ltd v Spotpress Pty Ltd t/as Internet Printing WIPO Case No DAU2003-0005 (17 February 2004).

[4.70]

4: Identical or Confusingly Similar .au Domain Names

name, surveys of consumer recognition of the name, and media references to the name. In at least one case, the panel treated as determinative of the issue the findings of an IP Australia Trade Marks Hearing Officer to the effect that the complainant had common law rights in an unregistered trademark. To constitute a common law or unregistered trademark, the name does not need to be famous or well known. The key requirement is that the name has sufficient distinctiveness so as to be able to act as a badge of origin that distinguishes the goods or services of the complainant from those of other traders. However, merely trading under a name does not make that name distinctive. Where the complainant’s alleged unregistered trademark consists of a generic or descriptive word, a strong case will be required to show that the word has become associated with the complainant and its goods or services. Operating a website which corresponds to an unregistered mark, and using that website in connection with business, will not necessarily give common law rights in that mark. Merely appending the domain name to an advertisement alongside other contact details will not suffice. Where the complainant’s trading name has not acquired secondary meaning as a trademark, it will not provide auDRP-relevant rights unless it is registered with the relevant Australian government authority (and thereby is a name within the Note 1 definition).54

It was in Curtain Communications Pty Ltd v Leann Webb55 where the panelist accepted the findings of a Trade Mark Hearing officer with respect to the complainant’s common law rights in an unregistered mark: The complainant instead claims that it has rights in ALPHAKIDS as a common law mark, based on substantial use in commerce. The complainant provides no direct evidence of such use. Rather, the complainant refers to the decision of the hearing officer, as delegate of the Trademark Registrar…. In that decision, the hearing officer found that the complainant’s evidence in support of the opposition proceedings indicated that, among other things:

– the complainant had conducted business since 1991 in the development and sale of literacy programs; – the expression ALPHAKIDS as a trademark had been adopted and used by the complainant since 1997 in connection with its business, and such use had been continuing and ongoing; – the complainant had expended substantial resources to market its ALPHAKIDS program, books and materials, and had attained significant sales and turnover; – the complainant’s ALPHAKIDS products are very well-known in the educational market in Australia, and the complainant’s associated mark has acquired a strong reputation; – the complainant’s evidence of prior existing use and established reputation was corroborated by a person of extensive experience in the educational publishing industry. Against this, the respondent says that the complainant’s claim to a common law mark is not supported by evidence in the complaint itself. The panel does not 54

55

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, pp 9-10, http:// www.auda.org.au/assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2008-0022 (16 February 2009).

67

68

Australian Domain Name Law

[4.70]

accept this argument. The panel has no reason to think that the findings of the hearing officer, exercising statutory decision-making functions under the Trade Marks Act 1995, incorrectly or insufficiently described the evidence then presented by the complainant. As such, it would be duplicative and unnecessary for the complainant to physically reproduce that evidence in this case. The respondent also says that the test before the hearing officer was “entirely different” to that currently before the panel. For that reason, the respondent says that the hearing officer’s decision should have no bearing on the panel’s decision in this case. However, as noted above, the panel has no reason to gainsay the findings of the hearing officer in relation to the evidence then presented. That decision clearly distinguished the evidence presented by the complainant from the tests applied to that evidence. That evidence, as outlined above, strongly suggests that the complainant has a common law mark for the purpose of this element of the Policy.

In Spanton Media Group Pty Ltd v Lion Global Pty Ltd,56 the panelist summarised the requirements thus: To succeed in a complaint under the Policy in relation to an unregistered mark, it is necessary for the complainant to prove that the mark is in fact a trademark. Thus, the complainant must produce evidence proving that, prior to the filing of the complaint, it has provided goods or services under the unregistered mark and had thereby acquired a reputation such that members of the public would associate those goods or services with the complainant and not with others not authorized by the complainant to use the mark. That is to say, the complainant must prove that, prior to filing the complaint, it had acquired a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent: British Heart Foundation v Harold A Meyer III eResolution Case No AF0957.

The auDA auDRP Overview 1.0 also cites the following decisions as relevant authorities: University of Melbourne v Union Melb;57 WOW Audio Visual Superstores Pty Ltd v Comonoz Pty Ltd;58 Brilliance Publishing Inc v My Brilliance Pty Ltd / Ceinwen Schneider;59 Stephens Valuation and Consultancy Pty Ltd v SLR Consulting Australia Pty Ltd;60 and Automatix Pty Ltd t/as Popcake v Todd Polke.61 These decisions are discussed below. In Cambridge Nutritional Foods Ltd and Cambridge Manufacturing Co Ltd v Cambridge Diet Pty Ltd,62 the panel held that the disputed domain name was not identical or confusingly similar to the complainants’ Australian trade marks, but found that it was confusingly similar to the complainants’ international trade mark. As held by the sole panelist Alan Limbury: “The requirement of paragraph 4(a)(i) of the Policy is not limited to trade marks that are registered in Australia nor to registered trade marks: 1SaleADay LLC and Benyamin Federman v LivinWireless, Simon Mochkin and Eli Feiglin WIPO

56 57 58 59 60 61 62

WIPO Cases Nos DAU2007-0007 and DAU2007-0008 (2 January 2008). WIPO Case No DAU2004-0004 (3 December 2004). WIPO Case No DAU2007-0003 (24 July 2007). WIPO Case No DAU2013-0007 (28 May 2013). WIPO Case No DAU2013-0026 (14 November 2013). IAMA Case No 3710 (5 March 2013). WIPO Case No DAU2010-0021 (16 February 2011).

[4.80]

4: Identical or Confusingly Similar .au Domain Names

Case No DAU2010-0016, citing Mass Nutrition Inc and Todd Rosenfeld v Mass Nutrition Pty Ltd now known as Tweed Holdings, Luke McNally WIPO Case No DAU2010-0002.”63 In Constable Care Child Safety Foundation Inc v The Big Bamboo Production Co Pty Ltd,64 the panel acknowledged the existence of the complainant’s common law trade mark rights which it acquired as a result of purchasing the business of another company. In Brilliance Publishing Inc v My Brilliance Pty Ltd / Ceinwen Schneider the three member panel found that: the complainant has amply established by its evidence of sales and distribution in Australia that it has sufficient presence in Australia to establish a common law trade mark. The panel rejects the respondent’s argument that, in order to enjoy common law rights in an unregistered trade mark, the mark must have enjoyed undisturbed use over an extended period, while being promoted to a wide market. This statement reflects neither the Policy, the decisions of many panels under it, nor the common law. It is the distinctiveness of the name that is significant. Contrary to the arguments of the respondent, there is no requirement under Australian law that an unregistered trade mark be in any sense famous or universally recognized in order to support a claim for passing off. Rather, a trade mark, or sign, must have become an identifier of the complainant’s goods or services sufficient to distinguish it from the goods or services of other traders. The same is true under the uDRP; see WIPO Overview 2.0 paragraph 1.7.65

[4.80] Registration of a mark in Australia may also be irrelevant if the mark concerned is “well-known”, and therefore common law rights might be inferred. The fact that a mark is well-known in Australia might supply the necessary link between a complainant and Australia, at least to the extent that it would be in a complainant’s interest to protect its rights in the well-known mark. In any case, the popularity and reputation of a mark tends to work in favour of a complainant in proceedings under the auDRP.66 In assessing such reputation (ie in order to show common law rights), a panel might look at factors such as the total sales, the advertising spend, the number of hits the complainant’s own website receives every month, and the fact that the trade mark has been promoted on national television in home and lifestyle programs.67 The panel in Yaffa Publishing Group Pty Ltd v Australian Panorama Photography observed in relation to a finding of common law trade mark rights: 63 64 65 66

67

Cambridge Nutritional Foods Ltd and Cambridge Manufacturing Co Ltd v Cambridge Diet Pty Ltd WIPO Case No DAU2010-0021 (16 February 2011). WIPO Case No DAU2013-0001 (8 March 2013). Brilliance Publishing Inc v My Brilliance Pty Ltd / Ceinwen Schneider WIPO Case No DAU2013-0007 (28 May 2013). See Compagnie Générale des Etablissements Michelin v Thomas Panagiotopoulos WIPO Case No DAU2013-0011 (31 May 2013) where the panelist stated: “The Panel accepts the evidence of the complainant that that the MICHELIN mark has acquired widespread fame and reputation around the world and is a well-known and famous mark, as had also been found by previous uDRP panels. See Compagnie Générale des Etablissements Michelin v Transure Enterprise Ltd, Host Master / Above. com Domain Privacy WIPO Case No D2012-0045.” See also L’Oréal / L’Oréal Australia Pty v Namewise Pty Ltd / Nicholas Bolton WIPO Case No DAU2013-0009 (27 May 2013), where the panelist stated: “The Panel accepts the submission of the complainant that previous uDRP panels have considered the L’OREAL trade mark to be well known (see L’Oréal SA v Private Registrations Aktien Gesellschaft, Domain Admin WIPO Case No D2012-0780 and L’Oréal v Wen Tao WIPO Case No D2012-0521).” See Crosby Furnishings Pty Ltd v Diablo-Group Pty Ltd WIPO Case No DAU2011-0013 (14 July 2011).

69

70

Australian Domain Name Law

[4.80]

To establish the common law trade mark rights, the complainant must show that the name “Australian Photography” has achieved a “secondary meaning” in that the name has become a distinctive identifier associated with the complainant or its goods or services: Universal City Studios Inc v Burns (WIPO D2001-0784). As appeared in numerous uDRP cases such as Uitgeverij Crux v W Frederic Isler (WIPO D2000-0575), Skattedirektoratet v Eivind Nag (WIPO D2000-1314) and Amsec Enterprises L C v Sharon McCall (WIPO D2001-0083), Imperial College v Christophe Dessimoz (WIPO D2004-0322), relevant evidence of such “secondary meaning” includes the duration and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.68

The requirement of secondary meaning is mainly concerned with generic or descriptive marks that are extensively used over long periods of time – and thereby acquires distinctiveness. Thus, while the word “Emirates” is descriptive of a geographical location, due to the extensive use by the complainant of that word in relation to the airline and freight industries, it had acquired secondary meaning to be protected.69 Likewise, in Research in Motion Ltd v TechWorks Pty Ltd, the panel found that given the strong reputation associated with the complainant’s trade mark (“BLACKBERRY”) confusion is likely – notwithstanding that “blackberry” is a generic term.70 Hence, the secondary meaning supplies the distinctiveness required for the mark to function as a trade mark. However, where a mark remains unregistered in Australia and is not descriptive – all that is required to be shown is that through extensive use of the mark it enjoys a reputation that justifies protection. In the case of the “AASTRA” unregistered mark, showing reputation in Australia was sufficient, and there was no need to demonstrate that the mark had a secondary meaning.71 In this decision, the panelist held: Although the complainant has not, in fact, demonstrated that it “has rights” in a registered mark (having provided evidence only of applications for such marks in Australia), it is well-established that the Policy allows for a complaint to be based on unregistered (or common law) trademark rights. The complainant provides extensive evidence of having a substantial business conducted under its AASTRA mark. It is therefore clear to the panel that the complainant did establish such rights.72

Genuine Benefits Pty Ltd v Mr Justin Hankinson73 was another decision where it was observed that in relation to the descriptive common law mark “http://www.buyaustralian.com”, it would be necessary for the complainant to 68

69

70

71 72 73

LEADR Case No auDRP19/10 (6 January 2011). In relation to “secondary meaning” see further Informa Australia Pty Ltd v Equipment Research Group Pty Ltd LEADR Case No auDRP23/10 (3 March 2011) pp 5-6 [5.2], citing Yaffa Publishing Group Pty Ltd v Australian Panorama Photography LEADR Case No auDRP19/10 (6 January 2011) and Australian Trade Commission v Matthew Reader WIPO Case No DAU2002-0786 (12 November 2002). Emirates, Emirates Group v Bluecom Consulting Group Pty Ltd WIPO Case No DAU2008-0004 (18 April 2008) – the discussion on the acquisition of secondary meaning, however, might have been superfluous, given the established registered trade mark rights of the complainant in the mark “Emirates”. WIPO Case No DAU2013-0016 (24 July 2013). In this decision the panel found for the complainant and held that the disputed domain name (“blackberry.com.au”) contained the complainant’s mark in its entirety. Aastra Telecom Inc v Spring Mountain Enterprises Pty Ltd WIPO Case No DAU2008-0003 (9 April 2008). Aastra Telecom Inc v Spring Mountain Enterprises Pty Ltd WIPO Case No DAU2008-0003 (9 April 2008). LEADR Case No auDRP08/06 (23 August 2006).

[4.90]

4: Identical or Confusingly Similar .au Domain Names

demonstrate sufficient evidence that it had an established reputation in the mark – which the complainant failed to show. A good example of a case where the complainant failed to demonstrate reputation in Australia was in We Buy Any Car Ltd v Highway Auto Mart and Jason Collings.74 The complainant held a number of different registered trade marks in the UK and EU where it could establish reputation for the mark “WEBUYANYCAR.COM”, however this did not translate to an established reputation in Australia. The panel referred to GE Capital Finance Australasia Pty Ltd v Dental Financial Services Pty Ltd,75 where it was held that the reputation in a mark cannot be assumed merely because of a complainant’s assertions that international trade marks are known in a given country.76 The panel also held that the mere assertion by the complainant that its website attracted traffic from Australia is insufficient to establish reputation in Australia – in the absence of evidence that it actually provided services in Australia.77 Further, the panelist found it “inherently unlikely that an Australian consumer would sell a motor vehicle in Australia through a United Kingdombased website and business that does not purport to offer services in Australia. The panel therefore finds that the complainant does not have sufficient reputation in Australia to establish unregistered rights in Australia.”78 Interestingly, the three member panel in PayBurst Financial Technologies and Gregory Fx Iannacci v Virgin Blue Airlines Pty Ltd79 was willing to accept that the complainant had some minimal common law rights in the United States in the “VELOCITY REWARDS” mark, but then found that the complainant had failed to establish paragraph 4(a)(ii) and paragraph 4(a)(iii) of the auDRP.

[4.90] The decisions above suggest that while panels readily find in favour of complainants under the first limb of paragraph 4(a) of the auDRP, the mere establishment of such rights in the absence of proof of a complainant’s Australian business presence will usually result in a failure of the complaint on the other two grounds. The requirement of an Australian “link” does not arise in the context of “names” because the company, business or other legal or trading name must be “registered with the relevant Australian government authority”80 (which automatically provides the requisite nexus with Australia). Where a complainant contends that it has both registered and common law trade marks, whether or not rights exist in the common law trade mark is usually not addressed by the panel. For example, in Facebook Inc v Callverse Pty Ltd,81 the highly experienced three member panel did not at all deal with the complainant’s claim that it also had common law trade marks – perhaps because the complainant had numerous registered trade marks in Australia and around the world. Nevertheless, should the panel have needed to deal with this 74 75 76 77 78 79 80 81

WIPO Case No DAU2012-0004 (11 April 2012). WIPO Case No DAU2004-0007 (7 January 2005). We Buy Any Car Ltd v Highway Auto Mart and Jason Collings WIPO Case No DAU2012-0004 (11 April 2012). We Buy Any Car Ltd v Highway Auto Mart and Jason Collings WIPO Case No DAU2012-0004 (11 April 2012). WIPO Case No DAU2012-0004 (11 April 2012). WIPO Case No DAU2006-0001 (16 March 2006). See footnote to “name” in paragraph 4(a)(i) of the auDRP. Facebook Inc v Callverse Pty Ltd WIPO Case No DAU2008-0007 (4 June 2008).

71

72

Australian Domain Name Law

[4.90]

issue – it is highly unlikely that they would dispute the complainant’s claim – given the worldwide reputation associated with the word “Facebook”.82 Using a trade mark or company name as an acronym is insufficient to constitute rights in that acronym (even as common law trade mark rights) if there has been no promotion or marketing of that term to the wider public.83 However, where a company becomes well-known in the community by its acronym,84 or where a company has registered a domain name comprising the acronym and has actively engaged in business using the acronym,85 common law rights may be readily inferred. In Thompsons, Kelly & Lewis Pty Ltd (t/as Flowserve Pump Division Australia) v DNS Advertising Pty Ltd, the complainant company “Thompsons, Kelly & Lewis Pty Ltd” was known by the acronym “TKL”, and also had registered trade mark and business names in the acronym “TKL”.86 In this decision, the panelist readily found that the disputed domain name, tkl.com.au, be transferred to the complainant.87 The use of a registered mark “SWINBURNE” in its abbreviated form as a domain name “swin.edu.au” was sufficient to attach rights in the abbreviated mark, rendering “swin.com.au” identical or confusingly similar to it.88 Similarly, the use of the domain name “unimelb.edu.au”, which was an 82 83 84

85

86 87 88

Facebook Inc v Callverse Pty Ltd WIPO Case No DAU2008-0007 (4 June 2008). Queensland Electricity Transmission Corp Ltd v The Trustee for Gamm Family Trust LEADR Case No auDRP11/11 (22 August 2011). The Institute of Arbitrators & Mediators Australia (IAMA) v Adjudicate Today Pty Ltd WIPO Case No DAU2012-0021 (13 September 2012). As the panelist noted in this decision: “The complainant does not have any registered trade marks for IAMA. Nor does it have any registered business names for IAMA. However, the materials submitted in the complaint demonstrate that it generally uses the acronym IAMA to designate itself, often in conjunction with its formal name. In addition, it is clear that the complainant is well-known in the community by the designation IAMA. The complainant does not claim that it has registered IAMA with a relevant government authority so its use of IAMA as its trading style does not qualify as a ‘name’ under the broader conception adopted in the Policy. Through its use and reputation in IAMA, however, the complainant has developed rights at common law which it could protect through an action under section 18 of the Australian Consumer Law or in passing off.” Asos Plc v Ceravolo Premium Wines Pty Ltd WIPO Case No DAU2012-0016 (19 September 2012). In this decision, the three member panel found that rights of the complainant arose from the: “…use of the acronym ASOS as a trade mark or service mark in connection with its online business including establishment of common law rights in that name in Australia from 2003. Complainant first used the name and trade mark ASOS in relation to products and services in Australia in 2003 when sales to individuals in Australia were made through its website. Exhibit H to the Statutory Declaration of Fergus Collins made May 3, 2012 evidences a not insignificant number of sales made through the website to Australians. That statutory declaration also provides significant evidence of likely reputation in Australia through sales and marketing activities in the United Kingdom and elsewhere likely to have impacted Australians abroad or Australians who accessed complainant’s website before any rights were acquired by respondent. Further, it is apparent that complainant had a considerable reputation in its common law trade mark in Australia at the time it filed the complaint. The Panel finds, on the balance of the evidence before it, that complainant has, for the purposes of paragraph 4(a)(i) of the Policy, rights in a trade mark, being unregistered trade mark rights in Australia in the trade mark ASOS.” Thompsons, Kelly & Lewis Pty Ltd (t/as Flowserve Pump Division Australia) v DNS Advertising Pty Ltd, CIArb Case No 08/01 (24 March 2008). Thompsons, Kelly & Lewis Pty Ltd (t/as Flowserve Pump Division Australia) v DNS Advertising Pty Ltd, CIArb Case No 08/01 (24 March 2008). Swinburne University of Technology v Swinner aka Benjamin Robert Goodfellow WIPO Case No DAU2004-0003 (8 October 2004).

[4.100]

4: Identical or Confusingly Similar .au Domain Names

abbreviated form of “THE UNIVERSITY OF MELBOURNE” registered trade mark, was sufficient to attract common law trade mark rights in “UNIMELB”.89 While the g2LD – such as “.com.au”, like the gTLD – such as “.com”, is generally ignored for the purposes of the comparison required under paragraph 4(a)(i) of the auDRP, the assessment is a slightly different exercise when the g2LD and/or gTLD form part of the complainant’s trade mark. This issue was before the panel in Environics Pty Ltd v Connectus Pty Ltd,90 where the complainant asserted common law trade mark rights in “ENGINEER.NET.AU”, which was required to be compared with the disputed domain name “engineer.com.au”. The panel held that where “.net.au” is treated as part of the complainant’s trade mark – as opposed to merely being a g2LD designator, the “.com.au” component of the disputed domain was not sufficient to prevent a finding of confusing similarity.91

Unregistered Trade Marks outside of Australia under the auDRP Does ownership of an unregistered trade mark outside of Australia to which the domain name is identical or confusingly similar automatically satisfy the requirements of paragraph 4(a)(i) of the auDRP?

[4.100] On this question, paragraph 1.1B of the auDA auDRP Overview 1.0 states: The issue does not arise under the uDRP. Where the complainant does not have a registered trademark, it must establish that it has unregistered trademark rights in Australia; evidence that it has unregistered trademark rights outside of Australia is insufficient. For unregistered trademark rights to exist in Australia, the complainant must have a reputation in Australia in respect of the unregistered trademark [see paragraph 1.7]. Where there is no evidence (such as sales and revenue data) that the complainant has traded in Australia using the unregistered trademark, it is unlikely the complainant will be able to establish the existence of a reputation for the mark in Australia – with the likely result being that the complainant will not be able to satisfy the requirements of paragraph 4(a)(i) of the Policy.92

The auDA auDRP Overview 1.0 cites the following decisions as relevant authorities for this proposition: GE Capital Finance Australasia Pty v Dental Financial Services Pty Ltd;93 Sitecore Australia Pty Ltd v WB Solutions Pty Ltd;94 and We Buy Any Car Ltd v Highway Auto Mart and Jason Collings.95 These decisions are discussed further below and in the following chapters.

89 90 91 92

93 94 95

University of Melbourne v Union Melb WIPO Case No DAU2004-0004 (3 December 2004). LEADR Case No auDRP03/09 (9 June 2009). Environics Pty Ltd v Connectus Pty Ltd LEADR Case No auDRP03/09 (9 June 2009). Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 5, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2004-0007 (7 January 2005). LEADR Case No auDRP10/08 (20 January 2009). WIPO Case No DAU2012-0004 (11 April 2012).

73

74

Australian Domain Name Law

[4.110]

Rights in Personal Names Can a complainant show auDRP-relevant rights in a personal name?

[4.110] On this question, paragraph 1.6 of the auDA auDRP Overview 1.0 states: The general position is somewhat different from that under the uDRP. Note 1 of the auDRP states that the complainant’s personal name is a “name” for the purposes of the Policy. Thus, a complainant has auDRP-relevant rights in a personal name, even where that name is neither a registered trademark nor an unregistered trademark. At least one panel has found that a well-known nickname of the complainant is sufficient to constitute a “name” for the purposes of the Policy.96

This was found in Shane Keith Warne v Sure Thing Services Pty Ltd97 (discussed below – and cited by the auDA auDRP Overview 1.0 as a relevant decision). The auDA auDRP Overview 1.0 also references Tina Arena v Enigmatic Minds Pty Ltd98 as a relevant decision, which is discussed further below and in the following chapters. In cases where a personal name is to be compared with the disputed domain name, the issue of establishing a “right” does not arise – as only the person identified by the name could file a complaint – provided that their identity can be established (for example, by a birth certificate). auDRP decisions have also recognised rights in nicknames. For example, a panel found that the Australian cricket player, Shane Warne, had rights in his nickname “Warney”: Even apart from the panel’s view that the complainant’s nickname derives from the Australian proclivity for converting to two syllables many one syllable names, “Warne-y” is equally likely to be derived from the cricketing world’s famous chant of “Lill-ee” as the nickname of a famous predecessor bowler to the complainant. Thus it is easy for the panel to accept that the complainant is frequently called “Warne-y” which can be rendered in the phonetically equivalent forms “WARNEY” and “WARNIE”.99

The issue of phonetic similarity was also addressed by the panel in Woolworths Ltd v Cracka IP Pty Ltd,100 where it held that the following disputed domain names: “danmerfie.com.au”, “danmerphy.com.au”, “danmurfy.com.au”, “sellarmasters.com.au”, and “sellermasters.com.au” were “phonetically equivalent” to the complainant’s “DAN MURPHY” and “CELLARMASTERS” trade marks, and therefore confusingly similar. The panel held: Disputed domain names comprising phonetic variations of trademarks have been held to be “confusingly similar” in numerous WIPO cases, for example, VeriSign Inc v VeneSign CA WIPO Case No D2000-0303; Do The Hustle LLC v Tropic Web WIPO Case No D2000-0624; Microsoft Corp v Mike Rushton WIPO Case No D2004-0123.101 96

97 98 99 100 101

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 9, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. LEADR Case No auDRP08/10 (26 May 2010). LEADR Case No auDRP01/07 (17 March 2007). Shane Keith Warne v Sure Thing Services Pty Ltd LEADR Case No auDRP08/10, p 7 (26 May 2010). WIPO Case No DAU2011-0028 (8 December 2011). Woolworths Ltd v Cracka IP Pty Ltd WIPO Case No DAU2011-0028 (8 December 2011).

[4.130]

4: Identical or Confusingly Similar .au Domain Names

Rights in Corporate or Business Names [4.120] A corporate name would be dealt with in a similar manner to personal names, and a “right” in such a corporate name could exist independent of any registered or common law trade mark.102 Corporate names can sometimes be elongated, and this may lead to difficulty for those who rely solely on a right to a name in establishing identity or confusing similarity with a domain name. However, panels have often been flexible with permitting complainants to rely on the most prominent part of their name. For example, a panel found the name “Aldridge” to be confusingly similar to the domain name “aldridge.com.au”, given that it was the most distinctive and prominent part of the corporate name “KJ Aldridge Investments Pty Ltd”.103

Licensee or Other Related Entity Rights Can a trade mark licensee or a related company to a trade mark holder have rights in a trade mark for the purpose of filing an auDRP case?

[4.130] On this question, paragraph 1.8 of the auDA auDRP Overview 1.0 states: The general position is the same as that under the uDRP. In most circumstances, a licensee of a trademark, or an entity related to the registered holder of a trademark mark (such as a subsidiary or a parent of the holder of the trademark), is considered to have rights in a trademark for the purposes of paragraph 4(a)(i) of the Policy. Evidence of the trademark licence and/or of the consent of the trademark holder to the bringing of the complaint would tend – and may, at least in the case of an unregistered trademark, be necessary – to support such a finding. [See paragraph 4.16 in relation to complaints brought by multiple complainants]. One panel has found that the appointment of the complainant as the “exclusive distributor” in Australia of the product that was sold under the registered trademark, together with an “authorisation” of the complainant to use the “trade name” in Australia, was insufficient to provide the complainant with rights in a name for the purposes of the Policy. The reasoning of the panel seems to be that the authorisation to use the “trade name” did not include an authorisation to use a trademark.104

The auDA auDRP Overview 1.0 cites the following decisions as relevant authorities: 102

103

104

See Adjudicate Today Pty Ltd v The Institute of Arbitrators and Mediators WIPO Case No DAU2012-0033 (13 March 2013), where the panelist considered the issue of whether the complainant had rights in the name “Adjudicate Today”, which is the same as the complainant’s incorporated name (ie “Adjudicate Today Pty Ltd”). Although it should be noted that the panelist denied the complaint and actually made a finding of Reverse Domain Name Hijacking. KJ Aldridge Investments Pty Ltd v Aldridge Electrical Industries Pty Ltd LEADR Case No auDRP04/12, p 6 (25 May 2012). In this decision, the panelist held: “Even if the complainant were confined to the full form of its corporate name, the Panel would take the view that the Disputed Domain was confusingly similar to ‘KJ Aldridge Investments Pty Ltd’.” Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 10, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf.

75

76

Australian Domain Name Law

[4.130]

Avid Life Media Inc v Melody Carstairs;105 Graphisoft Australia v CAD Australia Pty Ltd;106 TrueLocal Inc, Geosign Technologies Inc and True Local Ltd v News Interactive Pty Ltd;107 and Sitecore Australia Pty Ltd v WB Solutions Pty Ltd.108 These decisions are discussed further below.

“Smart Numbers” or “Phone Words” under the auDRP Does ownership of a “smart number” or “phone word” to which the domain name is identical or confusingly similar automatically satisfy the requirements of paragraph 4(a)(i) of the auDRP?

[4.140] On this question, paragraph 1.1D of the auDA auDRP Overview 1.0 states: The position is uncertain. Different panels have reached different conclusions on the issue of whether a “smart number” or “phone word” (that is, a telephone number some or all of the digits of which correspond to a word – for example, 1300lawyer) is a “name” to which the auDRP applies. The majority of auDRP panels to have considered the issue have concluded that a smart number or phone word, as such, is not a “name” for the purposes of paragraph 4(a)(i) of the Policy. The reasons for this include: (i) the licence granted by the Australian Communications and Media Authority (ACMA) is to the number only (it does not refer explicitly to any word); and (ii) there may be no word that corresponds to the number (eg 131111) or there may be many words that correspond to the number (eg 13aircraft, 13aircon, 13circle and 13circus for the number 132472). According to these panels, for a smart number or phone word to provide auDRP-relevant rights, it must satisfy the test for being a common law or unregistered trademark [see paragraph 1.7]. One panel has come to the contrary view, for the reasons that: (i) the auDRP Note 1 requirement for a “name” is satisfied by the correspondence of the phone number’s digits with the particular letters allocated to that digit on a keypad; and (ii) the auDRP Note 1 requirement for the name to be “registered with the relevant Australian government authority” is satisfied by the role played by the ACMA in granting the licence to use the phone word.109

The auDA auDRP Overview 1.0 cites the following decisions as relevant authorities on this issue: John Kolenda v 1300 Phonewords Pty Ltd;110 MultiNational Concepts Pty Ltd v 1300 Directory Pty Ltd;111 and Inbound Telecommunications Pty Ltd, Phonename Marketing Australia Pty Ltd v 1300 Directory Pty Ltd, Demetrio Padilla.112 These decisions are discussed further below. The category of “names” is fairly broad, and even in circumstances where a complainant fails to establish common law trade mark rights in a name, rights 105 106 107 108 109

110 111 112

WIPO Case No DAU2011-0001 (9 March 2011). CIArb Case No 05/01 (23 August 2005). WIPO Case No DAU2006-0003 (29 May 2006). LEADR Case No auDRP10/08 (20 January 2009). Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 6-7, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2009-0001 (18 May 2009). WIPO Case No DAU2009-0002 (7 June 2009). WIPO Case No DAU2009-0018 (21 April 2010).

[4.140]

4: Identical or Confusingly Similar .au Domain Names

under this more general category have been acknowledged.113 The meaning of “other legal or trading name” came up in John Kolenda v 1300 Phonewords Pty Ltd,114 where the panel observed: In the present case, the term “1300homeloan” is not the complainant’s personal name nor, so far as the available evidence goes, any company or business name registered by him. If “1300homeloan” is to be found to confer rights on the complainant for the purpose of the present proceedings, therefore, it must be as an “other legal or trading name”. This is a potentially wide category. No doubt it covers other types of names recognized by Australian law such as (but not limited to) the names of incorporated associations. It does not appear to require, however, that the name has been publicly used to develop reputation or goodwill as the inclusion of “name” within the criteria under paragraph 4(a)(i) of the Policy was adopted deliberately to broaden the scope of protection compared to that available under the uDRP. In these circumstances, the panel is prepared to find that the purchase of the phoneword “1300homeloan” at auction by the complainant, having regard also to his stated plans for use of same in connection with business services, qualifies as a “name” (specifically as an “other legal or trading name”) for the purpose of the present proceedings under the .au Policy. To the extent that registration or licensing with a relevant government authority may be required, that appears to be supplied in this case by the role of ACMA under whose auspices the phoneword is directly or indirectly licensed for use.

Another decision which considered the issue of whether smart numbers should be considered a “name” for the purposes of the auDRP is Multi-National Concepts Pty Ltd v 1300 Directory Pty Ltd.115 In this decision the panelist found for the respondent, and while John Kolenda v 1300 Phonewords Pty Ltd116 was referred to, it was distinguished on facts. With respect to the question of whether smart numbers should be considered a “name” under the auDRP, the panelist observed: As a starting point, the wording of the Policy does not expressly consider phonewords… Generally speaking, a name is a word or a series of words used to identify a thing, such as a person or a legal entity or a product or a place. One would not usually consider a telephone number to be a name. Some numbers can be names or trade marks, or form part of a name or trade mark. For example, “911” is a registered trade mark of Porsche and “747” is a registered trade mark of Boeing in some jurisdictions. “7-UP” and “Mitre 10” are well known brands that include numbers. However, as a general point in relation to the Policy, the recognition of a number as a name or trade mark will generally only occur where the number has enjoyed significant promotion and has a reputation that can be tied to particular goods or services, or where the number is the legal name (identifier) for a legal person. The difficulty for the complainant in this case is that it has not put forward any evidence that its phonewords are recognised as a name (or identifier or label) for a legal entity or any other thing, or as a trade mark for any goods or services… 113

114 115 116

For example, see Just Magazines Pty Ltd v Computerised Automotive Reporting Service Pty Ltd LEADR Case No auDRP04/05 (26 May 2005), p 13, [6.3A(h)]. In this decision, the panelist accepted the relevant phrase ″Just Cars″ as a trading name, as there was insufficient evidence to accept it as a trade mark. WIPO Case No DAU2009-0001 (18 May 2009). WIPO Case No DAU2009-0002 (7 June 2009). See also 13 TAXI (Australia) Pty Ltd v Black Cabs Combined Pty Ltd LEADR Case No auDRP08/14 (1 October 2014). WIPO Case No DAU2009-0001 (18 May 2009).

77

78

Australian Domain Name Law

[4.140]

Without some evidence of promotion of the smartnumber and its recognition as a name, the panel cannot see how the complainant has rights in a “name” for the purposes of the first element of the Policy… The panel agrees with the respondent that a telephone number per se was not intended to be a “name” within the meaning of the Policy… The panel wishes to make it clear that its finding does not prevent an entity holding or obtaining rights in a phoneword from having rights for the purposes of the first element of the Policy. The panel is aware of well known phonewords which could well enjoy protection, either as a trade mark or a name, such as 1300 FLOWERS.117

Time at which Rights Arise under the auDRP Does the complainant have auDRP-relevant rights in a trade mark or name that was registered, or in which the complainant acquired unregistered trade mark rights, after the domain name was registered? [4.150] On this question, paragraph 1.4 of the auDA auDRP Overview 1.0 states: The general position is the same as that under the uDRP. The auDRP makes no specific reference to the date on which the owner of the trademark or name must have acquired rights so as to satisfy the requirements of paragraph 4(a)(i) of the Policy. It follows that registration of a domain name before a complainant acquires rights in a trademark or name does not prevent a finding of identity or confusing similarity under the auDRP, although this fact may be relevant to determining whether the second and third requirements of the Policy are satisfied. The relevant time by which a complainant must establish its rights is at the time of the filing of the complaint.118

As the panel in Lance John Picton v KK Factory Seconds Online / Dean James Mackin119 held: In relation to the complainant’s trademark rights, the Policy does not explicitly identify the time at which a complainant must have those rights. But it is clearly implicit in paragraph 4 of the Policy that the complainant should have those rights when the complaint is first filed.

The auDA auDRP Overview 1.0 also cites the following decisions as relevant authorities: Doteasy Technology Inc v M Makras and EA Nahed dba Dot Easy

117

118

119

Multi-National Concepts Pty Ltd v 1300 Directory Pty Ltd WIPO Case No DAU2009-0002 (7 June 2009) was approved by the majority panel in Inbound Telecommunications Pty Ltd, Phonename Marketing Australia Pty Ltd v 1300 Directory Pty Ltd, Demetrio Padilla WIPO Case No DAU2009-0018 (21 April 2010) (Alistair Payne and John Swinson, Warwick Rothnie dissenting). The dissenting panelist, Warwick Rothnie, held that the securing of phonewords through the Australian Communications and Media Authority (ACMA’s) “auction process for smartnumbers qualifies as an ‘other legal or trading name registered with the relevant Australian government authority’. The dissenting Panelist is reinforced in this view by the Registrar of Trade Marks’ practice of refusing to register as a trade mark a mark which includes a phoneword unless the applicant has a right to use the relevant phoneword through ACMA’s smartnumber system.” Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 8, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2007-0005 (10 October 2007).

[4.150]

4: Identical or Confusingly Similar .au Domain Names

Australia;120 Yola Inc v Aaron John Peter Johnson / Aaron Johnson;121 and The Crown in Right of the State of Tasmania t/as Tourism Tasmania v Gordon James Craven.122 It is now a well-established rule that the “rights” of a complainant in relation to a name or a mark must exist before the date of the complaint. It was observed in Woopie-Do Pty Ltd v Goodwin Reading Diagnostic Centre:123 It is now well established that the obligation on a complainant under the uDRP is to show that it “has” a trademark at the time of the filing of the complaint, even if it did not have one at the time the disputed domain name was registered. By analogy, a complainant under the auDRP who relies on a trademark or business name must show that it held that requirement at the time the complaint was filed…The complainant has shown that it had a registered business name at the time the complaint was filed.124

A complainant must usually establish that the trade mark has been registered prior to the date of registration of the disputed domain name.125 While this is not an absolute rule, a complainant unable to establish trade mark rights prior to the alleged date of the disputed domain registration would have difficulty in establishing that the respondent acted in bad faith (as required under paragraph 4(a)(iii) of the auDRP).126 This happened in Zoopla Property Group Ltd v Media Mouse Pty Ltd,127 where the respondent had registered its domain name, which was identical to that of the complainant’s mark, a little more than two years before the complainant had registered its Australian trade mark. The panel, despite the identity of the mark and the domain name, held in favour of the respondent on the basis that the complainant failed to make out the second and third elements of paragraph 4(a) of the auDRP. On this same issue, the panel in Yola Inc v Aaron John Peter Johnson / Aaron Johnson also held: As stated in paragraph 1.4 of the WIPO Overview of WIPO panel Views on Selected uDRP Questions, the consensus view of WIPO uDRP panels is that: “Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The uDRP 120 121 122 123

124 125 126

127

WIPO Case No DAU2006-0011 (31 January 2007). WIPO Case No DAU2010-0017 (3 November 2010). WIPO Case No DAU2003-0001 (16 April 2003). IAMA Case No 3714 (12 April 2013). See also Pickles Auctions Pty Ltd v Complete Hire Pty Ltd WIPO Case No DAU2012-0005 (16 April 2012). In this decision, the panelist stated: “The relevant time at which it is necessary for a complainant to show that it has rights is when the complaint is filed see Valve Corp v ValveNET Inc, ValveNET Inc, Charles Morrin WIPO Case No D2005-0038 and the cases there cited. It is common ground that, at that time, the complainant had rights in its registered trade marks PICKLES and PICKLES ONLINE. The fact that both marks were registered after the registration of the Domain Name may be relevant to the legitimacy and bad faith elements.” IAMA Case No 3714 (12 April 2013), p 9, [59]. See, for example, Roku Inc v It’s So Easy Pty Ltd / Sharyn Webber WIPO Case No DAU2013-0004 (3 May 2013). On this issue, the panel in Arcadia Group Brands Ltd t/as Topshop, Top Shop/Top Man Ltd t/as Topshop v Andrew Cooper, Topshop Holdings Pty Ltd WIPO Case No DAU2015-0026 (28 September 2015) held: “The date of registration or first use of the Trade Mark is immaterial (although of course it is highly pertinent to determination of the third limb of the Policy).” WIPO Case No DAU2013-0002 (27 March 2013). See also PS Business Pty Ltd t/as Property Secrets v Wealth Dynamics International Pty Ltd, CIArb Case No 07/02 (14 November 2007), p 6, [7.1.5], where the panel found that although the domain name is identical or confusingly similar to a name or mark in which the complainant has rights, the respondent had a prior and prevailing interest in respect of the domain name.

79

80

Australian Domain Name Law

[4.150]

makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However, it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trade mark in mind”. See alsofor example, MADRID 2012 SA v Scott Martin-MadridMan Websites WIPO Case No D2003-0598; Digital Vision Ltd v Advanced Chemill Systems WIPO Case No D2001-0827; AB Svenska Spel v Andrey Zacharov WIPO Case No D2003-0527; Iogen Corp v IOGEN WIPO Case No D2003-0544. As with the uDRP, the auDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights.128

“Identical or Confusingly Similar” What is the test for identity or confusing similarity, and can the content of a website be relevant in determining this?

[4.160] On this issue, paragraph 1.2 of the auDA auDRP Overview 1.0 states: The general position is the same as that under the uDRP. The test for identity is that there is “essential or virtual identity” between the domain name and the trademark or name in which the complainant has rights. The test for confusing similarity is typically undertaken by a comparison of the domain name with the trademark or name alone, independent of the other marketing and use factors that might be considered in a trademark infringement or a misleading and deceptive conduct case. Application of the confusing similarity test typically involves a straightforward visual or aural comparison of the trademark or name with the alphanumeric string in the domain name, to determine the likelihood of Internet user confusion. In order to satisfy the test for confusing similarity, the relevant trademark or name would generally need to be recognisable as such within the domain name. While each case must be judged on its own merits, circumstances in which a trademark or name may not be recognisable as such within a domain name may include where the relied-upon mark corresponds to a common term or phrase which is contained or subsumed within another common term or phrase in the domain name (eg, the trademarks UPS and UPS ONLINE within the domain name pickupsonline.com.au). Where the domain name contains only part of the complainant’s trademark or name and that part is highly descriptive or is generic, the domain name is unlikely to be confusingly similar. The inclusion in the domain name of additional terms that are common or descriptive typically is regarded as being insufficient to prevent threshold Internet user confusion, except where the trademark or name itself is a common or descriptive term or where the additional terms have the effect of changing how a typical Internet user would read the domain name. A reversal of the order of the terms of the complainant’s trademark or name may not avoid confusing similarity, at least where those terms are descriptive. Where the domain name consists of the acronym of the complainant’s trademark or name, the domain name is unlikely to be considered confusingly similar to the mark or name unless the complainant can establish a reputation in the acronym. The applicable top-level suffixes in the domain name (eg “.com.au”) would usually be disregarded under the confusing similarity test, except in certain cases where one or other, or both, of the top-level suffixes form part of the relevant trademark or name. auDRP panels generally ignore the content of any website to which the domain name resolves, on the basis that identity or confusing similarity is to determined 128

Yola Inc v Aaron John Peter Johnson / Aaron Johnson WIPO Case No DAU2010-0017 (3 November 2010).

[4.160]

4: Identical or Confusingly Similar .au Domain Names

simply by way of a string comparison – that is, by comparison of the domain name’s text with the text of the complainant’s trademark or name.129

The auDA auDRP Overview 1.0 cites the following decisions as relevant authorities: GlobalCenter Pty Ltd v Global Domain Hosting Pty Ltd,130 where the three member panel held: As is the case under the uDRP, essential or virtual identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics Inc v Camp Creek Co Inc WIPO Case No D2000-0113; Toyota Jidosha Kabushiki Kaisha dba Toyota Motor Corp v S&S Enterprises Ltd WIPO Case No D2000-0802; Nokia Corp v Nokiagirls.com aka IBCC WIPO Case No D2000-0102 and Blue Sky Software Corp v Digital Sierra Inc WIPO Case No D2000-0165. Likewise, the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases. See BWT Brands Inc and British Am. Tobacco (Brands) Inc v NABR WIPO Case No D2001-1480; Koninklijke Philips Elecs NV v In Seo Kim WIPO Case No D2001-1195; Energy Source Inc v Your Energy Source NAF Case No FA 96364; Vivendi Universal v Mr Jay David Sallen and GO247.COM Inc WIPO Case No D2001-1121 and the cases there cited.

This was followed in Travel Insurance Direct Pty Ltd v Paul F Quinn,131 where the panelist held: On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the complainant’s trade marks, see for example, GlobalCenter Pty Ltd v Global Domain Hosting Pty Ltd WIPO Case No DAU2002-0001. This is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing.

The position taken in GlobalCenter Pty Ltd v Global Domain Hosting Pty Ltd132 was approved again in Immihelp LLC v Babak Shahafar133 where the panelist held: As under the Uniform Domain Name Dispute Resolution Policy, “essential” or “virtual” identity is sufficient for the purposes of the Policy: The Stanley Works and Stanley Logistics Inc v Camp Creek Co Inc WIPO Case No D2000-0113; and the gTLD and ccTLD extensions “.com” and “.au” may generally be disregarded in determining identity or confusing similarity: Magnum Piering Inc v The Mudjackers and Garwood S Wilson Sr WIPO Case No D2000-1525.

The auDA auDRP Overview 1.0 also cites the following decisions to be relevant on this point: The Crown in Right of the State of Tasmania t/as Tourism Tasmania v Gordon James Craven;134 The National Office for the Information Economy v Verisign Australia Ltd;135 Swinburne University of 129

130 131 132 133 134 135

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, pp 7-8, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2002-0001 (5 March 2003). WIPO Case No DAU2014-0007 (18 May 2014). WIPO Case No DAU2002-0001 (5 March 2003). WIPO Case No DAU2013-0041 (4 February 2014). WIPO Case No DAU2003-0001 (16 April 2003). LEADR Case No auDRP02/03 (26 June 2003).

81

82

Australian Domain Name Law

[4.160]

Technology v Swinner aka Benjamin Robert Goodfellow;136 Tooling Australia Inc v Austool Ltd (in liq);137 WOW Audio Visual Superstores Pty Ltd v Comonoz Pty Ltd;138 Silpro Pty Ltd v Corey De Silva t/as Silva Service Spit Roast Catering;139 United Parcel Service of America Inc v Wesley Bryant;140 Queensland Electricity Transmission Corp Ltd v The Trustee for Gamm Family Trust;141 and First Alliance Pty Ltd v Bengamen David Hall.142

The “www.” Prefix and the Top-Level Domain (suffix) do not affect the Test of Identity or Confusing Similarity [4.170] The auDRP does not provide any guidance as to the intended meaning

of “identical” or “confusingly similar” in paragraph 4(a)(i) of the auDRP.143 A domain name is always prefixed by “www.” followed by a unique name and suffixed by a top-level domain (TLD), for example, “.com” or in the case of Australia a country-code top-level domain (ccTLD) “.au”. The addition of the gTLD typically does not affect the identity of the domain name.144 All domain names must be prefixed and suffixed by “www.” and the relevant TLD respectively because of the way in which domain names function technologically on the internet. However, it is unlikely for a corporate or personal name to use such a prefix and suffix (although not always in the case of trade marks). For that reason, a name (but less so in the case of a mark) would not be “identical” to a domain name. Therefore, when comparing names or marks with disputed domain names, the TLDs are disregarded when making the comparisons.145 136 137 138 139 140 141 142 143 144

145

WIPO Case No DAU2004-0003 (8 October 2004). IAMA Case No 3045 (10 April 2007). WIPO Case No DAU2007-0003 (24 July 2007). WIPO Case No DAU2008-0013 (22 September 2008). WIPO Case No DAU2009-0012 (11 February 2010). LEADR Case No auDRP11/11 (22 August 2011). IAMA Case No 5017 (1 October 2013). Sterling Marine Pty Ltd v The Trustee for the Costa Family Trust LEADR Case No auDRP02/13 (23 April 2013), p 5, [6.4.2]. See Birchbox Inc v Nabil Sabet WIPO Case No DAU2012-0035 (18 February 2013), citing Arthur Guinness Son & Co (Dublin) Ltd v Dejan Macesic WIPO Case No D2000-1698 (25 January 2001); Rainbow Play Systems Inc v Freeplay Pty Ltd WIPO Case No DAU2015-0035 (27 November 2015); Woopie-Do Pty Ltd v Goodwin Reading Diagnostic Centre IAMA Case No 3714 (12 April 2013), p 9, [60], where the panel held that “the complainant has established that the disputed domain name is relevantly identical, or confusing similar, to the complainant’s recently registered business name, ‘dyslexia’. The only difference is the addition of the letters and symbols ‘.com.au’ in the disputed domain name, which is merely a functional requirement of the domain name system”; Camper Trailers WA Pty Ltd v Off Road Equipment Pty Ltd LEADR Case No auDRP06/04 (12 November 2004), p 6, [6.9(b)(i)]), which held: “The ‘level domain’ components of domain names (that is, ‘.com’, ‘. net’ and similar suffixes) are to be ignored when comparing domain names with other names or marks (see for example, GlobalCenter Pty Ltd v Global Domain Hosting Pty Ltd WIPO Case No DAU2002-0001 (5 March 2003) referred to in Esat Communications Pty Ltd v Kingford Promotions Pty Ltd LEADR Case No 03/2003 (11 July 2003))”; Clarins v Local Produce Australia Pty Ltd WIPO Case No DAU20150036 (10 December 2015) where the panelist held: “When the country code Top-Level Domain (‘ccTLD’) identifier ‘.au’ and the second-level extension ‘.com’ are ignored, the disputed domain name consists of the complainant’s CLARINS trademark. Accordingly, the panel finds that the disputed domain name is identical to a trademark in which the complainant has rights.” See BT Financial Group Pty Ltd v Basketball Times Pty Ltd WIPO Case No DAU2004-0001 (1 June 2004), where it was held: “It is well established by many prior uDRP decisions that

[4.180]

4: Identical or Confusingly Similar .au Domain Names

When a Name or Mark is Identical or Confusingly Similar to a Disputed Domain Name [4.180] The identity of a name or mark to a disputed domain name is not usually difficult to establish, although it has proven to be so in some limited circumstances – where the domain name is an exact match to a name or a mark. Examples where a panel has found an exact match between the complainant’s business name or mark and a disputed domain name include Sterling Marine Pty Ltd v Etolin Pty Ltd146 where the domain name “cameroskiboats.com.au” was identical to the complainant’s registered business name “Camero Ski Boats”; and Bose Corp And Bose Pty Ltd v AAA 01 Center WS DS Ltd147 where “bose.net.au” was held to be identical with the complainant’s mark “Bose”.148 In Camper Trailers WA,149 the panelist sought to provide some guidance as to when a domain name is identical or confusingly similar to a name or a mark. The panel observed, citing BlueChip InfoTech Pty Ltd v Roslyn Jan and Blue Chip Software Development Pty Ltd,150 that “essential or virtual identity” is sufficient to establish that a domain name is identical to a mark or name.151 With respect to “confusingly similar”, the panel observed:

146 147 148

149 150 151

the addition of a general or country code top-level domain (gTLD or ccTLD) such as ‘.com.au’ is without legal significance; see for example: Bayerische Motoren Werke AG v bmwcar. com WIPO Case No D2002-0615; Toyota Jidosha Kabushiki Kaisha dba Toyota Motor Corp v S&S Enterprises Ltd WIPO Case No D2000-0802; Telstra Corp Ltd v Nuclear Marshmallows WIPO Case No D2000-0003.” The BT Financial Group Ltd case has been cited with approval in more recent 2013 decisions such as Cobb International Ltd v Cobb Australia & New Zealand (Pty) Ltd WIPO Case No DAU2013-0005 (23 April 2013) and Ralph Anderl v Yang Xia / Krause Adrian Scott WIPO Case No DAU2013-0008 (2 May 2013). See also the 2013 decision of Smart Voucher Ltd t/as Ukash v Chowdhury, MD Abu Russel and Sydney Business & Technology Group Pty Ltd WIPO Case No DAU2013-0006 (8 May 2013) citing Gardline Surveys Ltd v Domain Finance Ltd, NAF Claim No 153545 (27 May 2003) which held: “The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.” LEADR Case No auDRP03/13 (16 April 2013). LEADR Case No auDRP04/13 (28 April 2013). Some other examples include: Smart Voucher Ltd t/as Ukash v Chowdhury, MD Abu Russel and Sydney Business & Technology Group Pty Ltd WIPO Case No DAU2013-0006 (8 May 2013), where “ukash.com.au” and “ukash.net.au” was found to be identical to the registered trade mark “UKASH”; Statoil ASA v Creative Domain Pty Ltd / Christine K Hoyer WIPO Case No DAU2013-0012 (18 June 2013), where “statoil.com.au” was found to be identical to the registered mark “STATOIL”; Mayne Pharma International Pty Ltd v Namewise Pty Ltd WIPO Case No DAU2012-0001 (8 March 2012), where “astrix.com.au” was found to be identical to the registered trade mark “ASTRIX”; Vitacost.com Inc v Ronald Lee Bradley WIPO Case No DAU2012-0003 (2 April 2012), where “vitacost.com.au” was found to be identical to the registered trade mark “VITACOST”; ThinkGeek Inc v Michael Andrew Lubieniecki WIPO Case No DAU2011-0003 (14 March 2011), where “thinkgeek.com.au” was found to be relevantly identical to the registered mark “THINK GEEK”; Chief Architect Inc v Nigel Varley / CAD Australia Pty Ltd WIPO Case No DAU2011-0004 (1 April 2011), where “chiefarchitect.com.au” was found to be identical to the registered trade mark “CHIEF ARCHITECT”; Cartier International AG v Blogger Pty Ltd, Publishing Australia WIPO Case No DAU2013-0037 (22 January 2013), where “cartier.com.au” was found to be identical with the registered trade mark “CARTIER”; Nehos Communications Pty Ltd v The trustee for the Penrose & Godfrey Family Trust LEADR Case No auDRP10/11 (3 August 2011), where “nehos.com.au” was found to be identical with the registered trade mark “NEHOS”. Camper Trailers WA Pty Ltd v Off Road Equipment Pty Ltd LEADR Case No auDRP06/04 (12 November 2004). LEADR Case No auDRP06/03 (23 December 2003). Camper Trailers WA Pty Ltd v Off Road Equipment Pty Ltd LEADR Case No auDRP06/04

83

84

Australian Domain Name Law

[4.180]

The test of “confusing similarity” is confined to a comparison between the disputed domain name and the name or trade mark alone, independent of other marketing and use factors usually considered in trade mark infringement or other competition cases (see for example The Crown in Right of the State of Tasmania t/as “Tourism Tasmania” v Gordon James Craven WIPO Case No DAU20030001 (16 April 2003). These principles do not, of course, clarify what is meant by “confusing similarity”. In particular, it is not clear what is contemplated to be “confusing” in circumstances where similar domain names and other names are registered or used by different persons. It could be that the test of “confusing similarity” is to be applied in much the same way as the test of “deceptive similarity” in trade mark infringement cases, where the concept of “deception” contemplates consumers who may be deceived or “caused to wonder” about the source or origin of goods or services.152

The test for “deceptive similarity” described above in determining whether a mark or name is “confusingly similar” to a domain name also finds support in other auDRP decisions.153

Confusingly Similar Generic, Descriptive, or Geographical Terms Is a domain name consisting of a trade mark or name and a generic, descriptive or geographical term confusingly similar to a complainant’s trade mark or name?

[4.190] On this issue, paragraph 1.9 of the auDA auDRP Overview 1.0 provides: The general position is the same as that under the uDRP. The addition of merely generic, descriptive, or geographical wording to a trademark or name in a domain name would normally be insufficient, of itself, to avoid a finding of confusing similarity under the first element of the auDRP. In such a situation, panels have usually found the incorporated trademark or name to constitute the dominant or principal component of the domain name. However, in certain cases panels have come to a different conclusion, where a trademark or name (especially one that is of a descriptive nature) is incorporated or subsumed within other words or textual elements of the domain name so that the trademark or name is not clearly the dominant component of the domain name.154

152 153

154

(12 November 2004), p 6, [(6.9)(a)]). See also Sterling Marine Pty Ltd v The Trustee for the Costa Family Trust LEADR Case No auDRP02/13 (23 April 2013), p 5, [(6.4.2)(a)]); Confo Pty Ltd v Meridian Project Consulting Pty Ltd LEADR Case No auDRP05/11 (16 May 2011), p 9, [8.5]. Camper Trailers WA Pty Ltd v Off Road Equipment Pty Ltd LEADR Case No auDRP06/04 (12 November 2004), p 6, [6.9(b)(ii)] – [6.10]. See, for example, Web Profits Pty Ltd v J Batra t/as Arrow Internet Marketing LEADR Case No auDRP09/10 (26 May 2010), p 6, [7.6]; NetRatings Australia Pty Ltd v APT Strategies Pty Ltd LEADR Case No auDRP02/05 (29 March 2005), p 7, [6.10]; Confo Pty Ltd v Meridian Project Consulting Pty Ltd LEADR Case No auDRP05/11 (16 May 2011), p 9, [8.6]; John Brigden v Andom Pty Ltd LEADR Case No auDRP13/05 (31 January 2006), p 6, [6.7]; SellBuyYourself Pty Ltd v Westpoint Real Estate Pty Ltd LEADR Case No auDRP10/05 (25 October 2005), pp 6-7, [6.9] – [6.10]. Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, pp 10-11, http:// www.auda.org.au/assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf.

[4.190]

4: Identical or Confusingly Similar .au Domain Names

The auDA auDRP Overview 1.0 cites Seek Ltd v Arazac Nominees Pty Ltd155 and United Parcel Service of America Inc v Wesley Bryant156 as relevant authorities. The following decisions illustrate how panels have determined the question of whether a domain name consisting of a trade mark or name and a generic, descriptive or geographical term is confusingly similar to a complainant’s trade mark or name. With respect to descriptive terms, the three member panel in Marketstorm Australia Pty Ltd v ACN 140 859 892 Pty Ltd (t/a Recoup Debt Recovery) held that it is not the role of the panel to determine whether or not a term is too descriptive.157 In the words of the panel: The panel finds the “contractors debt recovery” portion of the Registration to be a very descriptive term. Nevertheless, it is not a part of the panel’s function to make a determination as to whether this term is so descriptive that it is not entitled to protection under the Australian Trade Marks Act 1995 (Cth); the fact remains that it is part of a validly registered Australian trade mark in which the complainant has rights, see the majority decision in Drugstore.com Inc v NurhulChee / Robert Murry WIPO Case No D2008-0230.158

In relation to descriptive words more generally – such as the word “seek”, the panel in Seek Ltd v Independent Mortgage Brokers Pty Ltd159 observed: “the term ‘seek’, as an ordinary descriptive word, is, as the panel in EAuto LLC v EAuto Parts WIPO Case No D2000-0096 put it, ‘on the weaker side of the range of distinctive marks’.” Interestingly, the panel in Objective Ware Pty Ltd v Select Software Telecommunications Pty Ltd160 concluded that the business name “The Billing Bureau” was not confusingly similar to “billingbureau.com.au” as “[i]t appears unlikely… that a reasonable person in the market for services of the type offered by the complainant and the respondent would be confused.”161 The panel accepted the respondent’s submissions that “billing bureau” was a descriptive term.162 In Telstra Corp Ltd v CQ Media Group Pty Ltd the panel held: The word “online” is commonly used descriptively for anything connected to the Internet and is common as a part of trademarks for products and services available through the Internet (see: Deutsche Telekom AG v foxQ WIPO Case No D2004-0102). The addition of the descriptive word “online” does nothing to prevent the confusing similarity of the domain name with the complainant’s trademark (see Telstra Corp Ltd v Peter Lombardo, Marino Sussich and Ray Landers WIPO Case No D2000-1511; Barclays Bank PLC v Mr. Mohammed Hassan WIPO Case No D2001-0253; Telstra Corp Ltd v David John Singh WIPO Case No D2002-0260; Lyons Partnership LP and HIT Entertainment PLC v NetSphere Inc WIPO Case No D2004-0118). 155 156 157 158 159 160 161 162

WIPO Case No DAU2006-0010 (18 January 2007). WIPO Case No DAU2009-0012 (11 February 2010). WIPO Case No DAU2011-0026 (28 December 2011). WIPO Case No DAU2011-0026 (28 December 2011). WIPO Case No DAU2006-0012 (28 February 2007). IAMA Case No 2757 (28 April 2005). Objective Ware Pty Ltd v Select Software Telecommunications Pty Ltd IAMA Case No 2757 (28 April 2005), p 14, [7.6]. Objective Ware Pty Ltd v Select Software Telecommunications Pty Ltd IAMA Case No 2757 (28 April 2005), p 14, [7.4].

85

86

Australian Domain Name Law

[4.190]

With respect to the proper approach in assessing identical or confusing similarity, the panel in Pelican Products Inc v Terri Curyer163 cautioned against the use of a trade mark-like analysis in relation to identical or confusing similarity issues in relation to domain names: On this part of the inquiry under the Policy, what is required is simply a comparison of the disputed domain name itself to the complainant’s proven trademarks: see,for example, Facebook Inc v Callverse Pty Ltd WIPO Case No DAU2008-0007. This is different to the question under trademark law, which can require comparisons of the goods or services for which the trademark is registered and those of any impugned use as well as considerations such as the geographical location of the registrations and the impugned use. Such matters, if relevant, may fall for consideration under other elements of the Policy.164

Similarly, in 1SaleADay LLC165 the panel observed: the inquiry required by paragraph 4(a)(i) of the Policy for the purpose of establishing application of the Policy is different from the inquiry required by Australian trademark law for the purpose of establishing trademark infringement. The Policy requires only a comparison of the disputed domain name with any relevant rights proved by the complainant. Considerations such as the priorities in time of competing claims to a trademark or the “location” of the goodwill attaching to a trademark do not fall for consideration under paragraph 4(a)(i) of the Policy, although they may arise for consideration under other paragraphs of the Policy such as paragraphs 4(a)(ii) or 4(a)(iii).

The nature of the respective goods or services for which the marks and domain names were being used for is also irrelevant under paragraph 4(a)(i) of the auDRP, as demonstrated in OASE Asia Pacific Pte Ltd v Wifitech Pty Ltd.166 Here the panel found confusing similarity between the complainant’s mark and the disputed domain name, notwithstanding the fact that the parties were dealing with two completely different products.167 Moreover, the content of the website is also irrelevant under the first limb of paragraph 4(a) as all that matters is a comparison of the name or mark with the disputed domain name, and nothing else.168 On this issue, the panel in Telstra Corp Ltd v CQ Media Group Pty Ltd observed: in considering the elements of paragraph 4(a)(i) of the Policy, the contents of a website are not relevant. In Arthur Guinness Son & Co (Dublin) Ltd v Dejan 163 164

165 166 167

168

WIPO Case No DAU2011-0021 (26 October 2011). Pelican Products Inc v Terri Curyer WIPO Case No DAU2011-0021 (26 October 2011). See also Tina Arena v Enigmatic Minds Pty Ltd LEADR Case No auDRP01/07 (17 March 2007), p 15. 1SaleADay LLC and Benyamin Federman v LivinWireless, Simon Mochkin and Eli Feiglin WIPO Case No DAU2010-0016 (27 September 2010). LEADR Case No auDRP13/11 (10 January 2012). The complainant “is a leader in the field of creatively using water”, while the respondent “is a developer and provider of e-communications technology and services, including but not limited to local and international Voice Over IP communications, website hosting, web development, internet marketing campaigns, wireless networking technology development, desktop support and training.” As the three member panel held in Clark Equipment Co v AllJap Machinery Pty Ltd WIPO Case No DAU2011-0042 (5 March 2012): “the determination in an administrative proceeding under the Policy is not necessarily assisted by a consideration of the nature of ‘use’ of a registered trade mark for the purpose of the Trade Marks Act 1995. Under this limb, the Policy simply requires a comparison of the Domain Name to the complainant’s proven trade marks. How the domain name is used and what the trade mark is registered for is not relevant at this stage of the inquiry, although they may be matters requiring consideration at later stages.”

[4.190]

4: Identical or Confusingly Similar .au Domain Names

Macesic WIPO Case No D2000-1698 the panel held that: “The use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the complainant’s mark into thinking they are on their way to the complainant’s Website.” Further, in The Crown in Right of the State of Tasmania t/as “Tourism Tasmania” v Gordon James Craven WIPO Case No DAU2003-0001, the panel held that: “the test of confusing similarity under the Policy is confined to a comparison of the Disputed Domain Name and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases”.169

Other panels have clearly drawn upon established trade mark principles in their analyses of whether or not the disputed domain name is identical or confusingly similar to a name or trade mark. For example, in Red Bull GmbH v Esia Pty Ltd / Brian Newman170 the panel held: The question arises whether the addition of the word “racing” would mean the disputed domain name is confusingly similar to the RED BULL trade mark within the meaning of Article 4(a)(i) of the auDRP. Confusion would arise if a reader of the disputed domain name was misled (inadvertently or otherwise) as to the origin, association with, ownership or control of a domain name and/or its connection with the trade mark that formed a predominant part of the disputed domain name. This would arise, in particular, if the disputed domain name contained a trade mark that had no association at all with the material on the website to which the disputed domain name resolves, and had no association with a person connected to the trade mark. For example, such connection might be a fan site, protest site, discussion site or some other relationship and not necessarily a commercial connection or association. The predominant part of the disputed domain name is the same as the complainant’s trade mark. The disputed domain name is then, at least similar to the complainant’s trade mark, the only difference being the additional word “racing”. The addition of the common word “racing” suggests that the disputed domain name has some relationship, association or connection (whether positive, negative or otherwise) with the RED BULL trade mark in the context of racing. The complainant has denied, and there is no evidence, that there is any such association, connection or relationship, and the website to which the disputed domain name resolves has no such relationship or connection. In such circumstances the disputed domain name would be likely to confuse a reader because of its similarity with the complainant’s trade mark RED BULL.

In Adjudicate Today Pty Ltd v The Institute of Arbitrators and Mediators171 the panel held: the complainant contends that the word “today” in “Adjudicate Today” is merely a generic or descriptive element and should be ignored. The panel finds… that the word “today” is instead an integral part of the complainant’s name, as “adjudicate” alone merely describes the field of adjudication, which is common to many operators in the alternative dispute resolution field. The panel therefore 169

170 171

Telstra Corp Ltd v CQ Media Group Pty Ltd WIPO Case No DAU2008-0023 (3 March 2009). See also Woolworths Ltd v Cracka IP Pty Ltd WIPO Case No DAU2011-0028 (8 December 2011). Red Bull GmbH v Esia Pty Ltd / Brian Newman WIPO Case No DAU2012-0029 (24 January 2013). Adjudicate Today Pty Ltd v The Institute of Arbitrators and Mediators WIPO Case No DAU2012-0033 (13 March 2013).

87

88

Australian Domain Name Law

[4.190]

finds that the disputed domain name is not identical to the complainant’s name. Nor is it confusingly similar. Whilst there are obvious aural, visual and conceptual similarities between “Adjudicate Today” and “Adjudicate”, as set out above, the “adjudicate” element is descriptive of the services of both the complainant and the respondent, as well as other traders offering adjudication services. A consumer of adjudication services is therefore not likely to be confused into believing that there is any connection in the course of trade between the disputed domain name and the complainant. Moreover, applying a passing off analysis, even if there were the requisite goodwill, there is no misrepresentation and no damage to the complainant.

In Woopie-Do Pty Ltd v Goodwin Reading Diagnostic Centre,172 the panel compared the complainant’s business name and mark “DYSLEXIA ANSWERED” with the disputed domain name “dyslexia.com.au”. The panelist considered the whole name and mark, and found that it was neither identical nor confusingly similar to the disputed domain name.173 The panel did find, however, that the domain name was identical to the complainant’s other more recent business name “DYSLEXIA”.174 This approach is reflected in Brilliance Publishing Inc v My Brilliance Pty Ltd / Ceinwen Schneider,175 where the three member panel refused to separate “BRILLIANCE AUDIO”, rejecting the respondent’s assertion that “AUDIO” was a mere descriptive term.176 The panel relevantly found: The panel rejects the respondent’s argument that, in order to enjoy common law rights in an unregistered trade mark, the mark must have enjoyed undisturbed use over an extended period, while being promoted to a wide market. This statement reflects neither the Policy, the decisions of many panels under it, nor the common law. It is the distinctiveness of the name that is significant. Contrary to the arguments of the respondent, there is no requirement under Australian law that an unregistered trade mark be in any sense famous or universally recognized in order to support a claim for passing off. Rather, a trade mark, or sign, must have become an identifier of the complainant’s goods or services sufficient to distinguish it from the goods or services of other traders. The same is true under the uDRP… The respondent’s argument… that the trade mark of the complainant is BRILLIANCE, because the word AUDIO is merely descriptive and of no weight in the complainant’s trade mark, overlooks the fact that a trade mark should be taken as a whole, and all the complainant’s evidence shows that it has used the mark BRILLIANCE AUDIO as a whole.

In contrast, the panel in Schark Holdings Pty Ltd and Surf Coast News Australia Pty Ltd v Nicholas Soames177 held that the domain name “surfcoastnews.com.au” was not confusingly similar to the mark “SURF COAST TIMES”. The panel found that while the words “Surf Coast” form the substantial part of both the trade mark and the domain name, “taken as a whole and in the particular circumstances of the newspaper trade the addition, respectively, of the words ‘Times’ and ‘News’ serve to distinguish the 172 173 174 175 176 177

IAMA Case No 3714 (12 April 2013). IAMA Case No 3714 (12 April 2013), pp 8-9, [57] – [58]. IAMA Case No 3714 (12 April 2013), p 9, [59]. Brilliance Publishing Inc v My Brilliance Pty Ltd / Ceinwen Schneider WIPO Case No DAU2013-0007 (28 May 2013). Brilliance Publishing Inc v My Brilliance Pty Ltd / Ceinwen Schneider WIPO Case No DAU2013-0007 (28 May 2013). WIPO Case No DAU2011-0032 (15 December 2011).

[4.200]

4: Identical or Confusingly Similar .au Domain Names

two.”178 Similarly, in Tooling Australia Inc v Austool Ltd (in liq), the panel did not accept that the domain name “http://www.australiantooling.com.au” was identical or confusingly to the name “Tooling Australia Inc” because the words “tooling” and “Australia” were descriptive, and the small number of people involved in the relevant industry.179 Although in the same decision the panelist rather bizarrely found that the domain name “http:// www.toolingaustralia.com.au” is identical or confusingly similar to the name “Tooling Australia Inc”, primarily because of the respondent’s admission that it “does not dispute that the toolingaustralia.com.au domain is identical to the name that complainant registered.”180 [4.200] The case of confusing similarity is stronger where the added words go to describe the complainant’s business or service, as in Perpetual Ltd v Perpetual Home Loans Pty Ltd, where the generic term “home loans” was held to be “obviously associated with the complainant’s business” in relation to the disputed domain “perpetualhomeloans.com.au”.181 A number of decisions have found that the mere addition of descriptive or generic words to the disputed domain name is insufficient to avoid a finding of confusing similarity.182 The addition of the descriptive word “solar” in an attempt to differentiate the “AGL” mark from “aglsolar.com.au” was unsuccessful.183 In this regard, the panel observed: The disputed domain name differs from the complainant’s trade marks by the addition of the word “solar.” However, the disputed domain name incorporates the term “AGL” in its entirety as the dominant element. Where this is the case, it has been held that generic or descriptive words are insufficient to distinguish the disputed domain name from the registered trade mark (see PepsiCo Inc v Diabetes Home Care Inc and DHC Services WIPO Case No D2001-0174 and Nokia Corp v Nokiagirls.com aka IBCC WIPO Case No D2000-0102). The term “solar” is descriptive of some of the goods and services provided by the complainant. In that respect, the addition of the term is more likely to increase potential confusion among Internet users searching for the complainant’s business rather than act as a distinguishing feature.184

On the other hand, the incorporation of a descriptive element from a trade mark would not necessarily cause confusing similarity – as generic elements are in any case meant to be used by all traders. To illustrate, in Find Marketing Pty Ltd v Troy Holland and Taryn Green,185 although the complainant could establish rights in the registered Australian trade mark “FIND”, the panel found in favour of the respondent on the grounds that the term is a generic word.186 Similarly, in EnergyAustralia Pty Ltd v Free Energy Australia Pty 178 179 180 181 182

183 184 185 186

WIPO Case No DAU2011-0032 (15 December 2011). Tooling Australia Inc v Austool Ltd (in liq) IAMA Case No 3045 (10 April 2007), p 11, [7.5]. Tooling Australia Inc v Austool Ltd (in liq) IAMA Case No 3045 (10 April 2007), pp 11-12, [7.6]. WIPO Case No DAU2009-0009 (2 November 2009). See generally Silpro Pty Ltd v Corey De Silva t/as Silva Service Spit Roast Catering WIPO Case No DAU2008-0013 (22 September 2008); NetStar Australia Pty Ltd v James Nyunt WIPO Case No DAU2007-0011 (29 January 2008); Beachbody LLC v Pan, Wei Hong WIPO Case No DAU2013-0020 (11 September 2013). AGL Energy Ltd v Leon Palamara WIPO Case No DAU2011-0033 (24 November 2011). AGL Energy Ltd v Leon Palamara WIPO Case No DAU2011-0033 (24 November 2011). LEADR Case No auDRP09/11 (22 July 2011), pp 3-4, [6.6] – [6.9]. But see Leaders Computers Pty Ltd v Australian Flourish Pty Ltd LEADR Case No auDRP05/12 (13 June 2012), p 8, [7].

89

90

Australian Domain Name Law

[4.200]

Ltd,187 where a comparison was made between the complainant’s mark and name “ENERGYAUSTRALIA” and the disputed domain name “freeenergyaustralia.net.au”, the three member panel, finding for the respondent, observed: The panel has therefore compared “freeenergyaustralia” with ENERGYAUSTRALIA. Obviously both character strings contain the common characters “energyaustralia”. But that is the beginning and end of the similarity. “Energy” is an ordinary English noun. “Australia” is a proper noun being the name of a country. “Free” is another ordinary English word that is most usually used as an adjective or a verb. The characters “freeenergyaustralia” can be read as a single word with no obvious denotation or connotation. Or they might be read as “free Energy Australia” with “free” used as a verb synonymous with “liberate” and “Energy Australia” signifying the complainant. They might be read as “free energy Australia” with “free” used as an adjective denoting no cost, “energy” used as an ordinary noun, and “Australia” designating either a location in respect of which the free energy is being referenced or the collective population to whom the claim of free energy is being directed. There are no doubt other variants but what is clear is that to make good its case under paragraph 4(a)(i) the complainant has to persuade the panel that the Disputed Domain Name is “confusingly” similar to its name or mark. Since the complainant’s mark is embedded in the Disputed Domain Name, it is hard to say there is no similarity at all, but even a finding that the Disputed Domain Name is similar to the complainant’s name or mark is not sufficient. The critical question on this aspect of the auDRP is whether the similarity is “confusing”. See for example, the panel’s discussion in SAP AG v Reffael Caspi WIPO Case No D2009-0060. In this panel’s view, not only must a complainant establish similarity between the disputed domain name and its trade marks, but it must also establish that, on a direct (objective) comparison between the two, people seeing the disputed domain name will likely be confused by that similarity as to the trade origin of the products, services or proprietorship of the site to which the disputed domain resolves. Whilst the panel is not prepared to say that no-one could possibly be confused, it is certainly not satisfied that a substantial class of persons seeing only the Disputed Domain Name would be more likely than not to believe that the website to which that domain name resolved was likely to refer to goods and services of the complainant.

In Telstra Corp Ltd v Mandino Pty Ltd,188 the panel held that the disputed domain names “yellowbook.com.au” and “yellowbook.net.au” were not confusingly similar to the complainant’s mark “Yellow Pages” because “Yellow” is a generic word: The test of confusing similarity, in the context of the Policy, was set out in GlobalCenter Pty Ltd v Global Domain Hosting Pty Ltd WIPO Case No DAU2002-0001; reiterated in The Crown in Right of the State of Tasmania t/as “Tourism Tasmania” v Gordon James Craven WIPO Case No DAU2003-0001. In the latter case, the panel relevantly stated that: the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases. Applying this test, the panel finds that there is no confusing similarity between the disputed domain names and the complainant’s mark. 187 188

WIPO Case No DAU2013-0019 (5 September 2013). WIPO Case No DAU2006-0006 (28 July 2006).

[4.200]

4: Identical or Confusingly Similar .au Domain Names

The complainant’s marks all combine the word “Yellow” with another word: including “Yellow Pages”, “Hello Yellow”, “Find it in Yellow”, and “Electronic Yellow Pages”. The disputed domain names do not incorporate any of these marks entirely (and the complainant does not argue that it has rights in the mark “Yellow Book”). The disputed domain names incorporate only a part of the complainant’s marks: the word “Yellow”. “Yellow” is obviously a highly generic word. The complainant has no registered mark in relation to that generic word alone. The complainant says it has applied to register such a mark. However a trademark application does not, by itself, give the complainant rights for the purpose of the Policy. (See the discussion by this panel in TrueLocal Inc, Geosign Technologies Inc and True Local Ltd v News Ltd WIPO Case No DAU2006-0004.)… The panel has not found that the essential features of the complainant’s mark are sufficiently incorporated. This is not a case in which there are subtle differences between marks conveying the same impression or idea (like in for example, Barnes & Noble College Bookstores Inc v Language Direct WIPO Case No D2003-0142, which applied the same principle). In the panel’s view, for the reasons set out above, the differences are more than subtle.

Similarly, the addition of the word “store” to the “L’Oreal” mark forming “lorealstore.com.au”,189 or the addition of the word “star” to the “Michelin” mark forming “michelinstar.com.au”,190 did not render the respective domain names sufficiently dissimilar to avoid confusion. The same applied to the use of “collections” in a failed attempt by the respondent to distinguish “brillianceaudiocollections.com.au” from the mark “BRILLIANCE AUDIO”.191 The added word “insurance” to set the name and trade mark “BUDGET DIRECT” apart from “budgetdirectinsurance.com.au” was wholly 189 190 191

L’Oréal / L’Oréal Australia Pty v Namewise Pty Ltd / Nicholas Bolton WIPO Case No DAU2013-0009 (27 May 2013). Compagnie Générale des Etablissements Michelin v Thomas Panagiotopoulos WIPO Case No DAU2013-0011 (31 May 2013). Brilliance Publishing Inc v My Brilliance Pty Ltd / Ceinwen Schneider WIPO Case No DAU2013-0007 (28 May 2013). Some other examples include: GM Holden Ltd v Publishing Australia Pty Ltd WIPO Case No DAU2011-0002 (7 March 2011), where the added generic word “discounts” to the mark “HOLDEN” was insufficient to prevent confusing similarity in the disputed domain “holdendiscounts.com.au”; Bayerische Motoren Werke AG v Publishing Australia Pty Ltd, ACN 120 531 982, Mr. Nicholas Crawshay WIPO Case No DAU2011-0024 (24 November 2011), again, where the added generic word “discounts” to the mark “BMW” was insufficient to prevent confusing similarity in the disputed domain “bwmdiscounts.com.au”; Giorgio Armani SpA v Essential Mall Pty Ltd WIPO Case No DAU2011-0011 (13 May 2011), where the added generic word “watches” to the marks “ARMANI” and “EMPORIO ARMANI” was insufficient to prevent confusing similarity in the disputed domains “armaniwatches.com.au” and “emporioarmaniwatches.com.au”; Bayerische Motoren Werke AG v Gregory James Talifero WIPO Case No DAU2011-0009 (25 April 2011), where in relation to the disputed domains “buybmw.com.au” and “sellingbmw.com.au” the panel held: “the addition of the verbs ‘buy’ and ‘selling’ to the complainant’s famous mark are hopelessly inadequate to prevent the Disputed Domain Names from being confusingly similar to the complainant’s registered trade marks for BMW as well as the abbreviated name by which it is corporately known”; Red Bull Gmbh v Callaghan & Callaghan LEADR Case No auDRP06/11 (9 June 2011), where the added descriptive word “mobile” to the mark “RED BULL” did “nothing to detract from the distinctiveness of that mark” with respect to the disputed domain “redbullmobile.com.au”; AOT Group Ltd v Park Ward House Pty Ltd / Geoffrey Ballard WIPO Case No DAU2011-0018 (23 August 2011), where the added prefix “www” to the mark “NEED IT NOW” was insufficient to prevent confusing similarity in the disputed domain “wwwneeditnow.com.au”; PARROT v Binh An Nguyen WIPO Case No DAU20110016 (24 August 2011), where “ardrone.com.au” was found to be confusingly similar to the

91

92

Australian Domain Name Law

[4.200]

unsuccessful.192 In Clark Equipment Co v R & R Equipment Pty Ltd,193 the panelist took the view that the addition of the descriptive suffix “sales” to the complainant’s mark “BOBCAT” to the disputed domain “bobcatsales.com.au” only increased the likelihood of confusing similarity because “a customer will be led to think that this is the complainant’s mark coupled with a direct reference to goods or services that it sells.”194 Similarly, “oampscredit.com.au” was confusingly similar to the “OAMPS” word and mark, because given that the complainant was part of a group of companies providing various financial services, consumers “would reasonably conclude this to include credit services”, and the addition of the word “credit” only increased this likelihood of confusion.195 In Google Inc v Q Interactive Pty Ltd / Mr Victor Quinteros, the words “app” and “store” were insufficient to differentiate the domain name “androidappstore.com.au” from Google’s trade mark “ANDROID”, especially because “the complainant sells applications, commonly known as ‘apps’, in an online store.”196 The replacement of the word “car” with “bike” in a comparison between the mark “JUST CAR INSURANCE” and the domain name “justbikeinsurance.com.au” was held to be confusingly similar, because the complainant’s customers would believe that the disputed domain name was a sub-branch of the complainant’s business.197 Similarly, the use of “seekbusiness.com.au” would be regarded as a subset of the complainant’s business which uses the “SEEK” mark.198 [4.210] Confusing similarity has also been inferred where the added or substituted text in the disputed domain name has the same meaning as those in a name or trade mark. This issue was considered in Budget Rent A Car v Emma Faye Weekly,199 where the panelist held in relation to the substituted word “hire” in place of “rent a”: The disputed domain name contains both the terms “Budget” and “Car” which are prominently present in the complainant’s name. While the disputed domain name adds the term “hire” instead of “rent a”, those terms are virtually identical in meaning… Taking all these facts together, the panel considers that there is likely to be potential confusion in the public mind between the association of the disputed domain name and the complainant’s name. The respondent relies on the fact that the disputed domain name incorporates three generic words: “budget”,

192 193 194 195 196 197 198

199

marks “AR.DRONE” and “AR DRONE”; Woolworths Ltd v Save Cash Pty Ltd WIPO Case No DAU2011-0019 (5 October 2011), where “wooliesonline.com.au” was found to be confusingly similar to the “WOOLLIES” mark. A&G Insurance Services Pty Ltd v Tiana Smith WIPO Case No DAU2012-0013 (27 June 2012). WIPO Case No DAU2012-0011 (4 June 2012). WIPO Case No DAU2012-0011 (4 June 2012). OAMPS Insurance Brokers Ltd v Risk Mitigation Solutions Ltd (formerly OAMPS Credit Ltd) LEADR Case No auDRP07/12 (24 July 2012), p 6, [5.1]. Google Inc v Q Interactive Pty Ltd / Mr Victor Quinteros WIPO Case No DAU2012-0026 (14 January 2013). Just Car Insurance Agency Pty Ltd v Throne Ventures Pty Ltd WIPO Case No DAU20080015 (24 September 2008). Seek Ltd v Arazac Nominees Pty Ltd WIPO Case No DAU2006-0010 (18 January 2007). Although given the descriptive word “SEEK”, the three member panel concluded “with some hesitation, that complainant’s mark and disputed domain name are confusingly similar. It does so on the basis that notwithstanding the inherent weakness in complainant’s mark, the word ‘seek’ is clearly the dominant operator in respondent’s ‘seekbusiness’ domain name and it would not be unlikely that internet users would find the word ‘seekbusiness’ to be a subset of complainant’s SEEK trade mark.” WIPO Case No DAU2010-0020 (16 February 2011).

[4.210]

4: Identical or Confusingly Similar .au Domain Names

“car” and “hire”. To the question of confusing similarity this reliance is misplaced. The issue is not whether these terms taken separately are generic – they plainly are. The issue is whether the combination of those terms, as they appear in the disputed domain name, is confusingly similar to the complainant’s registered business name as a whole. There are many examples of such combinations being found to be confusingly similar to a name or mark in which a complainant has rights… including for example, Screwfix Direct Ltd v Brian Perry WIPO Case No DAU2010-0019 (involving the combination of three descriptive terms in the domain name screwfixdirect.com.au). Another one is Just Car Insurance Agency Pty Ltd v Throne Ventures Pty Ltd WIPO Case No DAU2008-0015 (justbikeinsurance.com.au).

Similarly, with respect to the disputed domain name “justbikes.com.au”, the panel in Just Magazines Pty Ltd v Australian Just Bikes of the Northern Rivers200 held with respect to the mark “JUST MOTOR BIKES”: The test of “confusing similarity” is restricted to comparison of the domain name to the trade mark itself, independent of the content of the site or other marketing factors considered in trade mark cases. See, The Crown in Right of the State of Tasmania t/as “Tourism Tasmania” v Gordon James Craven WIPO Case No DAU2003-0001. The name JUST MOTOR BIKES consists purely of generic terms, as does JUST BIKES. There is no distinctive element incorporated in the Domain Name. Cf. Arthur Guinness Son & Co (Dublin) Ltd v Dejan Macesic WIPO Case No D2000-1698; Ansell Healthcare Products Inc v Australian Therapeutics Supplies Pty Ltd WIPO Case No D2001-0110. The term “Motor Bike” also potentially has a different plain meaning from “Bikes” (in that the latter could refer to a push bike). The panel considers that there is therefore no confusing similarity between the Domain Name and the name JUST MOTOR BIKES.201

Whether or not something is held to be confusingly similar where a disputed domain name only comprises part of a name or mark will generally depend on the degree of similarity. Thus, “apolloblinds.com.au” was held to be confusingly similar to the business name “Apollo Window Blinds Pty Ltd”, since Apollo was the distinctive part of the name that was copied in the domain name.202 The panelist held: The present is significantly different from cases such as BlueChip InfoTech Pty Ltd v Jan and Blue Chip Software Development Pty Ltd LEADR Case no 06/03 to which the respondent referred. In that case, the expression “bluechip” was used as laudatory epithet, rather like “good” or “high quality”. In the present case “Apollo” is not a word which can be used in that descriptive way.203

With respect to a domain name consisting of a trade mark or name and a geographical term, Messages on Hold Australia Pty Ltd v Media Group Pty Ltd204 is an interesting decision, where the complainant asserted rights in a mark comprising the words “Messages on Hold”. The disputed domain names were: “messagesonholdperth.com.au”; “messagesonholdbrisbane.com.au”; 200 201 202 203 204

LEADR Case No auDRP06/08 (21 November 2008). LEADR Case No auDRP06/08 (21 November 2008), p 5, [8.4]. Apollo Window Blinds Pty Ltd v J Firriolo and V Firriolo IAMA 3657 (8 October 2012), p 3, [6]. Apollo Window Blinds Pty Ltd v J Firriolo and V Firriolo IAMA 3657 (8 October 2012), p 4, [6]. LEADR Case No auDRP01/13 (16 April 2013).

93

94

Australian Domain Name Law

[4.210]

“messagesonholdsydney.com.au”; “messagesonholdmelbourne.com.au”; and “messagesonholdadelaide.com.au”. The panelist accepted the complainant’s submission that: If an objective bystander were to be presented with each of the links referred to in paragraph 11.8 above, it is likely that he or she would conclude that the links form part of the complainant’s website, in that, they are branches of the complainant’s business across the major capital cities in Australia. This presumption is not unreasonable given that there are no distinguishing features setting apart each of the disputed domain names from the complainant’s Trade Marks.205

Thus, where the significant elements of a disputed domain name and a name/mark are identical or confusingly similar, and the added elements do not render the mark/ name and disputed domain name sufficiently different, this will not satisfy paragraph 4(a)(i) of the auDRP. In Messages on Hold Australia Pty Ltd v Media Group Pty Ltd206 the added element – that is, the names of major Australian cities – did not sufficiently differentiate the disputed domain name(s) and the complainant’s mark, as consumers would reasonably conclude that the domain names represented the complainant’s local branches in each of the Australian cities. The same conclusion was made in relation to the addition of the name of a Sydney suburb in a futile attempt to distinguish a trade mark from a disputed domain name,207 and the addition of the name of a country in an attempt to distinguish the domain name from a protected mark.208

Geographical Terms or Identifiers Can a complainant show auDRP-relevant rights in a geographical term or identifier?

[4.220] On this issue, paragraph 1.5 of the auDA auDRP Overview 1.0 states: The general position is somewhat different to that under the uDRP. At least one panel has considered the issue, and has concluded that a geographical term cannot function as a trademark or service mark for the purposes of paragraph 4(a)(i) of the Policy unless its geographical significance has been displaced by long and extensive use as a brand by a single trader in such a manner as to distinguish that trader’s goods and services from those of competitors. However, a geographical term will still be a name for the purposes of paragraph 4(a)(i) of the Policy if it is the complainant’s company, business or other legal or trading name and is 205 206 207

208

LEADR Case No auDRP01/13 (16 April 2013), p 7, [5.2]. LEADR Case No auDRP01/13 (16 April 2013). EFG Nominees Pty Ltd v Lenland Property Development Pty Ltd IAMA Case No 3658 (12 October 2012). The question before the panel in this decision was whether the disputed domain name “thepointkirribilli.com.au” was deceptively similar to the complainant’s trade mark “THE POINT”. The panelist held (at p 6, [6]) that “the suffixed ‘kirribilli’ segment of the Disputed Domain Name is insufficient to displace the primary signification of ‘the point’.” Technosystems Consolidated Corp, Invention Submission Corp t/as Invent Help v Hugh Godman, Royal Computer Pty Ltd WIPO Case No DAU2007-0001 (19 June 2007). The three member panel held: “As regards the Disputed Domain Name, inventhelpaustralia.com.au, the Panel believes that a geographic descriptor cannot be simply used by a respondent in an effort to disguise the similarity between a domain name and another parties” trade mark. The Panel refers to the case of Telstra Corp Ltd v Ozurls WIPO Case No D2001-0046 in which the panel found that the insertion of a geographical descriptor did not detract from the fact that the domain names at issue were confusingly similar to the complainant’s otherwise identical mark. The Panel therefore finds that the Disputed Domain Name, inventhelpaustralia.com.au, is confusingly similar to the complainant’s trade mark. The complainant had registered rights in the trade mark “INVENTHELP”.

[4.240]

4: Identical or Confusingly Similar .au Domain Names

registered with the relevant Australian government authority, or if it is the complainant’s personal name – because Note 1 of the Policy states that each of those is a “name” for the purposes of the Policy.209

The auDA auDRP Overview 1.0 cites The Crown in Right of the State of Tasmania t/as Tourism Tasmania v Gordon James Craven210 as a relevant decision on this issue.

“Sucks”-type Domain Name Disputes Is a domain name consisting of a trade mark or name and a negative term confusingly similar to the complainant’s trade mark or name? (“sucks cases”)

[4.230] On this issue, paragraph 1.3 of the auDA auDRP Overview 1.0 states: The position is unknown. It appears that no auDRP case has yet addressed the issue of a domain name consisting of a trademark and a negative or pejorative term, such as “[trademark]sucks.com.au”. Thus, it is not clear whether – and, if so, in what circumstances – such a domain name will be found to be confusingly similar to the complainant’s trademark.211

The auDA auDRP Overview 1.0 does not cite any decisions on this question.

Typosquatting Is a domain name which contains a common or obvious misspelling of a trade mark or name (ie typosquatting) confusingly similar to a complainant’s trade mark or name?

[4.240] Paragraph 1.10 of the auDA auDRP Overview 1.0 states: The general position is the same as that under the uDRP. A domain name that contains a common or obvious misspelling of a trade mark or name normally will be found to be confusingly similar to such trade mark or name, where the misspelled trade mark or name remains the dominant or principal component of the domain name. However, where the variation to the domain name – even if only by a single character – fundamentally changes the meaning of the domain name, the domain name will not be confusingly similar to the trade mark. There appear to be very few auDRP cases concerning obvious misspellings of a trade mark or name. The likely reason for this is auDA’s policy prohibiting the deliberate registration of a domain name that is a misspelling of an entity, personal or brand name that does not belong to the registrant, in order to trade on the reputation of the other entity, person or brand (currently “2008-09 – Prohibition on Misspellings Policy”). Under that policy, auDA will instruct the registrar to delete a misspelt domain name in the event that a complaint is made to auDA and the registrant is unable to show that the domain name is not a prohibited misspelling.212 209

210 211

212

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, pp 8-9, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2003-0001 (16 April 2003). Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 8, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 11, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf.

95

96

Australian Domain Name Law

[4.240]

The auDA auDRP Overview 1.0 cites United Parcel Service of America Inc v Wesley Bryant,213 Telstra Corp Ltd v Mikhail Doubinski and Yury Sharafutdinov t/as AAA Marketing World,214 and Woolworths Ltd v Cracka IP Pty Ltd215 as relevant authorities which are examined further below. It is not surprising that a mere added letter would be sufficient to avoid a finding of confusing similarity. For example, the three member panel in Li-Chu (Linda) Stokes v Jonathan Bahr216 held with respect to the disputed domain name “costumesdirect.com.au”: “Although the names ‘Costume Direct’ and ‘Costumes Direct’ are not identical, they are the same apart from one letter. That letter does not change the nature of what is direct and is otherwise insubstantial”.217 Similarly, the addition of one letter, and one word, was held to be insufficient to distinguish “googler.com.au”,218 and 219 “googlebay.com.au” from the very well known registered trade mark “GOOGLE”. With respect to the disputed domain names “quarryvaluation.com.au” and “quarryvaluations.com.au”, the panel in Stephens Valuation and Consultancy Pty Ltd v SLR Consulting Australia Pty Ltd220 held: The latter, plural form is virtually identical to that component of the complainant’s mark. As stated in i2 Technologies Inc v Richard Alexander Smith WIPO Case No D2001-0164, “it is trite law and basic common sense that the mere change from singular to plural or vice versa is not sufficient to avoid confusion for trade mark purposes or passing off purposes.”221

On this issue, the panelist in Telstra Corp Ltd v Mikhail Doubinski and Yury Sharafutdinov t/as AAA Marketing World222 also held: It is true, as the respondents point out, that “[w]here the alteration of a domain name –even by a single character–fundamentally changes its meaning, the presumptions of typo-squatting is [sic] inapplicable … A&F Stores Inc et al v Chad Nestor … D2003-0260 …. eCrush.com Inc v Cox, Davis & Simpson LLC et al … D2004-0552”. However, in this case the deletion of the “s” from the end of the term “white pages” does not fundamentally change its meaning such that the case can be characterised, in the words of the respondents, as one involving “one stand-alone term sometimes used as a domain name that happens, at a glance, to look like another stand-alone term sometimes used as a domain name”. Terms in the plural and in the singular are far more closely related than such a claim would imply.223

Other examples where a letter has been intentionally omitted, or a word deliberately misspelt, include Macquarie Group Ltd v McQuarie Group Pty 213 214 215 216 217 218 219 220 221

222 223

WIPO Case No DAU2009-0012 (11 February 2010). WIPO Case No DAU2006-0008 (5 October 2006). WIPO Case No DAU2011-0028 (8 December 2011). LEADR Case No auDRP02/11 (21 April 2011). Li-Chu (Linda) Stokes v Jonathan Bahr LEADR Case No auDRP02/11 (21 April 2011), p 7, [11]. Google Inc v Jan Jeltes WIPO Case No DAU2008-0012 (20 October 2008). Google Inc v Dmitri Rytsk WIPO Case No DAU2007-0004 (8 August 2007). WIPO Case No DAU2013-0026 (14 November 2013). Stephens Valuation and Consultancy Pty Ltd v SLR Consulting Australia Pty Ltd WIPO Case No DAU2013-0026 (14 November 2013). See also Jean Heitz v Ghidella, Rosalia WIPO Case No DAU2011-0023 (18 October 2011); Informa Australia Pty Ltd v Reed Business Information Pty Ltd LEADR Case No auDRP02/09 (9 April 2009), p 11, [7.21]. WIPO Case No DAU2006-0008 (5 October 2006). Telstra Corp Ltd v Mikhail Doubinski and Yury Sharafutdinov t/as AAA Marketing World WIPO Case No DAU2006-0008 (5 October 2006).

[4.240]

4: Identical or Confusingly Similar .au Domain Names

Ltd / Roland Storti,224 where the domain name “mcquarie.com.au” was found to be confusingly similar to the registered trade mark “MACQUARIE” because “it is highly likely that many internet users could, in haste, read ‘mcquarie’ as being ‘macquarie’ and/or misspell ‘macquarie’ as ‘mcquarie’.”225 A respondent’s attempt to substitute “supply” for “supplies” did not prevent the panel from a finding of confusing similarity between the disputed domain “aussiesoapsupply.com.au”, and the names and marks “AussieSoapSupplies” and “Aussie Soap Supplies”.226 Similarly, the panel held that the difference between the complainant’s registered trade mark “TIGERDIRECT” and “tigersdirect.com.au” was “insubstantial” and created “an obvious likelihood of confusion”, given that the only difference was the addition of the letter “s” in the latter.227 In Debbie Morgan Macao Commercial Offshore Ltd, Missguided Ltd v Samir Vora,228 the respondent admitted to registering the domain name “misguided.com.au”, which was a misspelling of the complainants’ trade mark “MISSGUIDED”. Panels have also considered numbers and symbols – such as apostrophes and hyphens, in typosquatting cases. In Kelly’s Distributors Pty Ltd v Rybu Pty Ltd,229 a comparison was required to be made between the disputed domain “kellysdistributors.com.au” and the name “Kelly’s Distributors”. In AW Faber-Castell (Aust) Pty Ltd v Pen City Pty Ltd/Atf Diblasi Jones Unit Trust,230 the three member panel examined the issue of an omitted hyphen in a disputed domain name: The disputed domain name differs from Trade Mark No. 450598 only by the omission of the hyphen and the addition of the second level domain, “.com.au”. The presence of the second level domain, “.com.au”, may be disregarded as a functional requirement of the domain name system: GlobalCenter Pty Ltd v Global Domain Hosting Pty Ltd WIPO Case No DAU2002-0001. The omission of the hyphen between “faber” and “castell” is, in this context at least, very minor.231

The panel in Peacock Media Group Pty Ltd v Robert Tapping232 found the disputed domain name “3solarquotes.com.au” to be confusingly similar to the complainant’s trade mark “SOLARQUOTES.COM.AU”. The panel held: The key difference between the complainant’s trade mark and the disputed domain name is the addition of the numeral three which in the panel’s opinion increases the likelihood of confusion to Internet users as the complainant business and advertising relies heavily on its offer of providing three quotes to customers (see Guccio Gucci SpA v Bravia Stoli WIPO Case No D2009-1170). 224 225 226 227 228 229 230 231 232

Macquarie Group Ltd v McQuarie Group Pty Ltd / Roland Storti WIPO Case No DAU2012-0028 (8 March 2013). Macquarie Group Ltd v McQuarie Group Pty Ltd / Roland Storti WIPO Case No DAU2012-0028 (8 March 2013). David Harry Birch and Judith Alison Birch t/as Aussie Soap Supplies v Yvonne Tracey Cowell t/as Aussie Soap Supply LEADR Case No auDRP22/10 (21 February 2011), p 5 [6]. Tigerdirect Inc v Jim Sun, Sun’s Sons Pty Ltd WIPO Case No DAU2010-0005 (5 May 2010). WIPO Case No DAU2013-0024 (30 October 2013). See Kelly’s Distributors Pty Ltd v Rybu Pty Ltd LEADR Case No auDRP11/10 (29 June 2010), p 3, [6.7]. AW Faber-Castell (Aust) Pty Ltd v Pen City Pty Ltd/Atf Diblasi Jones Unit Trust WIPO Case No DAU2013-0018 (15 August 2013). AW Faber-Castell (Aust) Pty Ltd v Pen City Pty Ltd/Atf Diblasi Jones Unit Trust WIPO Case No DAU2013-0018 (15 August 2013). WIPO Case No DAU2013-0029 (6 November 2013).

97

98

Australian Domain Name Law

[4.240]

Where a domain name only includes an insubstantial part of a complainant’s trade mark or name, a finding of confusing similarity is unlikely to be made. To illustrate, the name “Pro Sure-Vets Own Pet Insurance” was not found to be confusingly similar to the disputed domain name “petinsurance.com.au”.233 Similarly, “pickupsonline.com.au” was found not to be confusingly similar to the trade mark “UPS ONLINE” because the addition of the word “pick” before the mark changed the meaning of the domain name, where “the typical member of the internet-using public would perceive the disputed domain name to be describing an online service relating to picking up things or persons.”234 The panel held: At first glance, it might be thought that the issue of confusing similarity in this case is straight forward, because the disputed domain name incorporates two of the complainant’s trade marks – UPS and UPS ONLINE – in their entirety. Furthermore, the domain name differs from one of the complainant’s trade marks – UPS ONLINE – only by the addition of the common word “pick”. It is well accepted that, in most cases, the inclusion of a word, especially a common word, in a domain name containing the entirety of a complainant’s trademark will not prevent the domain name from being confusingly similar to the trade mark – see, for example, General Electric Co v CPIC NET and Hussain Syed WIPO Case No D2001-0087. However, this statement is not a rule of interpretation to be applied when determining the issue of confusing similarity; rather, it is merely an observation of fact (the fact being that, in most cases, the addition of a word does not lessen the confusing similarity that arises from incorporation of a complainant’s trade mark in a domain name). The issue of confusing similarity must always be determined on the particular facts of the individual case. Undoubtedly there will be cases where the inclusion of a word, including a common word, will have the effect of dispelling a potential confusing similarity between the domain name and the complainant’s trade mark. Previous panels deciding cases under the Policy have recognized that the determination of the issue of confusing similarity requires careful consideration. As was stated in Telstra Corp Ltd v [email protected] 987654321 WIPO Case No D2003-0169, and adopted and applied in A & F Trademark Inc, Abercrombie & Fitch Stores Inc, and Abercrombie & Fitch Trading Co Inc v Chad Nestor WIPO Case No D2003-0260: “In determining confusing similarity between a domain name that incorporates several terms or trade marks, a mere visual comparison is a simplistic test. The touchstone in determining confusing similarity is whether the combination of terms used in a domain name has the potential to mislead unsuspecting users.”

Disclaimed or Design Elements Are disclaimed or design elements of a trade mark considered in assessing identity or confusing similarity?

[4.250] On this issue, paragraph 1.11 of the auDA auDRP Overview 1.0 states: The general position is similar to that under the uDRP. As figurative, stylized or design elements in a trademark are generally incapable of representation in a 233

234

Penelope Blair v Choice 4U Pty Ltd LEADR Case No auDRP03/11 (18 April 2011). Nor was “WOW Audio Visual Superstores Pty Ltd” found to be confusingly similar to “wow.com.au”: see WOW Audio Visual Superstores Pty Ltd v Comonoz Pty Ltd WIPO Case No DAU2007-0003 (24 July 2007). United Parcel Service of America Inc v Wesley Bryant WIPO Case No DAU2009-0012 (11 February 2010).

[4.250]

4: Identical or Confusingly Similar .au Domain Names

domain name, such elements are typically disregarded for the purpose of assessing the identity or confusing similarity of a domain name with a trademark. Accordingly, the assessment is generally made between the alpha-numeric components of the domain name and the dominant textual components of the relevant trademark. Where the entire textual element of a figurative trademark is disclaimed, a panel may find that the complainant has no trademark rights in that element by virtue of its registration – meaning the complainant does not have a trademark to which the Policy applies unless, through use, the disclaimed element has become distinctive of the complainant’s goods or services.235

On this point the panel in Lance John Picton v KK Factory Seconds Online / Dean James Mackin236 held: The respondent argues that the disputed domain name is not identical or confusingly similar to the complainant’s mark, because the complainant’s mark contains graphic elements. However, graphic elements, not being reproducible in a domain name, need not be considered when assessing identity or confusing similarity. (See Sweeps Vacuum & Repair Center Inc v Nett Corp WIPO Case No D2001-0031. For a more recent statement to this effect, see BORGES SA, TANIO SAU v James English WIPO Case No D2007-0477, and the cases cited in that one.)

The auDA auDRP Overview 1.0 also cites Cambridge Nutritional Foods Ltd and Cambridge Manufacturing Co Ltd v Cambridge Diet Pty Ltd237 as a relevant authority. Marks comprising of figurative, stylised or design elements in a trade mark present slightly different challenges when determining the question of identical or confusing similarity. This issue was considered in HCOA Pty Ltd, Molescan Australia Pty Ltd v The Trustee for the Terantica Trust / Terry Lockitch, 238 where the first complainant owned two device marks and one word mark all comprising the text “MoleSCAN”, which was compared with the respondent’s domain name “molescan.com.au”. The panel found for the complainant, and referred to paragraph 1.11 of the WIPO Overview 2.0239 which provides: as figurative, stylized or design elements in a trade mark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark. However, design elements in a trademark may be relevant to the decision in certain circumstances – such as where, for example, they form an especially prominent or distinctive part of the trademark overall. Some panels have found it to be a matter of impression in the circumstances of each case.

Another decision which addresses the issue of figurative marks is Cambridge Nutritional Foods Ltd and Cambridge Manufacturing Co Ltd v Cambridge Diet Pty Ltd (discussed above).240 Here the panel held: 235

236 237 238 239 240

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, pp 11-12, http:// www.auda.org.au/assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2007-0005 (10 October 2007). WIPO Case No DAU2010-0021 (16 February 2011). WIPO Case No DAU2013-0003 (18 April 2013). WIPO Overview of WIPO Panel Views on Selected uDRP Questions, Second Edition (“WIPO Overview 2.0”), http://www.wipo.int/amc/en/domains/search/overview2.0 WIPO Case No DAU2010-0021 (16 February 2011).

99

100

Australian Domain Name Law

[4.250]

The marks on which the complainants rely are figurative marks. The question whether a domain name is confusingly similar or identical to a figurative mark is judged objectively against the dominant textual elements of the mark, rather than graphic or stylized elements: See Sweeps Vacuum & Repair Center Inc v Nett Corp WIPO Case No D2001-0031. However this is so only where the dominant textual elements are sufficiently distinctive: International Driver Training Inc v Web Integrations LLC and Comedy Driving Inc WIPO Case No D2009-0129, citing Borges SA, Tanio SAU v James English WIPO Case No D2007-0477. …Where the entire textual element of a figurative mark is disclaimed, a panel may find that the complainant has no trade mark rights in that element by virtue of its registration: Ideation Unlimited Inc v Dan Myers WIPO Case No D2008-1441, citing J2 Global Communications Inc v Ideas Plus Inc WIPO Case No D20050792… In determining whether a domain name is identical or confusingly similar to a trademark, country code top level domain suffixes can be ignored: see BT Financial Group Pty Ltd v Basketball Times Pty Ltd WIPO Case No DAU2004-0001.241

Similarly, a panel concluded that the letters “HRA”, appearing in a stylised logo that includes “HRA HARNESS RACING AUSTRALIA”, were prominent enough to render the disputed domain name “hra.com.au” confusingly similar to the registered mark.242 Likewise, the panel in Glimmer Body Art LLC v Renee Chidiac243 held that the textual elements of a device mark (“GLIMMER BODY ART”) was prominent enough to be confusingly similar to the disputed domain names “glimmerbodyart.com.au” and “glimmerbodyart.net.au”. Similarly, the three member panel in Debbie Morgan Macao Commercial Offshore Ltd, Missguided Ltd v Samir Vora244 rejected the respondent’s attempt to distinguish the disputed domain name “missguided.com.au” from the complainants’ trade marks – which depicted the word “missguided” in stylised lower case along with a peace symbol, heart, and the word “fashion”. The panel held that: “The word ‘missguided’ is plainly the dominant and distinctive element. The potential likelihood of confusion is not diminished by the change in case or font.”245

Threshold of Proof Required [4.260] In cases where the name or mark is identical to the disputed domain name (given that a domain name’s prefix and suffix are generally ignored in the analysis) the assessment is fairly straightforward and the complainant’s burden of proof is easily met. A slightly less straightforward exercise is where the name or mark is said to be confusingly similar to a domain name. Of course, the onus lies with the complainant to discharge the burden of proving the confusing similarity. The threshold required for a complainant to reach under

241 242 243 244 245

Cambridge Nutritional Foods Ltd and Cambridge Manufacturing Co Ltd v Cambridge Diet Pty Ltd WIPO Case No DAU2010-0021 (16 February 2011). Harness Racing Australia v Acronym Wiki Pty Ltd WIPO Case No DAU2011-0007 (13 May 2011). WIPO Case No DAU2013-0021 (30 September 2013). WIPO Case No DAU2013-0024 (30 October 2013). Debbie Morgan Macao Commercial Offshore Ltd, Missguided Ltd v Samir Vora WIPO Case No DAU2013-0024 (30 October 2013).

[4.260]

4: Identical or Confusingly Similar .au Domain Names

paragraph 4(a)(i) of the auDRP has been described as “low”.246 With respect to the issue of proof, the panel in UFC Gym Australia Pty Ltd v The Trustee for Moose & I Trust247 held: It follows that, as the proceeding is a civil one, the standard of proof must be the balance of probabilities. Paragraph 15 of the Rules provides that the panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In fact, the onus of proof clearly remains on the complainant whether, as in the present case, the respondent has filed a response and even when the respondent has not filed a response or put in a submission. That principle has been enunciated on many occasions by panels administering the auDRP and the analogous Policy, the uDRP, which applies to “.com” and other top level domains. It is also common sense and consistent with the normal principles and practice that apply in all litigation and, indeed, in all forms of dispute resolution… In the course of deciding whether that onus has been discharged, it is possible to draw inferences both from the evidence that has been submitted and, in appropriate cases, from silence. However, inferences may only be drawn when there are facts to support them. It would be an injustice to a respondent and contrary to the letter and spirit of the Policy if a panel were to draw an inference that would benefit a complainant when in reality the panel was not drawing an inference from facts but patching up a case that does not have the necessary evidence to support the claim. In that regard, it should also be noted that Rule 10 imposes a very important duty on panels, which is to: “(b)… ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.”248

For the complainant to establish proof in showing that the disputed domain name is identical or confusingly similar to the rights claimed, the panel in Mass Nutrition Inc and Todd Rosenfeld v Mass Nutrition Pty Ltd now known as Tweed Holdings Pty Ltd, Luke McNally249 observed: this is a different inquiry to that prescribed by trade mark law. It requires only the comparison of any relevant rights proved by the complainants to the disputed domain name. Other considerations such as the priorities in time of the respective claims or the nature of the respective uses do not fall for consideration under this paragraph of the Policy, but may arise under the other paragraphs. See for example, Facebook Inc v Callverse Pty Ltd WIPO Case No DAU2008-0007. The complainants have clearly proved ownership of US Trademark No 2,558,817 for MASS NUTRITION. The panel considers that these US rights are sufficient for the purposes of the Policy. As the learned panel stated in UEFA v Funzi Furniture WIPO Case No D2000-0710: “If the onus on the complainant was to establish exclusive rights across all categories of goods and services and across all territorial boundaries, the object of the Policy (namely to combat bad faith registration and use of domain names) would be defeated. The purpose of paragraph 4(a)(i) of the

246 247 248 249

UFC Gym Australia Pty Ltd v The Trustee for Moose & I Trust IAMA Case No 3712 (22 March 2013), p 9. IAMA Case No 3712 (22 March 2013). UFC Gym Australia Pty Ltd v The Trustee for Moose & I Trust IAMA Case No 3712 (22 March 2013), pp 7-8. WIPO Case No DAU2010-0002 (15 March 2010).

101

102

Australian Domain Name Law

[4.260]

Policy is simply to ensure that the complainant has a bona fide basis for making the complaint.” See also, WIPO Overview of WIPO Panel Views on Selected uDRP Questions, para. 1.1.250

With respect to establishing proof, in some decisions complainants have provided evidence of customers being confused as to the origin of the disputed domain name and its contents – for example, disclosing correspondence between the complainant and its customers.251 Consumer perception of a name or mark may be important in establishing the question of confusing similarity. With respect to paragraph 4(a)(i) of the auDRP, it has been suggested that the “onus does not extend to a complainant needing to establish any consumer association of a word… singularly with the complainant’s business or reputation. Any name or term used (and whether ‘generic’ or otherwise) which ‘primarily’ has an association with a complainant’s business is enough, prima facie, to give rise to confusing similarity”.252 Ozefax Pty Ltd v OzMedia Pty Ltd253 is a good example of a decision where the complainant more than satisfied the requirements of paragraph 4(a)(i) of the auDRP. With respect to the disputed domain name “ozfax.com.au”, the complainant was able to prove to the panel (with filing records, etc) its business name, company registration and trade marks (both registered and common law), domain name registration “ozefax.com.au”, along with statutory declarations and letters from customers and employees pertaining to the confusion.254 In the majority of the decisions where there has been a finding for the respondent, the complainant has nevertheless still been able to satisfy paragraph 4(a)(i) of the auDRP. This suggests that the requisite threshold to succeed under the first limb is relatively low. The second limb of paragraph 4(a) of the auDRP will be examined in the following chapter.

250 251 252 253 254

Mass Nutrition Inc and Todd Rosenfeld v Mass Nutrition Pty Ltd now known as Tweed Holdings Pty Ltd, Luke McNally WIPO Case No DAU2010-0002 (15 March 2010). Peacock Media Group Pty Ltd v Darrell Wilson LEADR Case No auDRP02/12 (2 April 2012), p 4, [6.3]. Mothercare Plc and Mothercare UK Ltd v Arthur Jason Bobrow LEADR Case No auDRP01/10 (18 February 2010), pp 10-11, [7.14]. LEADR Case No auDRP06/10 (19 April 2010). Ozefax Pty Ltd v OzMedia Pty Ltd LEADR Case No auDRP06/10 (19 April 2010), pp 4-5, [9(b)], [9(g)].

5

Rights or Legitimate Interests in .au Domain Names [5.10] Introduction................................................................................................103 [5.20] Burden of Proof.........................................................................................107 [5.70] Bona Fide Use of a Domain Name in Connection with an Offering of Goods or Services........................................................................................... 113 [5.110] Commonly Known by a Domain Name................................................. 120 [5.140] Legitimate Non-commercial or Fair Use of a Domain Name...............124 [5.150] Rights or Legitimate Interests in a Domain Name Comprised of a Dictionary Word.............................................................................................. 127 [5.160] Rights or Legitimate Interests of a Reseller/Distributor of Trade Marked Goods or Services........................................................................................... 128 [5.180] Rights or Legitimate Interests in the Disputed Domain in Criticism Sites................................................................................................................. 138 [5.190] Rights or Legitimate Interests in the Disputed Domain in Fan Sites... 140 [5.200] Rights or Legitimate Interests in Parking and Landing Pages or Pay-Per-Click Links........................................................................................ 140 [5.220] Rights or Legitimate Interests in Trade Marks...................................... 144 [5.250] Rights or Legitimate Interests in Trade Mark Applications.................. 148 [5.260] Rights or Legitimate Interests in Registration of a Business Name or Company Name...............................................................................................150 [5.280] Rights or Legitimate Interests in Eligibility and Allocation Rules....... 153 [5.300] Delay or Laches in Bringing Proceedings under the auDRP................ 156 [5.310] Awareness of Name, Mark or Business..................................................158 [5.320] Failure to Renew a Domain Name and Subsequent Purchase by a Respondent...................................................................................................... 159 [5.330] Conduct of Prior Registrant of the Disputed Domain........................... 160

Introduction [5.10] Following on from the discussion of paragraph 4(a)(i) in the previous chapter, this chapter will focus on the second element of paragraph 4(a) of the auDRP. In order to have a disputed domain name transferred or cancelled under paragraph 4(a)(ii), the complainant is required to establish that the respondent has “no rights or legitimate interests in respect of the domain name [Note 2].”1 This ground is identical to the corresponding provision paragraph 4(a)(ii) of the UDRP. The “Note 2” to paragraph 4(a)(ii) of the auDRP reads: 1

au Dispute Resolution Policy (auDRP) (Policy No: 2016-01) (15/04/2016), auDA, Sch A, para 4(a)(ii), https://www.auda.org.au/assets/pdf/auda-2016-01.pdf.

104

Australian Domain Name Law

[5.10]

For the purposes of this policy, auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.2

This means that merely because a respondent establishes that it was entitled to have the disputed domain name allocated to it for the purpose of registration – that in itself does not prevent a complainant from establishing that the respondent has no rights or legitimate interests in respect of the said domain name.3 The question of whether the respondent actually satisfies auDA’s relevant eligibility criteria4 for the domain name when it secured registration may be considered by the panel when determining whether the respondent has rights or legitimate interests with respect to the disputed domain name.5 As will be demonstrated in this chapter, there are numerous instances where although a respondent might have had rights or legitimate interests in respect of a disputed domain name at the time of allocation and registration, it turns out later that the respondent’s rights or legitimate interests have ceased, thereby disentitling the respondent from holding the domain name any longer. As discussed in Chapter 2, paragraph 4(c) of the auDRP (and UDRP) outline three non-exhaustive circumstances which would provide evidence of rights or legitimate interests in the domain name for the purposes of paragraph 4(a)(ii): i. before any notice of the subject matter of the dispute, bona fide use, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with offering goods or services (not being the offering of domain names that have been acquired for the purpose of selling, renting or otherwise transferring). ii. the relevant individual, business, or other organisation has commonly been known by the domain name, even if they have not acquired any trade mark or service mark rights. iii. a legitimate non-commercial or fair use of the domain name is being made, without the intent for commercial gain to misleadingly divert consumers or to tarnish the name, trade mark or service mark at issue. The non-exhaustive grounds listed above, if established, are indications when a respondent has a right or legitimate interest in the disputed domain name.6 The panelist in Cobb International Ltd v Cobb Australia & New Zealand (Pty) Ltd7 explained: These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The 2 3

4 5

6 7

au Dispute Resolution Policy (auDRP) (Policy No: 2016-01) (15/04/2016), auDA, Sch A, para 4(a)(ii), https://www.auda.org.au/assets/pdf/auda-2016-01.pdf. As the panelist stated in Bose Corp and Bose Pty Ltd v AAA 01 Center Ws Ds Ltd LEADR Case No auDRP04/13 (28 April 2013), p 4 [21(a)], “mere registration does not establish entitlement, which accords with Note 2 to the auDRP Policy.” Domain Name Eligibility and Allocation Policy Rules for Open 2LDs (Policy No: 2012-04) (17/12/2012), auDA, http://www.auda.org.au/pdf/auda-2012-04.pdf. My Brilliance Pty Ltd v Amazon Corporate Services Pty Ltd WIPO Case No DAU20140018 (20 August 2014); Abel Concepts (Aust) Pty Ltd v Wooldridge Holdings Pty Ltd LEADR Case No auDRP03/15 (10 June 2015), [25]. See generally Adjudicate Today Pty Ltd v The Institute of Arbitrators and Mediators WIPO Case No DAU2012-0033 (13 March 2013). Cobb International Ltd v Cobb Australia & New Zealand (Pty) Ltd WIPO Case No DAU2013-0005 (23 April 2013).

[5.10]

5: Rights or Legitimate Interests in .au Domain Names

onus of proving this requirement, like each element, falls on the complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See for example, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

As with other elements of the auDRP, the standard of proof for paragraph 4(a)(ii) is on the balance of probabilities.8 However, the question before the panel under paragraph 4(a)(ii) of the auDRP is obviously different to what is required under paragraph 4(a)(i). As the panelist held in KJ Aldridge Investments Pty Ltd v Aldridge Electrical Industries Pty Ltd: “under the second limb of the auDRP the complainant has to prove that the respondent has no rights or legitimate interests in respect of the disputed domain, which is a different issue to that which arises under the first limb of the auDRP.”9 Thus, where a complainant can establish that it has a right in the use of a particular name or mark, that in itself does not mean that a respondent has no rights or legitimate interests in respect of that domain name. As the three member panel found in Marketstorm Australia Pty Ltd v ACN 140 859 892 Pty Ltd (t/as Recoup Debt Recovery): The panel finds the fact that the complainant has registered rights in a trade mark which includes a device and descriptive words, does not of itself establish that complainant has the exclusive entitlement to use such words in a domain name, or that the respondent must therefore lack rights or legitimate interests in a domain name which includes these words. In Visa Europe Ltd v Name Administration Inc (BVI) WIPO Case No D2010-1531, the panel referred to Exotiq Properties Ltd v David Smart WIPO Case No D2009-1672 in which the panel said: “It is for the complainant to establish … that the respondent has no rights or legitimate interests in the disputed domain name. Where a disputed domain name corresponds to a less distinctive mark or group of marks, this burden tends to be higher than it might otherwise be. Although each case must be assessed on its own merits and evidence, in general it is inherently more likely that a respondent may have a legitimate interest in using a more descriptive domain name. Given the phonetically descriptive nature of the term ‘exotiq’… the relatively scant evidence of distinctiveness provided by the complainant, and the respondent’s prima facie plausible claim to a legitimate interest in the use of the name, the panel finds that the complainant has not discharged its burden to establish that the respondent has no rights or legitimate interests in the disputed domain name”.10

The rights or legitimate interests of the respondent relate to the domain name – and not to the use of the words comprising the domain name. There is an important difference between the two. Accordingly, even in cases where a respondent might have a right or legitimate interest in using a particular word or words in relation to its business – such as being descriptive of its business, this does not necessarily mean that such rights or legitimate interests appertain to the domain name comprising those words. For instance, in Yaffa Publishing 8 9 10

See generally Compagnie Générale des Etablissements Michelin v Thomas Panagiotopoulos WIPO Case No DAU2013-0011 (31 May 2013). KJ Aldridge Investments Pty Ltd v Aldridge Electrical Industries Pty Ltd LEADR Case No auDRP04/12 (25 May 2012), p 6. Marketstorm Australia Pty Ltd v ACN 140 859 892 Pty Ltd (t/as Recoup Debt Recovery) WIPO Case No DAU2011-0026 (28 December 2011).

105

106

Australian Domain Name Law

[5.10]

Group Pty Ltd v CA, PD and RD Scott t/as GO BOATING Publications,11 the respondents contended that it registered the disputed domain name “marinebusiness.com.au” to “redirect” marine business enquiries to their website “http://www.boatingbusiness.com.au” which deals with marine business activities in Australia and overseas, and that the use of the words “marine business” is descriptive of its services.12 In this regard the panel held: The panel notes that the relevant rights or interests must be “in respect of” the domain name. That is not the same as showing legitimate rights or interests in the use of words that comprise the domain name. The panel readily accepts that the respondents are entitled to use the phrase “marine business” to describe facets of the business carried on in the marine industry, but that no more gives them the right to use the domain name than it gives them the right to use Marine Business as the name of their magazine. No doubt the respondents would rightly complain if the complainant registered boatingbusiness.net.au and directed it to its existing site. What seems to be the case is that the complainant and the respondents each operate websites that work in conjunction with their magazines. In the case of the complainant, this site is at http://www.marinebusinessmag.com.au and, in the case of the respondents, it is at the somewhat more intuitive http:// www.boatingbusiness.com.au. Whilst the complainant might have chosen the domain name for its magazine, it was not required to do so and, perhaps with the benefit of hindsight, and increased knowledge of how people “guess” website URLs, the complainant may now wish to use the domain name for its magazine’s website. Certainly people’s knowledge of how the internet, and the world wide web in particular, operate and are used has matured significantly since the complainant’s website was launched at the end of the last century.13

Similarly, in Westralia Airports Corp Pty Ltd v Package Computers Pty Ltd,14 the respondent could satisfy the panelist that they had rights or legitimate interests in respect of the disputed domain name “perthairport.com.au” – and not necessarily the words that comprise the domain name. Even though the complainant could make out the other two limbs of paragraph 4(a) of the auDRP, the panel found that the domain had been initially “acquired for legitimate business purposes”.15 This chapter will assess the way in which paragraph 4(a)(ii) has been interpreted by panels under the auDRP. As with previous chapters, this chapter will include the findings of the auDA auDRP Overview 1.0 on paragraph 4(a)(ii) (or to use the terminology from the auDA auDRP Overview 1.0 the “second auDRP element”).16 As stated in Chapter 1, the auDA auDRP Overview 1.0 was published half way through writing this book in July 2014 and represents the consensus view on auDRP decisions. As mentioned in previous chapters, while the auDA auDRP Overview 1.0 refers to a number of decisions, these decisions are only referenced and not discussed. 11 12 13 14 15 16

LEADR Case No auDRP01/08 (17 July 2008). Yaffa Publishing Group Pty Ltd v CA, PD and RD Scott t/as GO BOATING Publications LEADR Case No auDRP01/08 (17 July 2008), p 5 [5.14] – [5.15]. Yaffa Publishing Group Pty Ltd v CA, PD and RD Scott t/as GO BOATING Publications LEADR Case No auDRP01/08 (17 July 2008), p 7 [6.7]. LEADR Case No auDRP07/08 (17 December 2008). Westralia Airports Corp Pty Ltd v Package Computers Pty Ltd LEADR Case No auDRP07/08 (17 December 2008), p 11 [9.12]. Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, http://www.auda.org.au/assets/ Policies/auDRP/auDRP-Overview/auDRP-Overview-2014.pdf.

[5.20]

5: Rights or Legitimate Interests in .au Domain Names

This chapter will discuss the decisions relevant to paragraph 4(a)(ii) of the auDRP (where they have not otherwise been dealt with in this book).

Burden of Proof Is the complainant required to prove that the respondent lacks rights or legitimate interests in the domain name?

[5.20] On this question, paragraph 2.1 of the auDA auDRP Overview 1.0 states: The general position is the same as that under the UDRP. A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. The complainant will usually make out a prima facie case by establishing that none of the paragraph 4(c) circumstances are present. Once such a prima facie case is made, the burden of production shifts to the respondent, requiring it to provide evidence or plausible assertions demonstrating rights or legitimate interests in the domain name. If the respondent fails to provide such evidence or assertions, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy [see paragraph 4.6 in relation to respondent default]. If the respondent does provide some evidence or plausible assertions of rights or legitimate interests in the domain name, the panel then weighs all the evidence – with the burden of proof always remaining on the complainant.17

The auDA auDRP Overview 1.0 cites Jacuzzi Inc v Wangra Pty Ltd18 as a relevant decision on this issue, where the three member panel held: The second requirement that the complainant must establish is that the respondent has no rights or legitimate interests in respect of the disputed domain name. In view of the difficulties in proving a negative, it is usually sufficient for the complainant to advance facts giving rise to a prima facie case that the respondent does not have the necessary rights or legitimate interests and then an evidential burden shifts to the respondent to show the basis for a claim to rights or legitimate interests in the relevant sense: See for example, GlobalCenter Pty Ltd v Global Domain Hosting Pty Ltd WIPO Case No DAU2002-0001, and Produits Berger v Lay Tee Ong WIPO Case No DAU2004-0008. Paragraph 4(c) of the auDRP Policy outlines the following factors which may provide a basis for a claim to rights or legitimate interests… As with the similar factors under the UDRP, this is a non-exhaustive list and a respondent may be able to establish rights or a legitimate interests on some other basis.

Similarly, in Telstra Corp Ltd v Mikhail Doubinski and Yury Sharafutdinov t/as AAA Marketing World,19 the panel held: Previous WIPO panels have established that, notwithstanding the general burden of proof on a complainant, once a prima facie case that a respondent has no rights or legitimate interests in the use of the domain name has been established, it is for the respondent to demonstrate that it has such an interest. If the respondent fails to do so, the complainant is deemed to have satisfied this element of the Policy (Croatia Airlines dd v Modern Empire Internet Ltd WIPO Case No D2003-0455, Belupo dd v WACHEM doo WIPO Case No D2004-0110.) 17

18 19

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 12, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2005-0001 (24 August 2005). WIPO Case No DAU2006-0008 (5 October 2006).

107

108

Australian Domain Name Law

[5.20]

In Pindan Pty Ltd v Kre8 Brand Pty Ltd20 the panel succinctly summarised the position in the following terms: Paragraph 4(a)(ii) of the Policy provides that the complainant must establish that the respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy lists (non-exhaustively) three circumstances that can demonstrate the respondent’s rights or legitimate interests in the disputed domain name.

The auDA auDRP Overview 1.0 also cites ESPN Inc v IMCO Corp Pty Ltd21 and TeamViewer GmbH v Nigel Burke22 to be relevant decisions.

Difficulties in Proving a Negative [5.30] As discussed above, the onus is on the complainant to establish all three elements of paragraph 4(a) under the auDRP. Accordingly, under paragraph 4(a)(ii), the complainant is required to establish that the respondent does not have any rights or legitimate interests in the disputed domain name. In other words, the complainant has the task of proving a negative. Noting the difficulty that complainants face in this regard – particularly in situations where only the respondent is privy to facts and circumstances that might be required by the complainant to meet this evidentiary burden, panels have permitted complainants to establish a prima facie case that the respondent has no rights or legitimate interests in relation to the disputed domain name.23 As the panel in Michael Sweep v Douglas Berry24 held: Having recognised the difficulty of a requirement to conclusively prove a negative, prior panels have stated the principle that, once a complainant establishes a prima facie case against the respondent under this ground, the burden shifts to the respondent to rebut it. The overall burden of proof remains with the complainant. See for example, Document Technologies Inc v International Electronic Communications Inc WIPO Case No D2000-0270. Universal City Studios Inc v David Burns and Adam-12 Dot Com WIPO Case No D2001-0784; International Hospitality Management-IHM SpA v Enrico Callegari Ecostudio WIPO Case No D2002-0683… paragraph 4(a)(ii) of the Policy requires the complainant to show that the respondent has no legitimate interest. It follows that if the respondent can demonstrate some legitimate interests, this may be sufficient to rebut the complainant’s case… The test under paragraph 4(a)(ii) is not a comparative one – to determine whether the complainant has better rights (however defined) than those of the respondent. The test is whether the respondent has any rights or legitimate interests at all.

On this point, the panelist in ThinkGeek Inc v Michael Andrew Lubieniecki25 observed that “this means that there must be some objective connection between the respondent or his business and the disputed domain name. The relative differences between the respondent’s website and the 20 21 22 23

24 25

WIPO Case No DAU2013-0038 (13 February 2014). WIPO Case No DAU2005-0005 (31 January 2006). WIPO Case No DAU2012-0027 (19 December 2012). See, for example, Goodreads LLC Amazon Technologies Inc v BDB Soti Pty Ltd WIPO Case No DAU2016-0012 (15 April 2016); Regal Electro Pty Ltd v Sidekick Creative Pty Ltd, Resolution Institute Case No auDRP09/15 (11 November 2015), p 8 [4.14] – [4.15]; FragranceX.com Inc v Admin Manager, Gee Media Pty Ltd WIPO Case No DAU2015-0005 (30 March 2015); IVF Sunshine Coast Pty Ltd v Fertility Solutions Sunshine Coast Pty Ltd IAMA Case No 3167 (13 June 2008), p 12. Michael Sweep v Douglas Berry WIPO Case No DAU2012-0008 (23 May 2012). WIPO Case No DAU2011-0003 (14 March 2011).

[5.40]

5: Rights or Legitimate Interests in .au Domain Names

complainant’s do nothing to demonstrate an independent connection between the respondent and the disputed domain name.” Further, the three member panel in Brilliance Publishing Inc v My Brilliance Pty Ltd / Ceinwen Schneider26 held: A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such a case has been made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the auUDRP. See similar circumstances under the UDRP in Croatia Airlines dd v Modern Empire Internet Ltd WIPO Case No D2003-0455 and Belupo dd v WACHEM doo WIPO Case No D2004-0110.27

Of course, a mere assertion that the respondent does not have a right or legitimate interest is insufficient – there must be prima facie proof of it.28 What this means will be explored in further detail below. Nor will a panel draw an inference that the respondent has no rights or legitimate interest in the domain name where the complainant has not provided any facts or evidence to support this allegation.29 In one sense, the three elements of paragraph 4(a) of the auDRP operate as affirmative defences which a respondent can exploit, and if executed successfully will result in the complaint being dismissed.

A Prima Facie Case [5.40] Highly distinctive names or marks: Generally, a complainant’s strong rights in relation to a name or mark would make out a prima facie case. Thus, where the complainant asserts rights in a highly distinctive name or mark, such as “IC!-BERLIN”, the complainant is deemed to have made out a prima facie case showing an absence of rights or legitimate interests in the domain by the respondent, and thereby shifting the burden onto the respondent to establish such rights or legitimate interests.30 In Mayne Pharma International Pty Ltd v Namewise Pty Ltd,31 the panel found that the complainant’s trade mark comprising the invented word “ASTRIX” was distinctive, and therefore: The complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in the domain name on the part of the respondent. The burden of production therefore shifts to the respondent to show by concrete evidence that it does have rights or legitimate interests in that name. See Do The Hustle LLC v Tropic Web WIPO Case No D2000-0624 and the cases there cited. The respondent has made no attempt to do so.

26

27 28

29 30 31

WIPO Case No DAU2013-0007 (28 May 2013). See also Cobb International Ltd v Cobb Australia & New Zealand (Pty) Ltd WIPO Case No DAU2013-0005 (23 April 2013); Zoopla Property Group Ltd v Media Mouse Pty Ltd WIPO Case No DAU2013-0002 (27 March 2013), also citing Croatia Airlines dd v Modern Empire Internet Ltd WIPO Case No D2003-0455 (21 August 2003) and Belupo dd v WACHEM doo WIPO Case No D2004-0110) (14 April 2004). Brilliance Publishing Inc v My Brilliance Pty Ltd / Ceinwen Schneider WIPO Case No DAU2013-0007 (28 May 2013). UFC Gym Australia Pty Ltd v The Trustee for Moose & I Trust IAMA Case No 3712 (22 March 2013), p 10; Clear Vision Laser Clinic v Laser Sight Centres Australasia Pty Ltd IAMA Case No 3160 (23 May 2008), p 5. UFC Gym Australia Pty Ltd v The Trustee for Moose & I Trust IAMA Case No 3712 (22 March 2013), p 10. Ralph Anderl v Yang Xia / Krause Adrian Scott WIPO Case No DAU2013-0008 (2 May 2013). WIPO Case No DAU2012-0001 (8 March 2012).

109

110

Australian Domain Name Law

[5.40]

Similarly, in Woolworths Ltd v Save Cash Pty Ltd,32 the panel also found that the complainant’s mark “WOOLLIES” was highly distinctive and sufficient to establish a prima facie case. In We Buy Any Car Ltd v Highway Auto Mart and Jason Collings33 the panel observed: The term “We Buy Any Car” merely describes a service – as the respondents point out, there are other very similarly-worded websites offering the same services in Australia. The panel accepts that it is not unlikely that two companies should set up similar services under the same name in different parts of the world. This is especially so given the entirely descriptive nature of the term “We Buy Any Car.”34

Thus, where a name or mark is found to be descriptive, it is arguably more difficult for a complainant to make out a prima facie case with respect to the respondent not having any rights or legitimate interests in the domain name. This issue will be examined again later in this chapter. [5.50] Prior rights: In Roku Inc v It’s So Easy Pty Ltd / Sharyn Webber,35 where the complainant had rights in the trade mark which preceded the respondent’s registration of the disputed domain name by a considerable period of years (6 years), the three member panel readily found that the complainant had established a prima facie case. Similarly, in L’Oréal / L’Oréal Australia Pty v Namewise Pty Ltd / Nicholas Bolton,36 the panelist found that the respondent had no prior rights or legitimate interests in the domain as both the registration of the L’OREAL trade marks and the complainant’s own domain name predated the registration of the disputed domain name by several years. Further, in Pickles Auctions Pty Ltd v Complete Hire Pty Ltd,37 the complainant had used the name “PICKLES” as a trade mark since 1988 and thereby acquiring common law rights in the mark since that time, while the disputed domain name was registered only in 2007 giving rise to a good prima facie case. In Doteasy Technology Inc v M Makras & EA Nahed, Dot Easy Australia Pty Ltd,38 the panel found that the respondent had rights and legitimate interests in the disputed domain “doteasy.net.au” – even though the complainant had registered trade mark rights in Australia, as the respondent had established prior use for “audio streaming” services. Similarly, in PayBurst Financial Technologies and Gregory Fx Iannacci v Virgin Blue Airlines Pty Ltd,39 while the three member panel accepted that the complainant had some minimal common law rights in the United States in the “VELOCITY REWARDS” mark, 32

33 34

35 36

37 38 39

WIPO Case No DAU2011-0019 (5 October 2011). See generally Terex Corp v Peter McIntyre, Cashmere Holdings Pty Ltd WIPO Case No DAU2010-0004 (9 May 2010); Shane Keith Warne v Sure Thing Services Pty Ltd LEADR Case No auDRP08/10 (26 May 2010); Swarovski Aktiengesellschaft AG v Paul Giles dba Banjos bead house WIPO Case No DAU2008-0001 (24 February 2008). WIPO Case No DAU2012-0004 (11 April 2012). The panelist also noted that one of the respondents had filed various Australian trade mark applications in relation to the term “We Buy Any Car” which predated the complainant’s Australian trade mark application. WIPO Case No DAU2013-0004 (3 May 2013). WIPO Case No DAU2013-0009 (23 May 2013). See also Compagnie Générale des Etablissements Michelin v Thomas Panagiotopoulos WIPO Case No DAU2013-0011 (31 May 2013); Vitacost.com Inc v Ronald Lee Bradley WIPO Case No DAU2012-0003 (2 April 2012). WIPO Case No DAU2012-0005 (16 April 2012). WIPO Case No DAU2011-0041 (4 February 2012). WIPO Case No DAU2006-0001 (16 March 2006).

[5.60]

5: Rights or Legitimate Interests in .au Domain Names

it found that the respondent had rights and legitimate interests in Australia with respect to the disputed domain name “velocityrewards.com.au” because it had been preparing for months to use both the “VELOCITY” mark and disputed domain name prior to the notice of the dispute, and further that the complainant was not trading in Australia at the relevant time.40 Panels have accepted a broad range of evidence with respect to a respondent’s claim of prior rights. For example, in Minespec Services Pty Ltd v Minespec.com, Cleanrite Australia Pty Ltd, Minespec Compliance Pty Ltd, 41 the panel found that the respondent had been trading under the name “Minespec” before the registration of the complainant’s mark, and accepted the respondent’s “various evidence” that included company valuations with photographs of vehicles with the “Minespec” logo, statutory declarations of employees and former employees, invoices with the “Minespec” logo, quotes with the “Minespec” logo, and a business card with the “Minespec” logo.42 Clearly, the date on which a complainant acquires rights in a name or mark and the date on which a respondent acquires rights and/or legitimate interests in a name or mark, including the date of the domain name registration, are plainly relevant in ascertaining whether the complainant can successfully establish a prima facie case. [5.60] Rebutting a prima facie case: A respondent faced with rebutting a complainant’s prima facie case will be required to satisfy the panel that they have rights or legitimate interests in the disputed domain name by establishing, for example, that one of the three non-exhaustive circumstances set out in paragraph 4(c) of the auDRP (and UDRP) exists. Clearly, if a respondent fails to supply sufficient evidence in support of its claims of legitimate interests, it will not succeed in rebutting the complainant’s prima facie case.43 As discussed above, the onus of establishing one of the three grounds in paragraph 4(c) rests on the respondent. A UDRP proceeding frequently cited in auDRP decisions44 on this point is Do The Hustle, LLC v Tropic Web,45 where the panelist held: 40

41 42

43

44

45

See also WebFarm Ltd v Fopoco Pty Ltd t/as “Free Parking” WIPO Case No DAU20060007 (17 October 2006); Seek Ltd v Independent Mortgage Brokers Pty Ltd WIPO Case No DAU2006-0012 (28 February 2007). WIPO Case No DAU2012-0019 (6 August 2012). For other examples of the different types of evidence considered by panels, see Genuine Benefits Pty Ltd v Mr Justin Hankinson LEADR Case No auDRP08/06 (23 August 2006), p 9-10, [5.15]; WOW Audio Visual Superstores Pty Ltd v Comonoz Pty Ltd WIPO Case No DAU2007-0003 (24 July 2007); Lance John Picton v KK Factory Seconds Online / Dean James Mackin WIPO Case No DAU2007-0005 (10 October 2007); Bianjade Enterprises Pty Ltd v Leigh Michael Connelly WIPO Case No DAU2003-0003 (18 August 2003); Stephens Valuation and Consultancy Pty Ltd v SLR Consulting Australia Pty Ltd WIPO Case No DAU2013-0026 (14 November 2013); Cairns Airport Pty Ltd v Chris Ford (Christopher William Ford) / C and C Family Discretionary Trust WIPO Case No DAU2013-0023 (24 October 2013). See, for example, Jaguar Land Rover Ltd v Greg Brown, Acheeva Business Solutions Pty Ltd WIPO Case No DAU2015-0008 (2 April 2015); Columbia Insurance Co v The Chefs Toolbox Pty Ltd WIPO Case No DAU2014-0005 (26 May 2014); Beachbody LLC v Benson Linda Michelle WIPO Case No DAU2014-0002 (8 April 2014); Dematic Pty Ltd v Jacqueline Mary Johnson t/as Colby Systems Southern LEADR Case No auDRP01/14 (19 March 2014), p 7; Teva Pharmaceutical Industries Ltd v Apex Domain Pty Ltd WIPO Case No DAU2014-0001 (3 March 2014). For example, see Ralph Anderl v Yang Xia / Krause Adrian Scott WIPO Case No DAU2013-0008 (2 May 2013); Smart Voucher Ltd t/as Ukash v Chowdhury, MD Abu Russel and Sydney Business & Technology Group Pty Ltd WIPO Case No DAU2013-0006 (8 May 2013). Do The Hustle, LLC v Tropic Web, WIPO Case No D2000-0624 (21 August 2000).

111

112

Australian Domain Name Law

[5.60]

it is the respondent who bears the burden of proof as to paragraph 4(a)(ii)…Faced with this seeming contradiction, panels have taken different approaches. Some have held, either effectively or directly, that respondents need do nothing if the complainant does not furnish affirmative proof that the respondent has no rights or legitimate interest in respect of the domain name at issue. VereSign Inc v VeneSign CA WIPO Case No D2000-0303; Gassen Diamonds BV v Van Etten Bernardus Joacbus ICANN Case No AF-0149a; AF-0149b; Beijing Pernot Ricard Winery Co Ltd v Capital Enterprises Group Inc ICANN Case No AF-0177 (“Although [Paragraph 4(c)] is couched in terms of the respondent ‘demonstrating’ its rights or legitimate interest, it is for the complainant to establish their absence.”); Vanguard Medica Ltd v Theo McCormick ICANN Case No D20000067… Penguin Books Ltd v The Katz Family and Anthony Katz ICANN Case No D2000-0204… Other panels have taken different tacks. Some have held that the burden on the complainant is a “relatively light” one as regards proof of 4(a)(ii). Educational Testing Service v Netkorea Co ICANN Case No D20000087 (“It is relatively difficult for any complainant to prove beyond a shadow of a doubt that a respondent has no rights or legitimate interests in a domain name. By and large, such information is known to and within the control of the respondent. Accordingly, the burden on a complainant in respect of this element must, by necessity, be relatively light.”) Europay International SA v Eurocard.com Inc, EuroCard.org and Chad Folkening ICANN Case No D2000-0173…Still others have held that the panel should assess the failure of the respondent to demonstrate that he comes within Paragraph 4(c), when the panel in assesses whether the complainant has met its burden of proof under Paragraph 4(a)(ii). Wal-Mart Stores Inc v Walmarket Canada ICANN Case No D2000-0150…The majority of panel decisions on this point have taken the position that while the complainant has the burden of proof on this issue, once the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. Document Technologies Inc v International Electronic Communications Inc WIPO Case No D2000-0270; Inter-Continental Hotel Corp v Khaled Ali Soussi ICANN Case No D2000-0252…The panel feels a need to clarify what is meant by “concrete evidence” under this approach. “Concrete evidence” constitutes more than mere personal assertions… Paragraph 4(c) states that “… any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented … .”… Uniform Rules, Rule 5(b)(ix) instructs the respondent to “[a]nnex any documentary or other evidence upon which the respondent relies … .” … Evidence in the form of documents or third party declarations should be furnished in support of such assertions. A panel is not required to blindly accept assertions offered by a respondent, any more than it is required to accept unsupported assertions offered by a complainant. It is especially important under this procedure to test respondent’s assertions for evidentiary support and credibility, since normally the complainant has no opportunity to counter the respondent’s assertions, while the respondent does have the opportunity to counter those of the complainant…Failure of a respondent to come forward with such evidence is tantamount to admitting the truth of complainant’s assertions in this regard. Alcoholics Anonymous World Services Inc v Lauren Raymond ICANN Case No D2000-0007; Ronson Plc v Unimetal Sanayai ve Tic.A.S. ICANN Case No D2000-0011.

In some cases, the evidence adduced by both the complainant and respondent might be insufficient to determine the extent of the respondent’s rights or legitimate interests in the disputed domain name, and in such cases, the benefit of the doubt goes to the respondent as it is the complainant’s burden to

[5.70]

5: Rights or Legitimate Interests in .au Domain Names

establish each element under paragraph 4(a) of the auDRP.46 However, in a majority of the cases where respondents fail to file a response, they fail to refute the complainant’s prima facie case, often because the failure to respond “gives rise to the inference that it [the respondent] does not believe that it has any rights or legitimate interests in the disputed domain name.”47 Failing to file a response may also give rise to an inference that any evidence a respondent might have put forward would not be in its favour.48

Bona Fide Use of a Domain Name in Connection with an Offering of Goods or Services When will a respondent be making a bona fide use of a domain name in connection with an offering of goods or services?

[5.70] On this issue, paragraph 2.1A of the auDA auDRP Overview 1.0 states: The general position is similar to that under the UDRP. Paragraph 4(c)(i) of the auDRP states that a respondent will be taken to have demonstrated rights or legitimate interests in a domain name where, before any notice of the subject matter of the dispute, it has bona fide used, or prepared to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services. Unlike the equivalent provision in the UDRP, paragraph 4(c)(i) of the auDRP expressly states that “an offering of domain names that it has acquired for the purposes of selling, renting or otherwise transferring” is not a bona fide offering by the respondent for this purpose. If the domain name contains the whole or a significant part of the respondent’s personal name, the respondent is likely to have rights or legitimate interests in it, even if the respondent cannot establish it has been “commonly known” by the domain name [see paragraph 2.1B]. If a respondent is using a descriptive word to describe its goods or services without intending to take advantage of the complainant’s rights in that word, then it has a right or legitimate interest in a domain name that contains that word. It is not necessary for the respondent to do business under the exact term incorporated in the domain name – it is sufficient if there is a “connection” between the domain name’s descriptive meaning and the respondent’s offering of goods or services. However, the respondent’s use of the domain name must not be a “sham”; panels have been alert to disregard a respondent’s use of the domain name to resolve to a website that is “spurious” or a “shell”. The key issue is whether the respondent’s use of the domain name is bona fide – that is, is in good faith. To determine whether a respondent’s use of a domain name is in good faith requires a consideration of the respondent’s motivation for undertaking that use; which, in turn, requires an evaluation of all the facts and evidence. Relevant facts include: the degree of similarity of the domain name to the complainant’s mark; the respondent’s awareness of the 46 47

48

Mark Kingsley Williams v Bbhinds Pty Ltd WIPO Case No DAU2013-0010 (21 May 2013); People Telecom Ltd v Kenneath Laming LEADR Case No auDRP02/04 (22 June 2004). Clark Equipment Co v R & R Equipment Pty Ltd WIPO Case No DAU2012-0011 (4 June 2012); Supre Pty Ltd v Paul King WIPO Case No DAU2004-0006 (22 December 2004); Produits Berger v Lay Tee Ong WIPO Case No DAU2004-0008 (30 March 2005); InfoMedia Services Ltd v Bugel Pty Ltd, LEADR Case No auDRP05/03 (12 November 2003), p 4, [20]-[21]; Klein Tools Inc v The trustee for Topp Family Trust WIPO Case No DAU2013-0027 (22 October 2013); mytheresa.com GmbH v Vickey Parchani WIPO Case No DAU2013-0032 (2 January 2014); Quizno’s Australia Pty Ltd v Paul Rodgerson t/as Liquid Lan LEADR Case No auDRP05/04 (24 August 2004), p 6-7, [6.2]. Ink King v CamerasDirect.com.au Pty Ltd, LEADR Case No auDRP01/05 (6 April 2005), p 7, [6.14].

113

114

Australian Domain Name Law

[5.70]

complainant’s business conducted under its mark; the likelihood of customer confusion; and whether the domain name is genuinely being used for its descriptive meaning [see paragraph 2.3]. Where there is evidence that the respondent registered the domain name to exploit the value of the complainant’s trademark that it incorporates, a lack of good faith will be inferred in respect of the respondent’s use of the domain name. Where the respondent or associated persons have registered other domain names similar to other well-known trademarks, the generic nature of the words constituting the domain name will most likely not be sufficient to give the respondent a right or legitimate interest in it. At least one panel has held that where the disputed domain name is identical to the complainant’s registered trademark, a rebuttable presumption is raised that the domain name is being used by the respondent to trade off the complainant’s rights in that trademark, rather than for its descriptive value [see paragraph 2.2].49

The auDA auDRP Overview 1.0 cites the following as relevant authorities on this issue. In Informa Australia Pty Ltd v Reed Business Information Pty Ltd,50 the panelist held: The relevant burden of proof is to the extent that the complainant need only make out a prima facie case that the respondent has no legitimate interest, whereupon that burden then shifts to the respondent to produce evidence of any relevant interest in the name in issue, as to satisfy the panel (Document Technologies Inc v International Elec Communications Inc (WIPO Case D2000-0270)). The UDRP does not attempt to define forensically what is meant by a right or legitimate interest in a domain name. Paragraph 4c of UDRP lists three (3) (and importantly, non-exclusive) examples of what may comprise any contended “right or legitimate interest” … an offering of goods or services is not bona fide if use of the disputed domain name is likely to cause consumer confusion including, such as and by one illustration only, that it may infringe a complainant’s trade name rights or acquired reputation (Universal City Studios Inc v GAB Enterprises (WIPO Case D2000-0416)).

In Budget Rent A Car v Emma Faye Weekly51 the panelist observed: As noted under paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the consensus view on this element of the UDRP is that: “If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a generic word(s).” The Overview also notes however that: “If a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest.”

In Bendigo Community Telco Ltd v IT Company Pty Ltd52 the panel observed: The panel is of the view that the respondent must show something other than mere commercial attractiveness of the disputed domain name to establish rights or legitimate interests in it. In particular, the respondent must establish some bona 49

50 51 52

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 13, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. LEADR Case No auDRP02/09 (9 April 2009), p 12-13 [7.27] – [7.28], p 14-15 [7.35]. WIPO Case No DAU2010-0020 (16 February 2011). LEADR Case No auDRP04/14 (30 May 2014), p 4.

[5.80]

5: Rights or Legitimate Interests in .au Domain Names

fide connection between its activities (actual or proposed) and the disputed domain name, such as those specified in paragraph 4(c) of the Policy – that is, such as by using the disputed domain name in connection with a bona fide offering of goods or services, being commonly known by the disputed domain name, or making a legitimate non-commercial or fair use of the disputed domain name.

The panelist in Tyre Depot Holdings Pty Ltd v Tyre Kingdom Pty Ltd53 further elaborated what the respondent is required to demonstrate with respect to this issue: paragraph 4(a)(ii) of the Policy requires the complainant to show that the respondent has no legitimate interests. Having demonstrated a prima facie case, the onus shifts to the respondent to demonstrate rights or legitimate interests. The concept of the legitimacy of the respondent’s interest is further carried through in the Policy, in that paragraph 4(a)(ii) specifies a bona fide offering of goods or services. Both “legitimate” and “bona fide” incorporate into this aspect of the Policy a notion of good faith. In World Wrestling Federation Entertainment Inc v Rift WIPO Case No D2000-1499, the panel stated “not all use prior to notice of the dispute can qualify as bona fide use”. Further, the panel in Madonna Ciccone pka Madonna v Dan Parisi and “Madonna.com” WIPO Case No D2000-0847, noted specifically that intentionally infringing use should not be viewed as bona fide use: “We … conclude that use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”

The auDA auDRP Overview 1.0 also cites the following as relevant authorities for this proposition: PA Consulting Services Pty Ltd v Joseph BarringtonLew;54 Telstra Corp Ltd v Mikhail Doubinski and Yury Sharafutdinov t/as AAA Marketing World;55 Lance John Picton v KK Factory Seconds Online / Dean James Mackin;56 Silpro Pty Ltd v Corey De Silva t/as Silva Service Spit Roast Catering;57 Bernard Janes v LJ Bubenicek & AJ Main, A&L Technologies;58 Confo Pty Ltd v Meridian Project Consulting Pty Ltd;59 and Cairns Airport Pty Ltd v Chris Ford (Christopher William Ford) / C and C Family Discretionary Trust.60

Bona Fide Use, or Demonstrable Preparations to Use, the Domain Name or a Name Corresponding to the Domain Name in Connection with Offering Goods or Services (not being the Offering of Domain Names that have been Acquired for the Purpose of Selling, Renting or Otherwise Transferring) [5.80] The first of the three defences available to a respondent (in paragraph 4(c)(i) of the auDRP) is that before any notice of the subject matter of the dispute, the respondent made bona fide use, or demonstrable preparations 53 54 55 56 57 58 59 60

WIPO Case No DAU2014-0016 (15 July 2014). WIPO Case No DAU2003-0002 (20 May 2003). WIPO Case No DAU2006-0008 (5 October 2006). WIPO Case No DAU2007-0005 (10 October 2007). WIPO Case No DAU2008-0013 (22 September 2008). Bernard Janes v LJ Bubenicek & AJ Main, A&L Technologies WIPO Case No DAU20100014 (6 September 2010). LEADR Case No auDRP20/10 (12 February 2011). WIPO Case No DAU2013-0023 (24 October 2013).

115

116

Australian Domain Name Law

[5.80]

to use, the domain name or a name corresponding to the domain name in connection with offering goods or services (not being the offering of domain names that have been acquired for the purpose of selling, renting or otherwise transferring). Thus, there must be evidence that the respondent either used, or had made preparations to use, the domain name or a name corresponding to the domain name for the offer of goods or services. A fairly typical example of where a respondent met the requirements of paragraph 4(c)(i) of the auDRP was We Buy Any Car Ltd v Highway Auto Mart and Jason Collings,61 where the respondents had filed various Australian trade mark applications in relation to the term “We Buy Any Car” which predated those of the complainant. The decision involved the disputed domain names “webuyanycar.com.au” and “webuyanycar.net.au”. The panel accepted the respondents’ submission that the first respondent registered the disputed domain name for the sole purpose of operating and marketing its own business under the name “We Buy Any Car”, while the second respondent registered the disputed domain name with the intention of establishing its own website relating to automobiles. The second respondent subsequently allowed the first respondent to utilise the disputed domain name in relation to its business without receiving consideration in excess of the out of pocket expenses related to acquiring the domain. The panelist found that the respondents had not registered the disputed domain with the intention of preventing the complainant from registering them, and accordingly had made bona fide use of the disputed domain names. Similarly, in PS Business Pty Ltd t/as Property Secrets v Wealth Dynamics International Pty Ltd,62 the panel found that the respondent’s various registered domain names over a number of years to market property investment services, books, and CD’s featuring the idea of “secret” knowledge was bona fide use of the disputed domain name “propertysecrets.com.au”.63 Of course, a mere assertion that a domain name is being used for a bona fide offering of goods and services under paragraph 4(c)(i) of the auDRP is insufficient to discharge a respondent’s burden under this head. As the panel in Confo Pty Ltd v Meridian Project Consulting Pty Ltd64 observed: The Latin phrase bona fide means “in good faith”. To determine whether a use of a domain name is in good faith requires a consideration of the motivation of the entity undertaking it. That, in turn, requires an evaluation of the facts and evidence contained in the case record.65

The following examples illustrate how panels have evaluated this requirement of demonstrating bona fide evidence. In Goodman Fielder Ltd, GF Brand Holding Company Pty and Quality Bakers Australia Pty Ltd v Andrew Goddard66 the panel held: The panel observes that the potential for confusion as to the source of the disputed domain name is a relevant and appropriate consideration in analysis of any claim for legitimacy of interest under this heading… Further, an offering of goods or services (had A offered any) is not bona fide if use of the disputed domain name is 61 62 63 64 65

66

WIPO Case No DAU2012-0004 (11 April 2012). CIArb Case No 07/02 (14 November 2007). PS Business Pty Ltd t/as Property Secrets v Wealth Dynamics International Pty Ltd CIArb Case No 07/02 (14 November 2007), p 7 [7.2.6]. LEADR Case No auDRP20/10 (12 February 2011). Confo Pty Ltd v Meridian Project Consulting Pty Ltd LEADR Case No auDRP20/10 (12 February 2011), p 4. See also Allianz Australia Insurance Ltd and Allianz Australia Ltd v Throne Ventures Pty Ltd WIPO Case No DAU2010-0012 (16 July 2010). LEADR Case No auDRP14/10 (28 July 2010), p 17 [7.32], [7.35].

[5.80]

5: Rights or Legitimate Interests in .au Domain Names

likely to cause consumer confusion including, such as and by one illustration only, that it may infringe a complainant’s trade name rights or acquired reputation (Universal City Studios Inc v GAB Enterprises (WIPO Case D2000-0416)).

The three member panel in Technosystems Consolidated Corp, Invention Submission Corp t/as Invent Help v Hugh Godman, Royal Computer Proprietary Ltd67 rejected the respondent’s assertion that it could not provide evidence of the intended use of the disputed domain names in connection with a legitimate modular online education business because of the alleged sensitivity of the information in the business plans. In Pickles Auctions Pty Ltd v Complete Hire Pty Ltd,68 the panel found that the respondent merely asserted that the domain name “picklesonline.com.au” was being used for online marketing and for the sale of pickles without providing any evidence of such fact – such as confirmatory statements from local suppliers. In Perpetual Ltd v Perpetual Home Loans Pty Ltd,69 which concerned the domain name “perpetualhomeloans.com.au”, the fact that the respondent conducted its business under the name of “Perpetual Home Loans” did not convince the panel that the respondent had rights or legitimate interests in the domain name because of the complainant’s considerable reputation in the same field of business and also the absence of a disclaimer or other statement on the respondent’s website which reduces the potential for confusion with the complainant. As the panel held: It is… hard to avoid the impression that the respondent has used the term “perpetual” to suggest some association with the complainant, or to seek unfair leverage from the substantial reputation of the complainant’s mark. As noted in Madonna Ciccone pka Madonna v Dan Parisi and “Madonna.com” WIPO Case No D2000-0847, a “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.” Such a finding does not mean that the panel reaches any conclusion about whether the complainant would succeed in a civil action for trademark infringement or passing off…The panel considers that the circumstances of this case are relevantly similar to that in Telstra Corp Ltd v India Yellow Pages WIPO Case No D2002-0651 in which the then panel concluded that “registering a domain name in such circumstances, knowing of the potential for confusion, cannot give rise to a right or legitimate interest in respect of the domain name in question.” (In a somewhat similar vein, see for example, FDNY Fire Safety Education Fund Inc and New York City Police Foundation Inc v Great Lakes Coins %27 Collectibles WIPO Case No D2001-1445; CELLEX-C International Inc v Jaye Pharmacy and Absolute Cellex C WIPO Case No D2003-0423.) …Finally, the complainant has made a strong case against the respondent, which the respondent has chosen not to answer. While the ultimate burden of proof remains with the complainant, the respondent’s failure to respond formally, or communicate at all in connection with this case, allows an adverse inference to be drawn against it.70 67 68 69 70

Technosystems Consolidated Corp, Invention Submission Corp t/as Invent Help v Hugh Godman, Royal Computer Proprietary Ltd WIPO Case No DAU2007-0001 (19 June 2007). WIPO Case No DAU2012-0005 (16 April 2012). WIPO Case No DAU2009-0009 (2 November 2009). Perpetual Ltd v Perpetual Home Loans Pty Ltd WIPO Case No DAU2009-0009 (2 November 2009).

117

118

Australian Domain Name Law

[5.80]

Similarly, in Skycity Adelaide Pty Ltd v Trellian Pty Ltd,71 while being very critical of the way in which the complainant did not address the requirements of the auDRP “in a methodical way with factual statements, annexed evidence, and cogent submissions to ensure that the burden of proof is discharged”, the panel was prepared to draw an adverse inference against the respondent and their illegitimate true interest in the disputed domain name because of its failure to file a response.72 Clearly, what matters is whether the domain name has been used in a bona fide fashion – and not whether a respondent’s supply of goods or services is bona fide. As the panel held in Swinburne University of Technology v Swinner aka Benjamin Robert Goodfellow:73 The respondent used the domain name before notice of this dispute, and in connection with an offering of goods or services: the respondent claims it provides a service for “fellow students”. But under paragraph 4(c)(i) of the Policy “it is the use of the domain name that must be bona fide, not the offering of goods or services.” (Final Report of the auDA Dispute Resolution Working Group, June 2001, Note 13.)

Further, the bona fide use requirement under paragraph 4(c)(i) of the auDRP will not be satisfied where the respondent has approached the complainant with the intention of selling the disputed domain name to it.74 In contrast to the decisions above where the panel has found for the complainant, in Michael Sweep v Douglas Berry75 the panel found that the respondent had a right or legitimate interest in the domain name “brisbaneglassnow.com.au”, even though the “respondent must have been aware of the complainant and its business when it registered the disputed domain name” and that the evidence was not “unequivocally in the respondent’s favour”. The fact that the respondent had a registered company name “Brisbane Glass Now” (changed from “Crown Sun”) and was seeking to offer glazing/glass services in the Brisbane area was sufficient – despite the fact that the complainant had been trading by the name “Brisbane Glass” since 1991. The critical factor for the panel here was that the conjoined terms “Brisbane” and “Glass” were not inherently distinctive, and that the respondent was able to provide sufficient evidence to rebut the prima facie case against it.

71 72

73 74 75

IAMA Case No 3353 (24 October 2009), p 4. On the issue of failure to file an adequate response, see for example Pharmalink Pty Ltd v Ian Simpson McDermott LEADR Case No auDRP10/09 (19 January 2010); Thompsons, Kelly & Lewis Pty Ltd t/as Flowserve Pump Division Australia v DNS Advertising Pty Ltd CIArb Case No 08/01 (24 March 2008); ScriptLogic Corp v Scriptlogic Pacific Pty Ltd WIPO Case No DAU2008-0009 (16 June 2008); International Business Machines Corp v Investment Backed Mortgages Ltd WIPO Case No DAU2007-0009 (7 January 2008). In Firemex Pty Ltd v Datateq Pty Ltd LEADR Case No auDRP09/09 (8 January 2010) the panel rather bizarrely found for the respondent – even though the respondent had not filed a response. WIPO Case No DAU2004-0003 (8 October 2004). PA Consulting Services Pty Ltd v Joseph Barrington-Lew WIPO Case No DAU2003-0002 (20 May 2003). Michael Sweep v Douglas Berry WIPO Case No DAU2012-0008 (23 May 2012).

[5.100]

5: Rights or Legitimate Interests in .au Domain Names

Meaning of “Before Any Notice” [5.90] In Provisio Technologies Pty Ltd v Brenden Thomas Rolley,76 the panel referred to Shanahan’s Australian Law of Trade Marks and Passing Off (4th ed, Thomson Reuters, 2008, 889) with respect to the meaning of “before any notice” under paragraph 4(c): In order to rely on this [paragraph 4(c) of the auDRP], the resistrant needs to demonstrate its use or preparations to use the domain name prior to it being aware of the subject matter of the dispute, rather than simply prior to notice of the dispute itself. This slight variation from the UDRP prevents a registrant from using or preparing to use the domain name after knowing that there may be a dispute but before dispute proceedings are commended [sic].77

Thus, what is relevant is not the date of commencement of proceedings, but the date on which the respondent became aware of a dispute pertaining to the domain name.78 This means that any evidence of intended use of a domain name for the bona fide offering of goods or services after the respondent becomes aware of the dispute is irrelevant under this head.79 On this issue, the panel in TrueLocal Inc Geosign Technologies Inc and True Local Ltd v News Interactive Pty Ltd80 finding for the respondent held: One of the circumstances in paragraph 4(c)(i) is: “before any notice to you [the respondent] of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name… in connection with an offering of goods or services.” The respondent first received a notice of demand by email on January 20, 2006. It is clear that notice of a dispute is provided by such a communication. (See, Final Report of the auDA Dispute Resolution Working Group, June 2001, Note 12: “a letter of demand or similar communication from the complainant is sufficient to constitute notice to the respondent of the subject matter of the dispute.” See also, for example, T Rowe Price Associates Inc v J A Rich WIPO Case No D2001-1044.) Accordingly, the respondent may demonstrate rights or legitimate interests by demonstrating a bona fide use of, or demonstrable preparations to relevantly use, the disputed domain name before January 20, 2006.

Meaning of “Corresponding to the Domain Name” [5.100] The panel in Migration Solutions Pty Ltd v Han Chung Lee t/as Australasia Migration Solutions81 considered the meaning of the term “corresponding to the domain name”. In this decision, the complainant submitted that the respondent’s registered business name, Australasia Migration Solutions, was not a name that corresponded to the disputed domain name 76 77 78

79

80 81

LEADR Case No auDRP13/10 (20 July 2010). LEADR Case No auDRP13/10 (20 July 2010), p 6, [5.2]. See United Parcel Service of America Inc v Wesley Bryant WIPO Case No DAU2009-0012 (11 February 2010); Blurb Inc v Rethink IT Pty Ltd WIPO Case No DAU2009-0008 (28 October 2009). For example, see Princess Yachts International Plc v Graham Stephens LEADR Case No auDRP08/07 (3 August 2007), p 9 [7.22(a)], [7.22(b)]; Zillow Inc v Felix-Hoffman Anne-Simone WIPO Case No DAU2006-0015 (1 March 2007); Premier Fire Protection Services (NSW) Pty Ltd and Premier Fire Services (NSW) Pty Ltd v Nixon Safety Pty Ltd LEADR Case No auDRP07/05 (17 August 2005), p 7 [6.2]; Overture Services Inc v Overture Search WIPO Case No DAU2004-0002 (28 September 2004). WIPO Case No DAU2006-0003 (29 May 2006). LEADR Case No auDRP02/06 (23 March 2006).

119

120

Australian Domain Name Law

[5.100]

“migrationsolutions.com.au”. The panel disagreed, and referred to auDA’s Domain Name Eligibility and Allocation Policy Rules for Open 2LDs82 for guidance: Clause 2 of the auDA Eligibility and Allocation Rules for com.au domain names provides as follows: 2. Domain names in the com.au 2LD must: (a) exactly match, acronym or abbreviation of the registrant’s company or trading name, organization or association name or trade mark; or (b) be otherwise closely and substantially connected to the registrant. 6.20. Paragraph 7.1 of the Guidelines for Accredited Registrars on the Interpretation of Policy Rules for Open 2LDs (2003-07), which was in force at the time of the registration of the disputed domain name, provides that: “An ‘exact match’ is where the requested domain name matches one, some or all of the words comprising the name used by the registrant to establish their eligibility. The words must be used in the same order as they appear in the name.” 6.21. Policy 2003-07 has since been superceded but paragraph 7.1 of Policy 2005-02, which is currently in effect, remains exactly the same. 6.22. As the words “Migration Solutions” form part of the respondent’s business name which was used to establish the respondent’s eligibility for the disputed domain name and the words appear in the same order as they do in the registered business name, the disputed domain name does “exactly match” the respondent’s business name.83

The panel held that the respondent had satisfied the requirements of paragraph 4(c)(i) of the auDRP and negated the complainant’s assertions that it had no rights or legitimate interests in the disputed domain.

Commonly Known by a Domain Name When will a respondent be commonly known by a domain name?

[5.110] Paragraph 2.1B of the auDA auDRP Overview 1.0 states: The position is unknown. Paragraph 4(c)(ii) of the auDRP, like the equivalent provision in the UDRP, states that a respondent will be taken to have demonstrated rights or legitimate interests in a domain name where it has been commonly known by the domain name, even though it has acquired no trademark or service mark rights. It appears that no auDRP case has yet found that a respondent is “commonly known” by a domain name. Thus, it is not clear whether – and, if so, in what circumstances – a respondent will be found to have rights or legitimate interests in a domain name by virtue of being commonly known by it.84

The second ground under paragraph 4(c)(ii) of the auDRP which supports the existence of a respondent’s rights or legitimate interests in a domain name is that the respondent is commonly known by a name which corresponds to the 82 83 84

Domain Name Eligibility and Allocation Policy Rules for Open 2LDs (Policy No: 2012-04) (17/12/2012), auDA, http://www.auda.org.au/pdf/auda-2012-04.pdf at 4 February 2014. Migration Solutions Pty Ltd v Han Chung Lee t/as Australasia Migration Solutions LEADR Case No auDRP02/06 (23 March 2006), p 7-8, [6.19] – [6.22]. Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 13-14, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf.

[5.120]

5: Rights or Legitimate Interests in .au Domain Names

disputed domain name – excluding all prefixes and suffixes. Merely registering a disputed domain name is clearly not sufficient for a respondent to be held to be commonly known by the domain name. For a respondent to show that it has been commonly known by a name corresponding to the domain name, it must provide substantial evidence of advertising, media recognition, or the extent of its sales under that name to demonstrate that it is “commonly known” by the disputed domain name. Finding for the complainant in Bernard Janes v LJ Bubenicek & AJ Main, A&L Technologies85 the panelist found: The respondent does not however provide substantial evidence that it has been “commonly known” by the disputed domain name. The evidence provided by the respondent is no more than a copy of its own homepage, which the respondent says has been active since April 2010. The respondent also does not, for example, provide evidence of other advertising, media recognition, or the extent of its sales under that name that might show that it is “commonly known” by the disputed domain name. Further, as this panel has noted in previous cases, the registration and use of a disputed domain name, in connection with the respondent’s website, does not by itself support a conclusion that the respondent is commonly known by the domain name. Yakka Pty Ltd v Mr Paul Steinberg WIPO Case No D2004-0502. Were it otherwise, a respondent could rely on infringement to establish a right or legitimate interest – an outcome that is clearly contrary to the purpose of the Policy. (For somewhat similar statements, see Madonna Ciccone pka Madonna v Dan Parisi and “Madonna.com” WIPO Case No D2000-0847).

The evidence should show a clear connection between the common name the respondent relies on and the disputed domain. In Lullaby Conceptions Pty Ltd v Neverscope Pty Ltd,86 the panelist rejected the respondent’s argument that the disputed domain name “lullabyconceptions.com.au” was derived from the respondent’s product the “Lullaby Concepts Baby Monitor”. The evidence produced in this decision showed that the respondent’s corporate name was “Neverscope Pty Ltd”, while complainant’s corporate name “Lullaby Conceptions Pty Ltd” was identical to the disputed domain name.

Degree of Similarity between the Domain Name and the Commonly Known Name of the Respondent [5.120] In order for this ground to be satisfied, a respondent must demonstrate that the domain name corresponds with the name by which the respondent has been commonly known (disregarding as inconsequential the domain name’s suffix – such as “.com.au”).87 In this regard, the panel in Constable Care88 preferred to adopt the approach in John Hayes89 and Kronopol

85 86 87

88 89

Bernard Janes v LJ Bubenicek & AJ Main, A&L Technologies WIPO Case No DAU20100014 (6 September 2010). Lullaby Conceptions Pty Ltd v Neverscope Pty Ltd IAMA Case No 3064 (9 July 2007). See Constable Care Child Safety Foundation Inc v The Big Bamboo Production Co Pty Ltd WIPO Case No DAU2013-0001 (8 March 2013), citing Banco Espírito Santo SA v Bancovic WIPO Case No D2004-0890 (16 December 2004), John Hayes v Vaughan Enterprises WIPO Case No D2004-0531 (27 August 2004), and Kronopol Sp. z o.o v Lamwood Products (1990) Ltd, Levana Schwartz WIPO Case No D2007-1596 (26 December 2007). Constable Care Child Safety Foundation Inc v The Big Bamboo Production Co Pty Ltd WIPO Case No DAU2013-0001 (8 March 2013). John Hayes v Vaughan Enterprises WIPO Case No D2004-0531 (27 August 2004). See also Doteasy Technology Inc v M Makras and EA Nahed dba Dot Easy Australia WIPO Case No DAU2006-0011 (31 January 2007) citing and following John Hayes v Vaughan Enterprises WIPO Case No D2004-0531 (27 August 2004).

121

122

Australian Domain Name Law

[5.120]

Sp. z o.o,90 where the respective panels focused their attention on the distinctive elements common to both the domain name and the name claimed to be commonly used by the respondents.91 In Constable Care, although the domain name “constablecare.com.au” was not identical to the complainant’s business name “Constable Care’s Safety Books”, the panel accepted the respondent’s evidence that it had been commonly known by the common element “Constable Care” since at least 2002, and the additional words “Safety Books” were only descriptive.92 The commonly known name of the respondent need not be its full name. Thus, for example, in a case involving a natural person by the name of Corey De Silva, and trading as “Silva Service Spit Roast Catering”, the panel held: On balance, the panel infers that the respondent registered and used the disputed domain name because it included part of the name of Corey De Silva, and because the disputed domain name was a play on the notation of “silver service”.93

A WhoIs search – which establishes the registrant’s details of a given domain name – is sufficient to determine whether the respondent is commonly known by a name identical to that of the domain name.94 For example, in L’Oreal, 95 the WhoIs search revealed that the disputed domain name was registered by Nicholas Bolton; and in Michelin,96 the search found that the domain was registered by Thomas Panagiotopoulos. In both these decisions, the argument that the respondent was commonly known by a name corresponding to the disputed domain name was rejected. Similarly, in ALDI Stores v Peter Gerard Colless,97 the panel’s WhoIs search revealed that the domain name “aldionline.com.au” was registered to Peter Gerard Colless; and in LEGO Juris A/S v Wagner Adam John,98 the WhoIs search also did not support the argument that the respondent was commonly known by the disputed domain names.

Abbreviation and Acronyms [5.130] In The Institute of Arbitrators & Mediators Australia (IAMA) v

Adjudicate Today Pty Ltd99 the respondent sought to argue that it had rights or legitimate interests in the domain name “iama.com.au” as two companies 90 91

92 93 94 95 96 97 98 99

Kronopol Sp. z o.o v Lamwood Products (1990) Ltd, Levana Schwartz WIPO Case No D2007-1596 (26 December 2007). See also Mrsupplement Australia Pty Ltd and Mrsupplement.com.au Pty Ltd v Tony Hatzeandreou WIPO Case No DAU2012-0018 (25 July 2012) where the panel endorsed “the approach taken in John Hayes v Vaughan Enterprises and Arizona Golf Properties Inc v Mr Dean Benigno dba Realty Executives WIPO Case No D2003-0571, which focuses attention on the distinctive element common to both the domain name and name claimed to be commonly used.” Constable Care Child Safety Foundation Inc v The Big Bamboo Production Co Pty Ltd WIPO Case No DAU2013-0001 (8 March 2013). Silpro Pty Ltd v Corey De Silva t/as Silva Service Spit Roast Catering WIPO Case No DAU2008-0013 (22 September 2008). Hertz Systems Inc v Throne Ventures Pty Ltd WIPO Case No DAU2009-0013 (20 January 2010). L’Oréal / L’Oréal Australia Pty v Namewise Pty Ltd / Nicholas Bolton WIPO Case No DAU2013-0009 (23 May 2013). Compagnie Générale des Etablissements Michelin v Thomas Panagiotopoulos WIPO Case No DAU2013-0011 (31 May 2013). WIPO Case No DAU2012-0032 (1 February 2013). WIPO Case No DAU2011-0015 (8 July 2011). WIPO Case No DAU2012-0021 (13 September 2012).

[5.130]

5: Rights or Legitimate Interests in .au Domain Names

associated with the respondent had the registered business names of “Investigation, Adjudication, Mediation Australia” and “Institute of Adjudication & Mediation Australia”, the acronym for “IAMA”. Although the registration of a business name in itself does not give rise to any rights which override pre-existing rights in a registered trade mark or under common law (as it serves to operate more as a legal obligation to register a business name before engaging in business),100 the panel found in favour of the complainant: Apart from the appearance of the business name registered in New South Wales, “Investigation, Adjudication, Mediation Australia”, as a headline on the website to which the disputed domain name has resolved since June this year, none of the extracts from the websites put in evidence by the respondent appear to make any use of either of the registered business names on which the respondent relies or of the acronym IAMA (or, if they do, the use would not appear to be sufficiently prominent to generate reputation at common law).

Similarly, in ESat Communications Pty Ltd v Kingford Promotions Pty Ltd,101 the panel rejected the respondent’s argument that it intends to use the disputed domain names “eSat.com.au” and “eSat.net.au” in relation to its product “Electronic Storage Archiving & Transmission”. The panel found: The panel notes that the use of an acronym in respect of a name, as part of a domain name, is permitted under the Eligibility Rules. However, the respondent has provided the panel with no evidence of registration of a name, trade mark or service mark in respect of the product or the ESAT acronym applied in relation to the product. The respondent has also failed to provide the panel with any evidence of the existence of the ESAT product or proof of the marketing plan for the ESAT product, aside from the assertion in its response, that such a product exists.

On the other hand in MGM Home Entertainment and others v McIlroy Group Management Pty Ltd,102 the respondent’s corporate name was “McIlroy Group Management Pty Ltd”, the acronym for “MGM”. The panel observed: The respondent is identified as “McIlroy Group Management Pty Ltd” and the complaint discloses searches of telephone and other databases which establish the existence of this corporation. The contraction of a company’s or personal name to the initials of that person is a clear example of a prima facie legitimate interest in a domain name, see for example, Japan Airlines Co Ltd v TransHost Associates, JAL Systems and John A Lettelleir WIPO Case No D2000-0573. On the basis of this, it would appear that the respondent does have a legitimate interest in the domain name.103 100

101 102 103

As the panel held in The Institute of Arbitrators & Mediators Australia (IAMA) v Adjudicate Today Pty Ltd WIPO Case No DAU2012-0021 (13 September 2012): “a registered business name does not confer in and of itself positive rights which override pre-existing registered trademarks or common law rights: see for example, BM Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1976) 51 ALJR 363; 12 ALR 363 at 369 (Gibbs J, Barwick CJ and Murphy J agreeing). Rather, registration of a business name is an obligation to enable identification of the person who is in fact carrying on the business. Under the general law and apart from registration as a trademark, therefore, rights derive from use and development of a reputation with the public. The Panel also recognises that a business name is not subjected before registration to the kind of substantive examination that occurs in the case of a trademark application. In the usual case, the name proposed to be registered is compared only to other names already existing on the register.” ESat Communications Pty Ltd v Kingford Promotions Pty Ltd LEADR Case No 03/03 (11 July 2003), p 8. WIPO Case No DAU2003-0006 (29 December 2003). MGM Home Entertainment and others v McIlroy Group Management Pty Ltd WIPO Case No DAU2003-0006 (29 December 2003).

123

124

Australian Domain Name Law

[5.130]

In this decision, notwithstanding that the respondent had requested AUD100, 000 to transfer the disputed domain name “mgm.com.au” to the complainant, had failed to use the domain name for any purpose and did not even file a response in the proceedings, the panel decided in the respondent’s favour on the basis that the complainant had “failed to rebut the presumption of legitimacy that the corporate registration confers.”

Legitimate Non-commercial or Fair Use of a Domain Name When will a respondent be making a legitimate non-commercial or fair use of a domain name?

[5.140] On this question, paragraph 2.1C of the auDA auDRP Overview 1.0 states: The position is unknown. Paragraph 4(c)(iii) of the auDRP, like the equivalent provision in the UDRP, states that a respondent will be taken to have demonstrated rights or legitimate interests in a domain name where it is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or name at issue. It appears that no auDRP case has yet found a respondent to be making a “legitimate non-commercial or fair use” of a domain name [see paragraphs 2.4 and 2.5]. Thus, it is not clear whether – and, if so, in what circumstances – a respondent will be found to have rights or legitimate interests in a domain name by virtue of a non-commercial or fair use of it.104

As stated above, the third ground (under paragraph 4(c)(iii) of the auDRP) which supports the existence of a respondent’s rights or legitimate interests in a domain name is where the respondent is found to be making a legitimate non-commercial or fair use of the dispute domain name. For example, domain names could be associated with websites that are being put to use for non-commercial or fair uses – such as blogs that provide commentaries on current affairs, critiques/reviews for different products and services, or those set up for charitable purposes and fundraising. To illustrate, in Google Inc v Jan Jeltes105 the panel acknowledged a blog could be regarded as being used for non-commercial or fair use. However, the panel found no such non-commercial or fair use in the way the blog was being managed in this instance: There are currently no advertisements on the website, however under a heading of “Favourite Links”, there is a link to “advertise on this website”. Clicking on this link brings up an automatic email to the website operator, whereby presumably a user can enquire about advertising. The commentary on the website dates back to July 2006. The first entry in the archives for this month reads: “Become an officially recognized friend of googler.com.au for AUD$20.00”. There is no explanation about what this money would be used for, or what a “recognized friend” would receive in return. The panel infers from these two statements that the respondent has at least attempted to use this site as a commercial website. Also, as mentioned above, the panel has inferred that the respondent knew of the 104

105

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 14, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2008-0012 (20 October 2008).

[5.140]

5: Rights or Legitimate Interests in .au Domain Names

complainant’s rights in GOOGLE and intentionally chose a domain name which contained this well-known brand. Such acts cannot constitute legitimate noncommercial or fair use.106

The question whether a website offering criticism qualifies as legitimate non-commercial or fair use arose in Google Inc v Dmitri Rytsk107 This question has been the subject of extensive debate in UDRP proceedings, and the panelist summarised the two main views emerging from UDRP decisions on this issue: some UDRP panelists have held that the use of a domain name for a criticism website gives rise to a right or legitimate interest in the domain name because it is being used to promote the cause of free speech, which is said to be legitimate. The WIPO Overview puts the issue and the differing opinions of panelists on the issue in the following way. “In the event that a domain name confusingly similar to a trademark is being used for a genuine non-commercial free speech website, there are two main views. There is also some division between proceedings involving United States parties and proceedings involving non-United States parties, with few non-United States panelists adopting the reasoning in View 2”. “View 1: The right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark”. “Relevant decisions: Skattedirektoratet v Eivind Nag WIPO Case No D2000-1314, Transfer; Myer Stores Ltd v Mr David John Singh WIPO Case No D2001-0763, Transfer; Triodos Bank NV v Ashley Dobbs WIPO Case No D2002-0776, Transfer; The Royal Bank of Scotland Group plc, National Westminster Bank plc AKA NatWest Bank v Personal and Pedro Lopez WIPO Case No D2003-0166, Transfer; Kirkland & Ellis LLP v DefaultData.com, American Distribution Systems Inc WIPO Case No D2004-0136, Transfer”. “View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial”. “Relevant decisions: Bridgestone Firestone Inc, Bridgestone/Firestone Research Inc, and Bridgestone Corp v Jack Myers WIPO Case No D2000-0190, Denied; TMP Worldwide Inc v Jennifer L Potter WIPO Case No D2000-0536, Denied; Howard Jarvis Taxpayers Association v Paul McCauley WIPO Case No D2004-0014, Denied”.

The fundamental question for the panelist was whether the respondent was actually using the domain name as a genuine criticism site, and it was on this issue that the respondent failed. The panel observed: What is fundamental, however, to all such considerations is whether the respondent is conducting a criticism site as a matter of fact. In other words, if a respondent wishes to rely on the criticism site and free speech grounds, he must prove on the balance of probabilities that on the facts of the individual case it really is a criticism site that is being conducted and also that it is being conducted in the pursuit of free speech and not as a guise for an essentially commercial or other improper purpose. It is here that the respondent’s case falls down. That is so because the panel is not satisfied that the respondent has established a genuine criticism site.

The panelist held that it was not enough for the respondent to merely assert that he established such a site – there must be evidence to support that conclusion. Further, while the website was not currently active, by using a Wayback Machine (at www.archive.org) the panel was able to verify that the website (at 15 March 2007) was being used to allow internet users to conduct searches 106 107

Google Inc v Jan Jeltes WIPO Case No DAU2008-0012 (20 October 2008). WIPO Case No DAU2007-0004 (8 August 2007).

125

126

Australian Domain Name Law

[5.140]

using a range of search engines – and not being used as a genuine criticism site. The panel also found that there was no attempt initially either to establish a criticism site, and the Wayback Machine showed that as late as 30 August 2006 the site was being used for purely commercial purposes. This approach has been followed in UEIP Pty Ltd v Fincar Pty Ltd,108 where the panel observed: The website of the domain name, as it currently stands, offers extensive information with respect to energy related issues. It also provides links to other energy related sites. If that were all that the website showed there may have been a showing of legitimate non-commercial or fair use of the domain name. However, the website as it originally was structured and as it presently appears, clearly contains links to commercial sites offering goods or services including goods or services in the energy industry. Accordingly, the use does not appear to be non-commercial and it is a reasonable inference, not rebutted by respondent, that the domain name is being used for commercial gain and to misleadingly attract consumers to the website in the belief that the domain name will lead to the website of United Energy or one associated with it. The use of the domain name in this way substantially resembles that in the case of Australian Government Department of Education, Science and Training v Blogger Pty Ltd IAMA Case No 3058 (“the Questacon Case”).

Whether a website is being used for legitimate non-commercial use is a question of fact. Merely because a website does not engage in any commercial activity does not mean that the website, associated with a domain name, is being used for “legitimate” non-commercial purposes. If that was not the case, nearly all instances of domain parking, where the website is not being used for any purpose, be it commercial or otherwise, might attract this limb of paragraph 4(c). Therefore, the question is whether a website associated with a domain name is being used for “legitimate” non-commercial purposes – as not all non-commercial puposes may be legitimate. In this regard, the panel in Adjustit Pty Ltd v Autointegrity Pty Ltd109 observed: The respondent has provided insufficient evidence to demonstrate that the domain name is being used for a legitimate non-commercial purpose of that it is being fairly used. Whilst the website superficially appears to contain content, the fact that the Newsletter has a different title from the disputed domain names, and that the content itself appears to constitute reproductions from other sources (some of which are out of date), casts considerable doubt on the legitimacy of the relevant conduct.110

Finally, it should be noted that where a respondent offers to transfer the disputed domain name in favour of the complainant for a significant sum, any inference of legitimate non-commercial or fair use of the domain name on the part of the respondent becomes negated. For example, in Sungen International Ltd v DCFX Solar Systems Pty Ltd111 the panel observed:

108 109 110 111

WIPO Case No DAU2007-0010 (13 December 2007). Adjustit Pty Ltd v Autointegrity Pty Ltd LEADR Case No auDRP15/06 (19 January 2007). Adjustit Pty Ltd v Autointegrity Pty Ltd, LEADR Case No auDRP15/06 (19 January 2007), p 10. WIPO Case No DAU2011-0035 (22 December 2011).

[5.150]

5: Rights or Legitimate Interests in .au Domain Names

the respondent has not made any legitimate non-commercial or fair use of the disputed domain name. The respondent has demonstrated this by, inter alia, offering to sell the disputed domain name to the complainant for $AUD125,000.00.112

Rights or Legitimate Interests in a Domain Name Comprised of a Dictionary Word Does a respondent automatically have rights or legitimate interests in a domain name comprised of a dictionary word(s)?

[5.150] Paragraph 2.2 of the auDA auDRP Overview 1.0 states: The general position is the same as that under the UDRP. A respondent cannot rely solely on the fact that the domain name is composed of ordinary language words to ground a claim to rights or legitimate interests in it. If the complainant makes a prima facie case that the respondent has no rights or legitimate interests in the domain name, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the auDRP, or any other basis for rights or legitimate interests, then the respondent will lack a legitimate interest in the domain name even if it is comprised of a dictionary, descriptive or generic word or phrase. Where the complainant has a registered trademark to which the domain name is identical, the complainant is entitled to a rebuttable presumption that its mark is distinctive rather than descriptive. Where the domain name is highly descriptive, the complainant must make a strong case in order to establish, prima facie, that the respondent does not have rights or legitimate interests in it. As a general principle, the less distinctive is the complainant’s mark or name, the more likely it is the respondent will have rights or legitimate interests in a corresponding domain name. Factors that are relevant to determining if the respondent has rights or legitimate interests in a descriptive, generic, or dictionary word domain name include the distinctiveness, status and fame of the trademark or name in which the complainant has rights, the likelihood of customer confusion, and whether the respondent was aware of this likelihood prior to registering the domain name. Where the complainant’s trademark has a very considerable reputation and there is a strong likelihood of confusion between it and the domain name, the descriptive nature of the words constituting the domain name will not give the respondent rights or legitimate interests in it. Where there is evidence of actual customer confusion between the domain name

112

Sungen International Ltd v D C F X Solar Systems Pty Ltd WIPO Case No DAU2011-0035 (22 December 2011). See also Glimmer Body Art, LLC v Renee Chidiac WIPO Case No DAU2013-0021 (30 September 2013), where the panelist found: “The complainant followed up through its counsel quite promptly requesting transfer of the disputed domain names but the respondent subsequently refused transfer without payment of her transfer costs and a payment of AUD 5000. The respondent has not sought to rebut the complainant’s version of events which she could have been expected to do if there was a genuine dispute concerning the parties’ discussions and the circumstances of registration. In circumstances that the respondent clearly knew of the complainant’s mark and business and before conclusion of its discussions to be involved in distribution in Australia sought to register the corresponding disputed domain names without authority the Panel finds that the respondent’s registration cannot be legitimate and that the respondent had no right to do so. Her subsequent conduct in demanding a substantial price for the disputed domain names over and above the transfer costs only reinforces the Panel’s conclusion on this point.”

127

128

Australian Domain Name Law

[5.150]

and the trademark, the descriptive nature of the words constituting the domain name will not give the respondent rights or legitimate interests in it [see paragraph 2.1A].113

The auDA auDRP Overview 1.0 cites the following as relevant authorities on this issue: Jupitermedia Corp and Australia.Internet.com Pty Ltd v Spotpress Pty Ltd t/as Internet Printing;114 TrueLocal Inc, Geosign Technologies Inc and True Local Ltd v News Interactive Pty Ltd;115 Telstra Corp Ltd v Mikhail Doubinski and Yury Sharafutdinov t/as AAA Marketing World;116 QSoft Consulting Ltd v BSP;117 Cognito Software Ltd v Rethink IT Pty Ltd;118 and Environics Pty Ltd v Connectus Pty Ltd.119

Rights or Legitimate Interests of a Reseller/Distributor of Trade Marked Goods or Services Can a reseller/distributor of trade marked goods or services have rights or legitimate interests in a domain name which contains such trade mark?

[5.160] On this issue, paragraph 2.3 of the auDA auDRP Overview 1.0 states: The general position is the same as that under the UDRP. In early decisions under the auDRP, panels were concerned to determine whether the respondent was genuinely using the trademark to indicate that it was a reseller/distributor or rather was using the trademark to induce customer confusion. The more recent decisions of auDRP panels have adopted the principles set out in the UDRP case Oki Data Americas Inc v ASD Inc WIPO Case No D2001-0903 (the “Oki Data principles”) – although at least one panel has expressed doubt that these principles should be accepted verbatim, especially the requirement that there be disclosure of the registrant’s relationship with the trademark owner. Under the Oki Data principles, a reseller or distributor can be making a bona fide offering of goods and services, and thus have a legitimate interest in the domain name, if its use meets certain requirements. These requirements are: (i) the respondent must actually be offering goods or services related to the trademark in respect of which the domain name is confusingly similar; (ii) the respondent must offer only those goods or services in connection with the disputed domain name; (iii) the respondent must have disclosed its true relationship with the owner of the trademark to which the domain name is identical or confusingly similar, prior to notice of the dispute; and (iv) the respondent must not have attempted to “corner the market” in domain names that reflect that trademark. These principles have been applied by auDRP panels to a reseller that is unauthorised, as well as to one that is authorised, to use the trademark by the trademark owner. Thus, these principles have been applied to a reseller of the trademarked goods that are second-hand. These principles have been extended by at least one auDRP panel to apply to an entity acting not as a reseller of the trademarked goods, but as an agent for the purchaser of such goods. 113

114 115 116 117 118 119

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 14, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2003-0005 (17 February 2004). WIPO Case No DAU2006-0003 (29 May 2006). WIPO Case No DAU2006-0008 (5 October 2006). WIPO Case No DAU2009-0003 (1 July 2009). WIPO Case No DAU2009-0011 (19 January 2010). LEADR Case No auDRP 03/09 (9 June 2009).

[5.160]

5: Rights or Legitimate Interests in .au Domain Names

At least one panel has considered the situation where a respondent is offering for sale goods or services that are interoperable with other goods or services that bear the complainant’s trademark. In that situation, the respondent has a legitimate interest in describing its goods or services accurately – and this legitimate interest will extend to the use of a domain name that contains the complainant’s trademark so long as that use is descriptive and fair. A descriptive and fair use in the interoperability situation falls within the circumstances specified in paragraph 4(c)(iii) of the Policy as demonstrating the respondent’s rights or legitimate interests in the domain name – namely, the circumstances of the respondent making a “fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish” the complainant’s trademark.120

In Aastra Telecom Inc v Spring Mountain Enterprises Pty Ltd121 the panelist held: The extent to which an authorised reseller may have such a right or legitimate interest has been addressed in numerous prior panel decisions. Item 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions summarises the approaches that panels have taken in this respect, as follows, under the heading: “Can a reseller have a right or a legitimate interest in the disputed domain name?”: Majority view: A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark. […] Minority view: Without the express permission of the trademark holder the right to resell the trademark holder’s products does not create a right to use the trademark as the basis for a domain name.

In GM Holden Ltd v Bradley John Lawless,122 the panelist summarised the position in the following terms: The analogous issue of whether a reseller of a complainant’s products has a legitimate interest in registering and using a domain name which includes the complainant’s trade mark in respect of the supply of such products, where there is no contractual relationship between the respondent and the complainant, has been dealt with in a number of prior panel decisions. The consensus of those decisions is that the respondent must meet four criteria, as collected from an earlier decision by the panel in Oki Data Americas Inc v ASD Inc WIPO Case No D2001-0903 as follows: 1. Respondent must actually be offering the goods or services at issue. For example, World Wrestling Federation Entertainment Inc v Ringside Collectibles WIPO Case No D2000-1306 (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering). 2. Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait internet users and then switch them to other goods. Nikon Inc and Nikon Corp v Technilab Inc WIPO Case No 120

121 122

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 15, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2008-0003 (9 April 2008). WIPO Case No DAU2010-0010 (23 May 2010).

129

130

Australian Domain Name Law

[5.160]

D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Shigeki Kanao v JW Roberts Co CPR 0109 (bait and switch is not legitimate). 3. The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. For example, Houghton Mifflin Co v The Weathermen Inc WIPO Case No D2001-0211 (no bona fide offering where website’s use of complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website); RT Quaife Engineering Ltd and Autotech Sport Tuning Corp dba Quaife America v Bill Luton WIPO Case No D2000-1201 (no bona fide offering because domain name, quaifeusa.com, improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent’s deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat Inc v Shelter Products WIPO Case No D2001-0344 (no bona fide use when respondent suggested that it was the manufacturer of complainant’s products). 4. The respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering Inc v The Mudjackers and Garwood S Wilson Sr WIPO Case No D2000-1525 (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”). The Oki Data decision related to an authorized reseller, but the same principles have been adopted in respect of an unauthorized reseller; see Philip Morris Inc v Alex Tsypkin WIPO Case No D2002-0946.

This was echoed by the three member panel in Bayerische Motoren Werke Aktiengesellschaft v Publishing Australia Pty Ltd, ACN 120 531 982, Mr Nicholas Crawshay:123 In Oki Data Americas Inc v ASD Inc WIPO Case No D2001-0903 the panel set out four criteria in which “an authorised sales or service agent of trademarked goods can use the trademark at issue in its domain name”. However, the panel considers (as other panels have also previously acknowledged: see for example, National Association for Stock Car Auto Racing Inc v Racing Connection / The Racin’ Connection Inc WIPO Case No D2007-1524 and GM Holden Ltd v Publishing Australia Pty Ltd WIPO Case No DAU2011-0002, among others.) that these considerations may be equally applicable to circumstances, such as those in which a person is offering genuine goods of a trade mark owner, or services related to those goods, but is not an authorized reseller or in an authorized relationship with the trade mark owner as such. The essential issue addressed by the Oki Data decision is whether, in these circumstances, there is a bona fide offering of relevant goods and services, and an absence of any associated deception. The criteria set out in the Oki Data decision are: 1. the respondent must actually be offering the goods or services the subject of the trade mark; 2. the respondent must only be offering those goods or services; 3. the website must accurately describe the relationship between the respondent and the trade mark owner; and 123

WIPO Case No DAU2011-0024 (24 November 2011).

[5.160]

5: Rights or Legitimate Interests in .au Domain Names

4. the respondent must not try to take all of the relevant domain names so as to deprive the trade mark owner of the ability to register its trade mark as a domain name.

Finding for the complainant, the panel in GM Holden Ltd v Blogger Pty Ltd124 held: The respondent contends that it has used the domain name in accordance with the principles laid down in Oki Data Americas Inc v ASD Inc WIPO Case No D2001-0903. That case dealt with the issue of whether an authorized sales or service agent of trade marked goods could use the trade mark at issue in its domain name. Previous panels have questioned whether the criteria laid down in that case are necessarily applicable to a situation, as in this proceeding, where the respondent has no relationship whatsoever with the trade mark owner: Gerd Petrik v Johnny Carpela WIPO Case No D2004-1043; Dr. Ing. h.c. F. Porsche AG v Ron Anderson WIPO Case No D2004-0312. In this case it is clear that the respondent is not an authorized agent of the complainant. Even in applying that test in this case, there are elements which the respondent has not met. The Oki Data Americas test requires that the respondent must be actually offering the goods at issue. The print outs of the respondent’s webpage provided by the complainant clearly show that the goods are not being offered on the website itself, rather there is a link to a website privatefleet.com.au, which sells the goods in question along with competing goods. The panel in SingTel Optus Pty v Xnet WIPO Case No D2004-0734 held that mere maintenance of a link alone does not constitute use “in connection with a bona fide offering of goods or services” for the purposes of the Policy. To find otherwise would mean that rights or legitimate interests could be acquired merely by creating a link for a disputed domain name to a third party who does offer bona fide goods or services. In any event the linked website is selling competing products and not just the trade marked goods as is required under the Oki Data criteria. Further it does not matter that an internet user, on visiting the respondent’s website, might become aware that the website is not that of the complainant’s as a result of the use of a disclaimer. The confusion arises by a simple comparison between the complainant’s trade marks and the disputed domain name: Aastra Telecom Inc v Spring Mountain Enterprises Pty Ltd WIPO Case No DAU2008-0003. The panel in Triodos Bank NV v Ashley Dobbs WIPO Case No D2002-0776 noted that: “the fact that the nature of the site is apparent as soon as one arrives at it is too late. By then, the visitor has been deceived, the respondent has achieved his objective and the damage is done”.

The auDA auDRP Overview 1.0 also cites the following as relevant authorities on this point: Princess Yachts International Plc v Graham Stephens;125 Topfield Co Ltd v Jai Kemp and Digital Products Group Pty Ltd, t/as Topfield Australia, formerly Paige Communications Pty Ltd;126 GM Holden Ltd v Publishing Australia Pty Ltd;127 Clark Equipment Company v AllJap Machinery Pty Ltd;128 Terra Plana International Ltd. v The Summer House Australia Pty Ltd/Tanya Greenwood;129 and Google Inc v Q Interactive Pty Ltd / Mr Victor 124 125 126 127 128 129

WIPO Case No DAU2008-0016 (31 October 2008). LEADR Case No auDRP08/07 (3 August 2007). WIPO Case No DAU2008-0002 (21 April 2008). WIPO Case No DAU2011-0002 (7 March 2011). WIPO Case No DAU2011-0042 (5 March 2012). WIPO Case No DAU2012-0025 (22 November 2012). See also US Bank National Association as trustees for the First Alert Trust v Master Distributors Unit Trust, Bradley Green WIPO Case No DAU2011-0031 (24 November 2011); Custom Building Products Inc v Stone Age (NSW) Pty Ltd WIPO Case No DAU2011-0014 (11 July 2011); Ella’s Kitchen Group Ltd, Ella’s Kitchen (Brands) Ltd, Ella’s Kitchen (IP) Ltd v Nourish Foods Pty Ltd

131

132

Australian Domain Name Law

[5.160]

Quinteros.130 These decisions are dealt with below. The issue of whether a reseller of a complainant’s products has a legitimate interest in registering and using a domain name which includes the complainant’s trade mark in respect of the supply of such products, where there is no contractual relationship between the parties, was considered in Clark Equipment Company v AllJap Machinery Pty Ltd.131 Following the uDRP decision in Oki Data Americas Inc v ASD Inc,132 the three member panel made the following observations: The consensus of panelists’ views on the fairest way of balancing the competing interests of the parties in such cases has been authoritatively dealt with in the Oki-Data decision, which in turn has been followed many times since. For a reseller of a complainant’s products to have a legitimate interest in a domain name, where the complainant has not authorized such use, the reseller must meet the following criteria: 1. it must actually be offering the goods or services at issue. For example, World Wrestling Federation Entertainment Inc v Ringside Collectibles (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering). 2. it must use the website under the disputed domain name to sell only the trademarked goods; otherwise, it could be using the trademark to bait internet users and then switch them to other goods. Nikon Inc and Nikon Corp v Technilab Inc (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Shigeki Kanao v JW Roberts Co CPR (bait and switch is not legitimate). 3. its website must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. For example, Houghton Mifflin Co v The Weathermen Inc (no bona fide offering where website’s use of complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website); RT Quaife Engineering Ltd and Autotech Sport Tuning Corp dba Quaife America v Bill Luton (no bona fide offering because domain name, quaifeusa.com, improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent’s deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat Inc v Shelter Products (no bona fide use when respondent suggested that it was the manufacturer of complainant’s products). 4. it must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering Inc v The Mudjackers and Garwood S Wilson Sr (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”). The Oki Data decision related to an authorized reseller, but the same principles have been adopted in respect of an unauthorized reseller; see Philip Morris Inc v Alex Tsypkin.133

130 131 132 133

WIPO Case No DAU2011-0036 (21 December 2011); JMVB EnterprisesPty Ltd v Roxanne Melloway LEADR Case No auDRP16/10 (7 September 2010); Navico Australia Pty Ltd v Quin Marine Pty Ltd WIPO Case No DAU2009-0004 (14 July 2009); Tony & Monika Rahme v Paul & Sharyn White LEADR Case No auDRP06/09 (23 August 2009); Kristallglasfrabrik Spiegelau GmbH v Spiegelau Australia Pty Ltd LEADR Case No auDRP07/06 (30 August 2006). WIPO Case No DAU2012-0026 (14 January 2013). WIPO Case No DAU2011-0042 (5 March 2012). WIPO Case No D2001-0903 (6 November 2001). Clark Equipment Co v AllJap Machinery Pty Ltd WIPO Case No DAU2011-0042 (5 March 2012).

[5.160]

5: Rights or Legitimate Interests in .au Domain Names

Applying these principles to the disputed domain name, the three member panel in Clark Equipment Company v AllJap Machinery Pty Ltd134 held that criteria 2 and 3 were not satisfied, and hence the respondent lacked rights or legitimate interests in the domain name. In particular, where a disputed domain name comprising the complainant’s trade mark is not only being used to resell the complainant’s goods, but also being used to supply competing goods and services, the bona fide nature of the respondent’s supply of goods or services through the disputed domain name becomes doubtful.135 This proposition finds support in Clark Equipment Company v R & R Equipment Pty Ltd,136 a decision involving the supply of earth moving and construction equipment: The respondent appears to be a seller or reseller of the earth moving and construction equipment of a number of manufacturers, including the complainant. Accordingly, it cannot be regarded as a bona fide offering of these goods to do so by reference to a domain name that incorporates the complainant’s trade mark when the complainant has no connection or affiliation with the site. It might well be different if the respondent’s website offered only the complainant’s products and services – in other words, as a genuine reseller or distributor – but to do so in relation to a number of manufacturers’ products and services cannot be a bona fide or legitimate use of the disputed domain name.137

Similarly, in Veneziano Coffee Pty Ltd v Rick Caspersen,138 the respondent was appointed as the complainant’s Queensland distributor by virtue of an unwritten distributorship agreement in 2009. But in 2011, the said agreement came to an end, and therefore the complainant argued that the respondent violated the criteria set out in Oki Data Americas Inc v ASD Inc,139 in that the respondent was not selling the complainant’s products through the disputed domain name. Rather, the domain name resolved to a “Pay Per Click page” which showed “advertisements for blinds and curtains”, and the panelist subsequently found that it did “not give rise to rights or legitimate interests on the part of the respondent (see Ella’s Kitchen Group Ltd, Ella’s Kitchen (Brands) Ltd, Ella’s Kitchen (IP) Ltd v Nourish Foods Pty Ltd WIPO Case No DAU2011-0036).”140 However, this does not mean that in order for a respondent to satisfy the second criteria in Oki Data Americas Inc v ASD Inc, it must deal with only the complainant’s trade marked goods. This proposition finds support in GM Holden Ltd v Publishing Australia Pty Ltd141 where the panel held: Thus, it is clear that the respondent’s provision of the car-buying service is not limited to cars of the Holden brand. However, this fact alone does not violate the second requirement of Oki Data. That requirement is that the website to which

134 135 136 137 138 139 140 141

WIPO Case No DAU2011-0042 (5 March 2012). For example, see 3M Australia Pty Ltd and others v Phillip Brumby and others LEADR Case No auDRP07/07 (17 July 2007), p 7-8. WIPO Case No DAU2012-0011 (4 June 2012). Clark Equipment Co v R & R Equipment Pty Ltd WIPO Case No DAU2012-0011 (4 June 2012). WIPO Case No DAU2012-0009 (22 May 2012). WIPO Case No D2001-0903 (6 November 2001). Veneziano Coffee Pty Ltd v Rick Caspersen WIPO Case No DAU2012-0009 (22 May 2012). WIPO Case No DAU2011-0002 (7 March 2011).

133

134

Australian Domain Name Law

[5.160]

the domain name resolves offers only goods or services related to the relevant trademark. It is not a requirement that the respondent must not have any other website offering services in respect of other trademarks. Thus, so long as the website to which the disputed domain name resolves does not make any mention of another trademark, the second requirement of Oki Data will be satisfied.

Not only must the domain name resolve to a website dealing with the resale of only the complainant’s trade marked goods,142 but any reference to other websites (for example through hyperlinks) that offer other products which compete with the complainant’s products would not satisfy the second criteria in Oki Data Americas.143 It should be noted that even where a respondent resells a complainant’s goods via the disputed domain name, where the respondent is “intentionally misrepresenting himself as being in some way associated with the complainant, its trade marks and products (see for example, Russell Peters v George Koshy and Navigation Catalysit Systems Inc WIPO Case No D2009-0173)”, bona fide use of the disputed domain name cannot be inferred.144 Similarly, where the distribution agreement has terminated, and the respondent’s domain name is essentially identical to the complainant’s trade mark or name and includes no distinguishing feature(s), then it is arguable that there are no rights or legitimate interests – even in circumstances where the Oki Data Americas requirements might otherwise be satisfied.145 However, panels have frequently exercised restraint in applying the Oki Data Americas criteria. For instance, in relation to the second criteria, a panelist observed: In my opinion, it is not necessary that the disputed domain name be devoted entirely to the sale of the trade marked goods, provided that the sale of other goods or services is peripheral and provided that those goods or services were not competitive with the trade marked goods.146

With respect to the third criterion, a highly experienced three member panel observed: This panel is not convinced that the Oki Data criteria should be accepted verbatim as authoritative under the Policy, especially the requirement that there be disclosure of the registrant’s relationship with the trademark owner. Here the active websites to which the domain names led did not falsely suggest that the registrant is the trademark owner nor that the website is the official website of the trademark owner. This panel does not consider that, under these circumstances, any such disclosure is required in order to establish legitimacy.147

Accordingly, the requirement that the resolving website must accurately disclose the registrant’s relationship with the complainant/trade mark owner 142 143

144 145

146 147

For example, see SanDisk Corp v ITBOX Pty Ltd WIPO Case No DAU2006-0009 (10 January 2007). For example, see Giorgio Armani SpA v Essential Mall Pty Ltd WIPO Case No DAU2011-0011 (13 May 2011); Proxxon SA v Woodworking Machinery Specialists Pty Ltd WIPO Case No DAU2009-0017 (19 February 2010). PARROT v Binh An Nguyen, WIPO Case No DAU2011-0016 (24 August 2011). See FJ Westcott Co v Samuel Leo Klein / Image Melbourne Pty Ltd WIPO Case No DAU2014-0037 (7 February 2015). The Oki Data Americas requirements were found not to apply in this decision in any event. Aston Martin Lagonda Ltd v Frenbray Pty Ltd LEADR Case No auDRP09/06 (3 October 2006), p 9 [31]. Topfield Co Ltd v Jai Kemp and Digital Products Group Pty Ltd, t/as Topfield Australia, formerly Paige Communications Pty Ltd WIPO Case No DAU2008-0002 (21 April 2008).

[5.170]

5: Rights or Legitimate Interests in .au Domain Names

applies in cases where the trade mark is used in the resolving website in a manner which falsely suggests that a relationship exists. Further, in Google Inc v Q Interactive Pty Ltd / Mr Victor Quinteros,148 the panel rejected the respondent’s reliance on Oki Data Americas Inc v ASD Inc.149 In this decision, the panel found: The role of the respondent in this case is not one of reselling or distributing goods or services bearing the complainant’s trademark; rather, it is one of distributing goods or services (in this case, apps) that are interoperable with other goods or services (in this case, the Android platform) that bear the complainant’s trademark. In this panel’s view, the provision of a second product that interoperates with a first product is a scenario different from the reselling or distribution of a first product, and so the Oki Data principles are not the ones most appropriate to the circumstances of this case.

Cessation or Lack of Authorisation [5.170] In some instances, a complainant may have permitted the respondent to register and use a particular domain name during the pendency of a contractual relationship. However, the question arises whether the respondent continues to have any rights or legitimate interests over the use of the domain name once the contractual relationship ceases or breaks down. This is what happened in Sterling Marine Pty Ltd v The Trustee for the Costa Family Trust,150 where the complainant had a verbal agreement with the respondent to sell certain products between 2008 and 2010, but thereafter had no further dealings with the respondent.151 The respondent submitted that the complainant was aware and consented to the registration of the disputed domain name “cameroskiboat.com.au”, and also still maintained a close connection with the complainant’s brand “Camero” because the respondent continued to service and upgrade Camero boats and sell used Camero boats.152 However, the panel found that since 2010, the respondent no longer promoted the complainant’s product on behalf of the complainant.153 Further, although the respondent may have been providing services for Camero ski boats, it did not use the domain name to market that service but instead used that site to forward users to another website which advertised other brands.154 In the circumstance, the panel was not satisfied that the respondent made a bona fide use of the domain name in relation to the supply of goods or 148

149 150 151 152 153 154

WIPO Case No DAU2012-0026 (14 January 2013). The panel in Jaguar Land Rover Ltd v Techno International Pty Ltd WIPO Case No DAU2015-0027 (3 September 2015) also found that the Oki Data principles did not apply as the disputed domain name resolved to a website which had links to the complainant’s competitors. Further, the panel was not prepared to give the respondent “the benefit of any doubt” as they had not submitted a response. WIPO Case No D2001-0903 (6 November 2001). LEADR Case No auDRP02/13 (23 April 2013). Sterling Marine Pty Ltd v The Trustee for the Costa Family Trust LEADR Case No auDRP02/13 (23 April 2013), p 3 [5.1.2]. Sterling Marine Pty Ltd v The Trustee for the Costa Family Trust LEADR Case No auDRP02/13 (23 April 2013), p 4 [5.2.3]. Sterling Marine Pty Ltd v The Trustee for the Costa Family Trust LEADR Case No auDRP02/13 (23 April 2013), p 6 [6.5.2]. Sterling Marine Pty Ltd v The Trustee for the Costa Family Trust LEADR Case No auDRP02/13 (23 April 2013), p 6 [6.5.2].

135

136

Australian Domain Name Law

[5.170]

services.155 Similarly in AW Faber-Castell (Aust) Pty Ltd v Pen City Pty Ltd / Atf Diblasi Jones Unit Trust,156 although the complainant admitted that the respondent appeared to sell genuine products of the complainant, the respondent had not used the disputed domain name in connection with the sale of those products and the domain name resolved only to a parking page. In Cobb International Ltd v Cobb Australia & New Zealand (Pty) Ltd, 157 while the respondent was permitted to use the complainant’s trade mark, business name and was entitled to register and use the disputed domain name during the term of the distributorship agreement, such rights ceased once the distributorship agreement came to an end. The panel observed in this regard: While Halcyon would appear to have been using the disputed domain name legitimately when the Distribution Agreement was on foot, it now says it has sold off all remaining stock on hand so, at present, it would not appear to have any rights or legitimate interests in the disputed domain name.158

Another decision in which a respondent was not able to assert rights or legitimate interests in respect of a domain name was Terra Plana International Ltd v The Summer House Australia Pty Ltd/Tanya Greenwood,159 where a distributorship agreement between the parties failed. Following the “minimum requirements” criteria set out in Oki Data Americas Inc v ASD Inc,160 the panel held: There is no dispute that the respondent was an authorized retailer of the complainant’s “VIVOBAREFOOT” products. It began selling those products in 2009. The panel has been provided with comprehensive correspondence regarding the breakdown of the parties’ distribution arrangements. While the exact date is difficult to determine, the panel is of the view that there is no longer a business relationship between the parties. As the respondent has refused to sign Sole’s required terms and conditions, and Sole is the complainant’s only Australian distributor, it is fair to assume that the respondent will not be selling the complainant’s products in the future, and will not have rights or interests in the disputed domain names (see, for example, Green Tyre Company Plc v Shannon Group; and SPECS GmbH v SPECS Scientific Instruments Inc dba SPECS Technologies Corp).

In Freelife International Holdings LLC and Freelife International Australia Pty Ltd v Nick Nastevski dba Health Doctor,161 the respondent was granted a 155 156 157 158 159

160 161

Sterling Marine Pty Ltd v The Trustee for the Costa Family Trust LEADR Case No auDRP02/13 (23 April 2013), p 6 [6.5.3]. WIPO Case No DAU2013-0018 (15 August 2013). WIPO Case No DAU2013-0005 (23 April 2013). Cobb International Ltd v Cobb Australia & New Zealand (Pty) Ltd WIPO Case No DAU2013-0005 (23 April 2013). WIPO Case No DAU2012-0025 (22 November 2012). See also US Bank National Association as trustees for the First Alert Trust v Master Distributors Unit Trust, Bradley Green WIPO Case No DAU2011-0031 (24 November 2011); Custom Building Products Inc v Stone Age (NSW) Pty Ltd WIPO Case No DAU2011-0014 (11 July 2011); Ella’s Kitchen Group Ltd, Ella’s Kitchen (Brands) Ltd, Ella’s Kitchen (IP) Ltd v Nourish Foods Pty Ltd WIPO Case No DAU2011-0036 (21 December 2011); JMVB EnterprisesPty Ltd v Roxanne Melloway LEADR Case No auDRP16/10 (7 September 2010); Navico Australia Pty Ltd v Quin Marine Pty Ltd WIPO Case No DAU2009-0004 (14 July 2009); Tony & Monika Rahme v Paul & Sharyn White LEADR Case No auDRP06/09 (23 August 2009); Kristallglasfrabrik Spiegelau GmbH v Spiegelau Australia Pty Ltd LEADR Case No auDRP07/06 (30 August 2006). WIPO Case No D2001-0903 (6 November 2001). WIPO Case No DAU2012-0017 (30 July 2012).

[5.170]

5: Rights or Legitimate Interests in .au Domain Names

limited licence to use the complainants’ trade marks, although the licence prohibited the registration of domain names incorporating the marks. At the time the complaint was filed the licence had been revoked.162 In some instances there might be a doubt as to whether there in fact exists an enforceable agreement between the parties. Thus, in Jenna IP Holding Company LLC v Mobile Alive Pty Ltd,163 the respondent relied on an alleged licence to display certain content of the complainant on the website to which the disputed domain name resolved. The three member panel concluded that even if the respondent was so authorised, that alone was not sufficient to demonstrate rights or legitimate interests in the domain name “clubjenna.com.au”, which carries with it the false representation that it is the Australian domain name of the complainant. The right to display images does not provide any rights or legitimate interests in the domain name through which those images are displayed where the domain name incorporates the complainant’s trade mark. Where a respondent fails to establish a legitimate relationship between it and a complainant, evidence “that the website to which the disputed name resolved slavishly reproduced copyright material from the complainant’s website and carried legal notices and other attributions which import a direct but false claim that the respondent is formally affiliated with the complainant’s business” is sufficient to conclude that the respondent lacks rights or legitimate interests in relation to the disputed domain name.164 There might be other instances where the parties had entered into an agreement, but it was unclear whether it had come to an end due to a breach in the terms of the agreement by one of the parties. Thus, in Cash Converters Pty Ltd v Casheez Pty Ltd,165 the complainant contended that the respondent’s offering of goods and services was not bona fide because it occurred in breach of the restraint clause in the franchise agreement to which the respondent’s director and company secretary was a convenantor. The respondent denied this assertion. The three member panel observed: To resolve this issue the onus is clearly on the complainant and the standard of proof is on the balance of probabilities. That is so because the complainant has to prove that the respondent has no rights or legitimate interest in the disputed domain names. The evidentiary record in this case currently before the panel does not permit the panel to resolve the issue of whether or not the restraint clause has been breached. Furthermore, the procedure provided by the Policy does not, in this panel’s opinion, empower the panel to determine the issue of whether or not 162

163 164

165

Further, in Rainbow Sandals Inc v Malua Point Holdings Pty Ltd, Anthony Brown / Malua Point Holdings Pty Ltd aka Malua Point Merchants WIPO Case No DAU2013-0014 (7 July 2013), although the parties were negotiating a distributorship agreement, it never materialised. By subsequent email correspondence it was clear that the respondent was not authorised to register the complainant’s mark as a trade mark or as a domain name in Australia but it did so in any event. In the process of agreeing the assignment of the trade mark application to the complainant, the respondent omitted to mention to the complainant that it had also simultaneously registered the disputed domain name. Given the respondent’s demand for payment well beyond its out of pocket costs and that the respondent was not otherwise known by the disputed domain name, the panel found that the complainant had made out a prima facie case. Further, the respondent did not provide any evidence to rebut the complainant’s case. WIPO Case No DAU2006-0013 (7 February 2007). Beachbody LLC v Pan, Wei Hong WIPO Case No DAU2013-0020 (11 September 2013). See also Heavenly Holidays LLC v Mark One Visual Promotions Pty Ltd WIPO Case No DAU2013-0028 (29 October 2013). WIPO Case No DAU2011-0029 (30 November 2011).

137

138

Australian Domain Name Law

[5.170]

the restraint clause is valid and enforceable. As a consequence, this panel is not able to reach a finding that the respondent’s use of the disputed domain names in connection with its offering of goods and services was not bona fide.166

Similarly, there also might be instances where the exact terms and conditions of an alleged agreement between the parties are uncertain. This is particularly so where the agreement is not in writing. The decision of Luvilon Industries NV v Top Serve Tennis Pty Ltd167 demonstrates this point, where the panel observed: What is perfectly clear to this panel is that the complainant has fallen short of showing that the respondent has no rights or legitimate interests in the domain names. The evidence before the panel is that the respondent had perhaps an exclusive arrangement to sell the complainant’s goods in Australia without any control provisions regarding name usage or local goodwill and during which time the respondent apparently invested in developing other tennis products under the Luxilon name with the complainant’s collaboration. This arrangement appears never to have formalized in writing and lasted from 2001 or earlier until October 2004, when the complainant claims to have unilaterally terminated it.

Accordingly, given the complainant’s onus in establishing a prima facie case, the burden that a complainant would bear in establishing that an agreement between the complainant and the respondent had terminated owing to a contractual breach on the part of the respondent is perhaps greater than attempting to establish that the agreement had come to an end due to an expiration of time.

Rights or Legitimate Interests in the Disputed Domain in Criticism Sites Can a criticism site generate rights or legitimate interests in the disputed domain name?

[5.180] Paragraph 2.4 of the auDA auDRP Overview 1.0 states: The position is unknown. It appears that no auDRP case has yet addressed the issue of whether a respondent has rights or legitimate interests in a domain name that is used in relation to a website on which the owner of the corresponding trademark or name is criticised. In those cases where the respondent did raise such an argument, panels have not needed to address the issue, either because the respondent’s claim was contradicted by the evidence (showing that the respondent’s website was “not a genuine criticism site in any genuine sense at all and was not genuinely promoting the cause of free speech”) or because the respondent’s use was obviously commercial in nature (and thus the respondent could not satisfy the requirement in paragraph 4(c)(iii) requirement that the respondent’s use was “without intent for commercial gain”). In those cases where the facts suggest the respondent might have been able to raise the issue, panels have not been required to address it because the respondent was in default and did not raise the argument.168 166 167 168

Cash Converters Pty Ltd v Casheez Pty Ltd WIPO Case No DAU2011-0029 (30 November 2011). WIPO Case No DAU2005-0004 (6 September 2005). Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 16, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf.

[5.180]

5: Rights or Legitimate Interests in .au Domain Names

The auDA auDRP Overview 1.0 cites Google Inc v Dmitri Rytsk169 and Skycity Adelaide Pty Ltd v Trellian Pty Ltd170 as relevant decisions on this issue, which are both considered further below. The author of the auDA auDRP Overview 1.0, Professor Andrew Christie, has made the following observations in a recent decision which discusses this issue: Miltenyi Biotec GmbH v Rachel A Liu-Williams:171 At the date of this decision, it appears that there is no consensus view (indeed, no view) of auDRP panels on the issue of whether use of a domain name to resolve to a genuine criticism site gives rise to rights or legitimate interests in the domain name. In a situation where there is no consensus view of panels under the auDRP, it makes great sense to consider the consensus views of panels under the domain name dispute resolution policy on which the auDRP is based – namely, the Uniform Domain Name Dispute Resolution Policy (“UDRP”). There have been numerous decisions of uDRP panels addressing use of the disputed domain name to resolve to a criticism site. According to the paragraph 2.4 of the WIPO Overview of WIPO Panel Views on Selected uDRP Questions, Second Edition (“WIPO Overview 2.0”), there are two main views: (i) the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant’s trademark, especially when the domain name consists solely of the trademark (that is, trademark.tld); and (ii) irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial (this being a view generally adopted only in cases involving parties solely from the United States of America (“US”) or the selection of a US mutual jurisdiction). The panel recognizes that the personal and public values that support an entitlement to speak freely (“free speech”) are found, in varying degrees, in most countries. Without a doubt, an entitlement to free speech exists in, and is highly valued by citizens and residents of, Australia. In the panel’s opinion, resolution of a perceived conflict between an entitlement to free speech and an entitlement to a domain name registered in a ccTLD is one of the (perhaps few) instances in which considerations specific to the relevant nation state should be taken into account in making decisions under the Policy. Thus, the panel has given careful consideration to the respondent’s contention that she has a right or legitimate interest in the disputed domain name by virtue of using it to resolve to a website at which she ventilates her criticisms of the complainant. Having given careful consideration to the matter, the panel concludes that, under the auDRP, use of a domain name that consists solely of the complainant’s trademark (that is, trademark.2LD.au) for the purposes of engaging in criticism of the complainant does not, of itself, give rise to rights or legitimate interests in the domain name. The reason for this conclusion is that, as was said in Monty and Pat Roberts Inc v Bill Keith, “the right to express one’s views is not the same as the right to use another’s name to identify one’s self as the source of those views”. While it is true, as the respondent says, that it is unlikely that a visitor to the website to which the disputed domain name resolves would think that it is a website belonging to the complainant once the content has been read, the fact is that prior to landing at the website a visitor may not know that it is not a website belonging to the complainant. Indeed, the fact that the disputed domain name 169 170 171

WIPO Case No DAU2007-0004 (8 August 2007). IAMA Case No 3353 (24 October 2009), p 4. WIPO Case No DAU 2015-0033 (28 October 2015).

139

140

Australian Domain Name Law

[5.180]

consists solely of the complainant’s trademark would lead a potential visitor to the website to think otherwise. This use of the complainant’s trademark is not, therefore, a legitimate use.

Rights or Legitimate Interests in the Disputed Domain in Fan Sites Can a fan site generate rights or legitimate interests in the disputed domain name?

[5.190] On this issue paragraph 2.5 of the auDA auDRP Overview 1.0 states: The position is unknown. It appears that no auDRP case has yet addressed the issue of whether a respondent has rights or legitimate interests in a domain name that is used in relation to a website on which the owner of the corresponding trademark or name is celebrated or discussed. In those cases where the respondent did raise such an argument, panels have not needed to address the issue, either because the respondent provided no evidence to support its assertion of intended use as a fan site, or because the respondent’s use of the domain name was obviously commercial in nature (and thus the respondent could not satisfy the requirement in paragraph 4(c)(iii) requirement that the respondent’s use was “without intent for commercial gain”).172

This was found by the panelist in Tina Arena v Enigmatic Minds Pty Ltd173 with respect to the disputed domain name, tinaarena.com.au, claimed by the celebrity Tina Arena. The auDA auDRP Overview 1.0 also cites Arena Entertainment Pty Ltd v Alex Haddad174 and Australian Government Department of Education, Science and Training v Blogger Pty Ltd175 as relevant decisions on this issue.

Rights or Legitimate Interests in Parking and Landing Pages or Pay-Per-Click Links Do parking and landing pages or pay-per-click (PPC) links generate rights or legitimate interests in the disputed domain name?

[5.200] Paragraph 2.6 of the auDA auDRP Overview 1.0 states: The general position is somewhat different from that under the uDRP. Use of a domain name to resolve to parking or landing pages, or to generate revenue through pay-per-click (PPC) links advertising, is generally not considered a bona fide offering of goods or services under the auDRP.176

Finding for the complainant in Stardoll AB v Domain Folio 1 Pty Ltd177 the panelist found: 172

173 174 175 176

177

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 16-17, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. LEADR Case No auDRP01/07 (17 March 2007), p 15-18. LEADR Case No auDRP05/05 (27 June 2005). IAMA Case No 3058 (2 June 2007). Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 17, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2011-0038 (23 January 2012).

[5.210]

5: Rights or Legitimate Interests in .au Domain Names

There is reasonable presumption that the respondent receives pay-per-click payments for access by the disputed domain name to third party websites several of which are in direct competition with the complainant. That use is not a bona fide use of the disputed domain name in connection with the supply of goods or services.

The auDA auDRP Overview 1.0 also cites the following as relevant authorities on this issue: Australian Government Department of Education, Science and Training v Blogger Pty Ltd;178 Insure & Go Insurance Services Ltd v CoverDirect Pty Ltd;179 Freelife International Holdings LLC and Freelife International Australia Pty Ltd v Nick Nastevski dba Health Doctor;180 and CruiseMart Pty Ltd v Debretts Travel Services.181

Domain Parking and Monetisation: Whether there is Bona fide Use? [5.210] Domain parking is the registration of an internet domain name without using it for the supply of goods or services, and is often evidenced by the lack of any content on the domain. This may be done to reserve the domain name for future development (which if proven might give rise to a right or a legitimate interest on the part of a respondent), to protect against the possibility of cybersquatting, or to engage in cybersquatting. Mr Jean Heitz v Truly Natural Products Pty Ltd / Mr Cordeiro182 is a good example of a case where the respondent registered the disputed domain name to protect against the possibility of cybersquatting. The disputed domain name in this decision did not resolve to an active website. The respondent claimed that it would be happy to transfer the domain name to the complainant, and that it had registered the domain name in good faith as it was a seller of the complainant’s products in Australia. However, the panel found for the complainant in this decision because of the respondent’s subsequent failure to transfer the disputed domain name to the complainant.183 Similarly, in Just Car Insurance Agency Pty Ltd v Throne Ventures Pty Ltd184 the panel held: The content of the respondent’s website at the disputed domain name does not reflect a bona fide offering of goods or services. The disputed domain name is being used for a pay-per-click (“PPC”) parking page at which advertisements are used to divert customers to, amongst other things, third-party insurance sites. The first webpage at the disputed domain name contains links to various types of insurance similar to those promoted by the complainant under the Trade Marks. It is well established that PPC parking pages built around a trade mark do not constitute a bona fide offering of goods or services (see for example Ustream.TV Inc v Vertical Axis Inc; mVisible Technologies Inc v Navagation Catalyst Systems Inc and Asian World of Martial Arts Inc v Texas International Property Associates). The links on the respondent’s website, particularly on the initial webpage, are clearly based on the trade mark value of the disputed domain name – they are focused on promoting insurance products of the same type sold by the complainant under the Trade Marks. 178 179 180 181 182 183 184

IAMA Case No 3058 (2 June 2007). WIPO Case No DAU2008-0019 (15 December 2008). WIPO Case No DAU2012-0017 (30 July 2012). LEADR Case No auDRP06/12 (5 July 2012). WIPO Case No DAU2011-0017 (6 September 2011). See also MapQuest.com Inc v William Scully Power and MapQuest Australia WIPO Case No DAU2006-0016 (19 March 2007). WIPO Case No DAU2008-0015 (24 September 2008).

141

142

Australian Domain Name Law

[5.210]

With respect to the issue of whether or not a respondent has a legitimate interest to a domain name, the status or activity level of the domain name’s website is of relevant consideration. Where the disputed domain name is merely parked without being associated with any form of web content, along with evidence of a lack of authorisation on the part of the respondent to use the trade mark associated with the domain name, or lack of evidence that the respondent was commonly known by the disputed domain name, is often sufficient enough evidence for a finding that the respondent lacked legitimate interest in using the disputed domain name.185 On the other hand, where a respondent is able to provide some evidence showing demonstrable preparations to use the website in connection with the goods and services – even if the design and development of the website is clearly incomplete, panels have been prepared to make a finding that the respondent has a right or legitimate interest in the disputed domain name.186 However, where a respondent intentionally inserts into the resolving webpage the words that are incorporated in the disputed domain name, the bona fide nature of the respondent’s conduct becomes questionable. Thus, in Asos PIc v Ceravolo Premium Wines Pty Ltd,187 where the disputed domain name was “asos.com.au”, changes made to the resolving website to expressly refer to “ASOS Olive Oil”, alluding to the fact that the respondent was either engaging in or intending to engage in the business of supplying olive oil, were made on a date after the complaint pertaining to the disputed domain name was filed. Thus, in the absence of any evidence that ASOS Olive Oil is available for sale or has been sold made it difficult for the learned three member panel to conclude that there has been bona fide use of the disputed domain name in connection with an offering of goods such that paragraph 4(c)(i) of the auDRP could apply. A decision which considered the issue of a domain name being parked is HCOA Pty Ltd Molescan Australia Pty Ltd v The Trustee for the Terantica Trust / Terry Lockitch,188 where the panel found: The evidence provided by the complainants shows that the disputed domain name is being “parked”. According to the present record, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate non-commercial or fair use.189

Accordingly, where a domain is simply parked (and sometimes only providing links to other commercial websites) without being put into any legitimate use, this would be sufficient evidence for a panel to infer a respondent’s lack of bona fide use of the domain name in relation to the supply of goods or services.190 In 185

186

187 188 189 190

For example, see Momondo A/S v Green Eye Evolvement Pty Ltd WIPO Case No DAU2013-0035 (13 January 2014); Facebook Inc v Callverse Pty Ltd WIPO Case No DAU2008-0007 (4 June 2008). For example, see Constable Care Child Safety Foundation Inc v The Big Bamboo Production Co Pty Ltd WIPO Case No DAU2013-0001 (8 March 2013), where the respondent’s website was incomplete and simply featured a labeled picture of “Constable Care” and a speech bubble stating “THINK SAFETY”. In General Television Pty Ltd v Laszlo Till LEADR Case No auDRP08/09 (15 October 2009), p 5 [7.11], [7.13], the three member panel was prepared to accept that the respondent had a right or legitimate interest in the disputed domain name based only on draft project plans for the not yet created or operational website. WIPO Case No DAU2012-0016 (19 September 2012). WIPO Case No DAU2013-0003 (18 April 2013). HCOA Pty Ltd, Molescan Australia Pty Ltd v The Trustee for the Terantica Trust / Terry Lockitch WIPO Case No DAU2013-0003 (18 April 2013). For example, see Taser International Inc v Tasty Pty Ltd / David Serrano WIPO Case No

[5.210]

5: Rights or Legitimate Interests in .au Domain Names

the same decision the panel acknowledged that a domain name could be used legitimately as a monetised website which would generate pay-per-click revenue (although in this scenario the website itself would not offer any actual goods or services, its only purpose would be to refer users to the advertised links on the website), but pointed out: Schedule C of the .auDA Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (the “.auDA Eligibility Rules”) states: “A domain name may … be registered in the com.au 2LD … for the purpose of domain monetization … provided that the following conditions are met: … the domain name must not be, or incorporate, an entity name, personal name or brand name in existence at the time the domain name was registered”. As discussed above, the disputed domain name contains the textual component of trademarks registered by the first complainant prior to the respondent’s registration of the disputed domain name. This panel finds the respondent’s intended use of the disputed domain name is not one permitted by the .auDA Eligibility Rules. It follows that the respondent cannot have rights or legitimate interests in the disputed domain name founded on this intended use.191

Similarly, in L’Oréal / L’Oréal Australia Pty v Namewise Pty Ltd / Nicholas Bolton,192 the disputed domain name took online users to a website which displayed generic illustrations of different categories of cosmetic products underneath a menu bar that included the words “Loreal”, “Loreal Cosmetics” and “Loreal Shampoo”, all of which comprised the complainant’s well-known trade mark. The panel found through its own research that by clicking on the illustrations, users would then be redirected to a list of links offering competitive commercial products – often with no relationship (for example, dog care and television sets) to the products illustrated. This was a clear case of a domain name not being put to legitimate use by the respondent. While using websites for pay-per-click advertising is permitted, the panel observed: It has been previously held that “pay-per-click” or “click-through” links do not constitute a bona fide offering of goods or services. See Freelife International Holdings, LLC and Freelife International Australia Pty Ltd v Nick Nastevski dba Health Doctor (finding that “pay-per-click advertising links to third party sites that promote products, services and companies some of which are in competition with the complainant’s … is not a bona fide offering of goods or services”).

Relatedly, where a disputed domain name resolves directly to a website controlled and operated by one of the complainant’s competitors, offering identical or similar services to that of the complainant, there would be an inference that the domain name is not used for a bona fide commercial purpose.193 Moreover, where it is shown that a respondent had several other

191 192 193

DAU2013-0013 (26 June 2013); TeamViewer GmbH v Nigel Burke WIPO Case No DAU2012-0027 (19 December 2012); QSoft Consulting Ltd v BSP WIPO Case No DAU2009-0003 (1 July 2009); Insure & Go Insurance Services Ltd v CoverDirect Pty Ltd WIPO Case No DAU2008-0019 (15 December 2008); Perpetual Ltd v Perpetual Financial Solutions Pty Ltd LEADR Case No auDRP11/08 (6 February 2009); Australian Broadcasting Corp v Mark Ross-Smith LEADR Case No auDRP-04/07 (5 July 2007); Housing Industry Association Ltd v Housing Internet Access LEADR Case No auDRP12/05 (28 November 2005). HCOA Pty Ltd, Molescan Australia Pty Ltd v The Trustee for the Terantica Trust / Terry Lockitch WIPO Case No DAU2013-0003 (18 April 2013). L’Oréal / L’Oréal Australia Pty v Namewise Pty Ltd / Nicholas Bolton WIPO Case No DAU2013-0009 (23 May 2013). For example, see AOT Group Ltd v Park Ward House Pty Ltd / Geoffrey Ballard WIPO Case No DAU2011-0018 (23 August 2011).

143

144

Australian Domain Name Law

[5.210]

domain names registered and actively put into use in connection to its business, this would increase the likelihood that the respondent was not putting the disputed domain name for bona fide use, unless the respondent is capable of producing sufficient evidence of that fact.194 Any actual or intended use of a domain name for a company’s internal purposes would not suffice to demonstrate bona fide offering of goods or services via a website associated with the domain name. In this regard, a panel held:195 the respondent’s language is consistent with the complainant’s contention that the domain name has not been used: “… the webpage will not be directly linked to the respondent for security reasons. It will be utilised for interoffice use and will allow the respondent’s field agents to upload confidential and sensitive material. Only staff and field agents will have access to this page via secure password”. There is no evidence before the panel that the respondent has used the domain name in connection with an offering of goods or services or at all, nor any evidence of preparations to use the domain name.196

Rights or Legitimate Interests in Trade Marks Does a respondent trade mark corresponding to a disputed domain name automatically generate rights or legitimate interests?

[5.220] On this issue paragraph 2.7 of the auDA auDRP Overview 1.0 provides: The general position is the same as that under the uDRP. auDRP panels have tended to recognise that a respondent’s registration of a trademark corresponding to the disputed domain name will normally, but does not necessarily, establish that the respondent has rights or legitimate interests in that domain name. A key issue is whether the respondent’s trademark registration is bona fide. Where the respondent has chosen its trademark without seeking to create confusion with the complainant’s website, products or customers, the existence of its trademark will very likely mean the respondent has rights or legitimate interests in a domain name that corresponds to that trademark. However, where the overall circumstances indicate that the respondent’s acquisition of a trademark was not bona fide – for example, where it was obtained primarily to circumvent the application of the auDRP – panels have generally declined to find that the respondent has rights or legitimate interests in the corresponding domain name.197

The following are cited by the auDA auDRP Overview 1.0 to be relevant decisions on this issue: PayBurst Financial Technologies and Gregory Fx 194 195 196

197

Crosby Furnishings Pty Ltd v Diablo-Group Pty Ltd WIPO Case No DAU2011-0013 (14 July 2011). Red Bull Gmbh v Callaghan & Callaghan LEADR Case No auDRP06/11 (9 June 2011). Red Bull Gmbh v Callaghan & Callaghan LEADR Case No auDRP06/11 (9 June 2011), p 5. See also Research in Motion Ltd v TechWorks Pty Ltd WIPO Case No DAU2013-0016 (24 July 2013) (where the disputed domain name resolved to a security window which required a login username and password); Tumblr Inc v Chris Dutton / The trustee for Bean Media Group Trust WIPO Case No DAU2013-0017 (30 July 2013) (where the disputed domain name resolved to an index page with very little content). Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 17, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf.

[5.230]

5: Rights or Legitimate Interests in .au Domain Names

Iannacci v Virgin Blue Airlines Pty Ltd,198 American Future Technology Corp v Rex Hall;199 and Find Marketing Pty Ltd v Troy Holland and Taryn Green.200 How panels have interpreted the issue of rights or legitimate interests in trade marks will be considered in further detail below.

Descriptive Names and Marks [5.230] Merely because the complainant’s name or mark is descriptive does not mean that a respondent, by that fact alone, has a right or legitimate interest to use that name or mark in a domain name. This is because, by virtue of a name or mark being descriptive, no single person (be it a complainant or a respondent) without more would acquire any right or legitimate interest to use it,201 unless, for example, it could be shown that the name or mark has acquired secondary meaning or it describes the activities of an entity using such descriptive name or mark for the purpose of a domain name. Thus, the respondent’s argument that the complainant’s rights in its mark “BRILLIANCE AUDIO” was restricted to “BRILLIANCE” only because the word “audio” was descriptive was irrelevant to the three member panel finding that the respondent had no rights or legitimate interests to the disputed domain name “brillianceaudio.com.au”.202 In contrast, where the disputed domain name is made up of purely generic and/or descriptive terms – such as “productreviews.com.au”, which appropriately describe the activities to which the domain name relates (in this case the review of products), such fact is relevant in determining if the respondent has a right or legitimate interest in using the domain name.203 Where the complainant has registered a descriptive trade mark or uses a descriptive name, there is a reasonable case for a respondent to demonstrate rights or legitimate interests in using a domain name comprising such descriptive terms provided that the respondent’s conduct is bona fide.204 Although there is usually a rebuttable presumption that a 198 199 200 201

202 203

204

WIPO Case No DAU2006-0001 (16 March 2006). WIPO Case No DAU2009-0007 (6 October 2009). LEADR Case No auDRP09/11 (22 July 2011), p 4, [6.12] – [6.16]. See Messages on Hold Australia Pty Ltd v Media Group Pty Ltd LEADR Case No auDRP01/13 (16 April 2013), p 7 [5.3], where the panel held: “the respondent’s argument that it has legitimate interests in respect of the domain name appears to rely on the ‘descriptive term’ argument which, if accepted, could mean that neither the complainant nor the respondent had legitimate interests in the disputed names.” Brilliance Publishing Inc v My Brilliance Pty Ltd / Ceinwen Schneider WIPO Case No DAU2013-0007 (28 May 2013). See Productreview.com.au Pty Ltd v Jobsearch Business Systems Pty Ltd IAMA Case No 3763 (18 June 2013), p 11 [18], where the three member panel found that the respondent was using the domain name for a bona fide offering of goods and services. See also Andrea Chick (nee Carr) v Countrynet Software Pty Ltd ABN 53 054 880 312 LEADR Case No auDRP05/15 (16 July 2015), p 8 [5.9], where the panelist found that the respondent had rights and legitimate interests in the domain names comprising generic words “schoolinterview.com.au” and “schoolinterview.net.au”. See Clinic Care Pty Ltd v Emma Redgate Payne (also known as Emma Johnson) WIPO Case No DAU2011-0027 (15 December 2011) where the panel held: “Importantly, the Panel accepts that the term ‘dermaroller’, and similar variations, is descriptive and is descriptive of the product offered by the respondent via the website resolving from the disputed domain name. While the term ‘Dermaroller’ is a registered trade mark in which the complainant and / or others have rights, possession of such trade mark rights do not necessarily prohibit a panel from finding that a respondent has a legitimate interest in a disputed domain name containing the relevant term where it is also descriptive. There is nothing to indicate that the respondent is using the disputed domain name to trade off, and benefit from, the trade mark

145

146

Australian Domain Name Law

[5.230]

successful trade mark registration implies that the mark is distinctive.205 In Find Marketing Pty Ltd v Troy Holland and Taryn Green,206 notwithstanding the complainant’s Australian registered trade mark “FIND”, the panel found that the respondent’s registration and use of the domain name “find.com.au” was legitimate as the relevant term is a generic, common English word which describes the respondent’s bona fide activities. Similarly, in Hutchinson Wines v Amphora Wine Group Pty Ltd, William Howard,207 the complainant had a registered United States trade mark “Amphora” and was also operating under the domain name “amphorawines.com” to offer wines for sale over the internet. However, the respondent had been operating as the Amphora Wine Group Pty Ltd since 2008 and had developed a business with a turn-over of approximately AUD 3.2 million involving sales in Australia, China, Hong Kong, New Zealand and Tonga. It was in evidence that the name of the business was chosen “in the course of a round table discussion of staff”. The panel found for the respondent and held that the term “amphora” is a generic word which refers to an ancient form of vessel used to store and transport wine. Moreover, the respondent had demonstrated that it had been operating a significant business for around three years under the name Amphora Wine Group Pty Ltd, and it had satisfied the panel that its choice of business name was based on the generic meaning of the term “amphora” – and it was not intended as a reference to the complainant or its activities.208 In Yaffa Publishing Group Pty Ltd v Australian Panorama Photography,209 the panel found that the complainant failed to establish its common law trade mark rights in the name “Australian Photography”, and held that the disputed domain name “australianphotography.com.au” was used for the bona fide supply of photography services in Australia. The panel also considered that the respondent had a legitimate interest in the use of the term “Australian Photography”, which consists of geographical term and is descriptive of the services because the respondent has provided photography services in Australia. Similarly, the panel in Environics Pty Ltd v Connectus Pty Ltd210 found that a domain name comprising the common English word “engineer” would give rise to rights or legitimate interests on the part of the domain name registrant. In Emirates, Emirates Group v Bluecom Consulting Group Pty Ltd,211 the panel found that the respondent’s use of the “emirates.com.au” domain name, which provided information about the Emirates region, was legitimate due to

205

206 207 208 209 210 211

value of the term ‘dermaroller’. The Panel finds that the respondent is merely using the disputed domain name for its descriptive nature.” See also the following three member panel decisions: Colmar Brunton Pty Ltd v Alta Computer Systems Pty Ltd LEADR Case No auDRP18/10 (16 December 2010), p 7-8; The Crown in Right of the State of Tasmania t/as “Tourism Tasmania” v Gordon James Craven WIPO Case No DAU2003-0001 (16 April 2003); Jupitermedia Corp and Australia.Internet.com Pty Ltd v Spotpress Pty Ltd t/as Internet Printing WIPO Case No DAU2003-0005 (17 February 2004). See Cognito Software Ltd v Rethink IT Pty Ltd WIPO Case No DAU2009-0011 (19 January 2010) citing EAuto LLC v Triple S. Auto Parts dba Kung Fu Yea Enterprises Inc WIPO Case No D2000-0047 (24 March 2000) and Scholastic Inc v Applied Software Solutions Inc WIPO Case No D2000-1629 (15 March 2001). LEADR Case No auDRP09/11 (22 July 2011), p 4, [6.12] – [6.16]. WIPO Case No DAU2011-0008 (21 April 2011). See also Asset Housing Pty Ltd v Kitome Pty Ltd CIArb 06/01 (27 April 2006). LEADR Case No auDRP19/10 (6 January 2011), p 7, [5.2.2]. Environics Pty Ltd v Connectus Pty Ltd LEADR Case No auDRP 03/09 (9 June 2009). Emirates, Emirates Group v Bluecom Consulting Group Pty Ltd WIPO Case No DAU2008-0004 (18 April 2008).

[5.240]

5: Rights or Legitimate Interests in .au Domain Names

the descriptive fashion in which the mark was used in relation to the respondent’s domain name and resolving website.212 Where a complainant’s mark is descriptive, the possibility of another party establishing rights or legitimate interests in the domain name comprising the descriptive mark would seem to be fairly high. To illustrate, despite the unusual juxtaposition of two descriptive terms, “Architecture” and “CAD” (acronym for “computer assisted design”) in the complainant’s mark “ArchiCAD”, the panel found that “ArchiCAD” was descriptive, and the respondent’s had rights or legitimate interests in the disputed domain name “archicad.com.au”.213 On the issue of generic words, the panel finding for the respondent in TrueLocal Inc, Geosign Technologies Inc and True Local Ltd v News Interactive Pty Ltd214 observed: the complainant’s rights are not strong, given the generic nature of its business name, and the lack of strong evidence of its trademark rights other than its registered rights in the Benelux. It does not have registered rights in Australia, nor even in the USA or Canada where its business appears to be principally directed. However, even if the respondent was aware of the website and business of the complainant, that by itself does not demonstrate that the respondent has no rights or legitimate interests in the disputed domain name. In this case, it is important that the disputed domain name is comprised of generic words. Prior panel decisions have found that, if a respondent is using a generic word to describe its product/business or to profit from the generic value of the word without intending to take advantage of the complainant’s rights in that word, then it has a legitimate interest. (See item 2.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions and the cases cited there.) In other words, it is not a general knowledge of the complainant’s business that is important. It is knowledge of “the complainant’s rights in that word” (emphasis added). As the panel found above, the complainant’s rights in the words “TrueLocal” can only clearly be based on Benelux registrations for the mark TRUELOCAL and TRUELOCAL.COM. Those marks were registered on April 5, 2006, one week before submission of the complaint.

Descriptive Fair Use [5.240] In the interesting decision Google Inc v Q Interactive Pty Ltd /

Mr Victor Quinteros,215 the panel discussed the situation where a respondent is offering for sale goods or services which are interoperable with other goods or services which display the complainant’s trade mark (referred to by the panelist as the “interoperability situation”) the respondent has a legitimate interest in describing its goods or services accurately, and that this legitimate interest will extend to the use of a domain name which contains the complainant’s trade mark as long as that use is descriptive and fair (referred to by the panelist as “descriptive fair use”). The panel was of the view that “a descriptive fair use in the interoperability situation falls within the circumstances specified in paragraph 4(c)(iii) of the Policy as demonstrating the respondent’s rights or 212

213 214 215

See also Dorset Council v Damian von Samorzewski LEADR Case No auDRP 04/15 (15 June 2015), p 10, [14.8] – [14.9], where the panelist found similarities in the circumstances with those in Emirates, Emirates Group v Bluecom Consulting Group Pty Ltd WIPO Case No DAU2008-0004 (18 April 2008). Graphisoft Australia v CAD Australia Pty Ltd CIArb Case No 05/01 (23 August 2005), p 6-7, [7.2.1] – [7.2.3]. WIPO Case No DAU2006-0003 (29 May 2006). WIPO Case No DAU2012-0026 (14 January 2013).

147

148

Australian Domain Name Law

[5.240]

legitimate interests in the domain name – namely, the circumstances of the respondent making a ‘fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish’ the complainant’s trademark.” According to the panel, a descriptive fair use analysis requires consideration of two issues: firstly, whether the respondent’s use of the domain name is “descriptive”?; and secondly, if so, was it “fair”? In relation to the first issue, the panel noted: the question raised by the first issue is not whether the domain name as a whole is being used descriptively, but whether a complainant’s trademark within the domain name is being used descriptively. More specifically, the correct question is whether a respondent is using descriptively that part of the domain name that is identical with or confusingly similar to a complainant’s trademark (referred to hereafter as “the trademark part” of the domain name).

In relation to the second issue of fairness, the panel observed: One instance in which a respondent’s descriptive use of the domain name will not be fair is where it is undertaken with “intent for commercial gain to misleadingly divert consumers or to tarnish” a complainant’s trademark (this being a requirement of paragraph 4(c)(iii) of the Policy). No doubt there can be other instances in which a particular use, though descriptive, is nevertheless not a fair use, and so does not give rise to a respondent having a right or legitimate interest in the domain name.

A complainant’s success in a trade mark infringement or passing off action is a good indication that the respondent lacks rights or legitimate interests on the part of the disputed domain name comprising the trade mark which was the subject of the infringement or passing off action. Thus, where a complaint might fail for the first time, a subsequent complaint, pursuant to a successful trade mark infringement or passing off suit might be successful.216

Rights or Legitimate Interests in Trade Mark Applications Does a respondent trade mark application corresponding to a disputed domain name automatically generate rights or legitimate interests?

[5.250] Paragraph 2.7A of the auDA auDRP Overview 1.0 states: The general position is the same as that under the uDRP. auDRP panels have found that an application by the respondent to register a trademark does not, of itself, automatically generate rights or legitimate interests in a corresponding domain name. The reason is that, although the rights to a trademark registration, once granted, run from the date of the application, a pending application does not confer any enforceable legal rights. However, where the respondent has undertaken other relevant activities in relation to the applied-for trademark, the totality of the respondent’s activities may be sufficient

216

Curtain Communications Pty Ltd v Leann Webb WIPO Case No DAU2008-0022 (16 February 2009): “The Panel does not, however, preclude the possibility that certain matters raised in the complaint may warrant subsequent re-examination by an administrative panel in the event that the complainant was to prove successful in a trademark or passing-off dispute with the respondent, and to subsequently seek leave to re-file a complaint under the Policy on that basis.”

[5.250]

5: Rights or Legitimate Interests in .au Domain Names

for a panel to find either that the respondent has, or that the complainant has failed to prove that the respondent does not have, rights or legitimate interests in the corresponding domain name.217

The auDA auDRP Overview 1.0 cites the following as relevant decisions on this issue: Zillow Inc v Felix-Hoffman Anne-Simone;218 Curtain Communications Pty Ltd v Leann Webb;219 and Vitacost.com Inc v Ronald Lee Bradley.220 As stated above, the fact that a respondent had applied to register a mark in Australia that corresponds to the disputed domain name does not in itself grant the respondent a right in the domain name. In this regard, the panel in Marshmallow Skins Inc v Piipiinoo Australia Pty Ltd221 observed: The application to register a mark does not in itself grant a party rights in a domain name. However, an application can be taken as an indication that a respondent does have rights and legitimate interests in the domain names, if supported by evidence of the fact that the application is based on the offering of, or the making of demonstrable preparations to offer, goods and services under the trade mark. The WIPO Overview 2.0, paragraph 2.7 says in relation to whether the respondent holding a trade mark corresponding to a disputed domain name automatically generates rights or legitimate interests, that “Panels have tended to recognize that a respondent’s registration of a trademark which corresponds to a disputed domain name normally will, but does not necessarily, establish respondent rights or legitimate interests in that domain name for the purpose of the second element of the uDRP. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the uDRP.”

In any case, a mere application for trade mark registration does not guarantee the applicant any trade mark rights at the application stage, and therefore, unless common law rights in the indicia sought to be registered could be established by a respondent, it is unlikely that a mere application would suffice to establish rights or legitimate interests under this head.222 In his dissenting opinion, the experienced panelist Philip N Argy made the following observations in relation to the relevance of applications for trade mark registration for the determination of legitimate interests: Whilst I agree in substance with my colleagues’ views in relation to the first and third limbs of the Policy, I have not been able to conclude that the respondent has “no rights” in respect of the disputed domain names. The respondent has not just a pending trade mark application in Australia for MISSGUIDED in the class relevant to the novelty products he claims to sell through his website, but that application has been formally assessed and accepted by the Registrar of Trade Marks. In other words, it has been found to be eligible for registration and barring 217

218 219 220 221 222

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 17-18, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2006-0015 (1 March 2007). WIPO Case No DAU2008-0022 (16 February 2009). WIPO Case No DAU2012-0003 (2 April 2012). Marshmallow Skins Inc v Piipiinoo Australia Pty Ltd WIPO Case No DAU2013-0015 (24 June 2013). Vitacost.com Inc v Ronald Lee Bradley WIPO Case No DAU2012-0003 (2 April 2012), citing Prom Night Events v YourFormal Pty Ltd / Your Formal Australia Pty Ltd WIPO Case No D2011-1707 (16 December 2011).

149

150

Australian Domain Name Law

[5.250]

a successful opposition, it will proceed to registration. An opposition has been filed by the complainants but the evidence in support of that opposition was not filed by the due date and remains outstanding. In my view, as a matter of plain English, as at the date of filing of the complaint, the respondent “has rights and legitimate interests” in respect of the disputed domain names based on his accepted Australian trade mark application.223

Of course, if the application for trade mark registration was made after the notice of the dispute, the respondent’s claim for a right or legitimate interest in the disputed domain name becomes far more tenuous.224

Rights or Legitimate Interests in Registration of a Business Name or Company Name Does a respondent’s registration of a business name or a company name corresponding to a disputed domain name automatically generate rights or legitimate interests?

[5.260] On this question, paragraph 2.7B of the auDA auDRP Overview 1.0 states: The issue does not arise under the uDRP. The fact that a respondent has registered a business name or a company name does not, of itself, establish that the respondent has rights or legitimate interests in the domain name that corresponds to the business name or the company name. The reason for this is that the registration of a business name or company name does not provide proprietary rights in the name. The registration of a business name is a legislative requirement that needs to be satisfied where an entity trades under a name that is not its own personal name or company name. The registration of a company name is a legislative requirement that needs to be satisfied where an entity is incorporated. The critical issue appears to be whether the respondent has traded under the business name or company name in good faith. The respondent will generally be able to establish that it has rights or legitimate interests in a domain name that corresponds to its registered business name or company name where it has actually traded, or intends to trade, under that name. Where, however, the trading under the business name or company name, or the purpose of the business name or company name registration, is not bona fide, neither trade under the name nor the fact of registration of the name will be sufficient to establish that the respondent has rights or legitimate interests in the corresponding domain name.225

As the panel in Just Magazines Pty Ltd v Australian Just Bikes of the Northern Rivers226 held: “The registration of a business name, without more, does not confer rights upon the registrant.” Similarly, the panelist in Mass Nutrition Inc and Todd Rosenfeld v Mass Nutrition Pty Ltd now known as Tweed Holdings Pty Ltd, Luke McNally227 held: “Registration of a corporate name does not confer rights in the name which would override accrued registered or common law rights.” 223 224 225

226 227

Debbie Morgan Macao Commercial Offshore Ltd, Missguided Ltd v Samir Vora WIPO Case No DAU2013-0024 (30 October 2013). Vitacost.com Inc v Ronald Lee Bradley WIPO Case No DAU2012-0003 (2 April 2012). Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 18, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. LEADR Case No auDRP06/08 (21 November 2008) p 5, [8.5]. WIPO Case No DAU2010-0002 (15 March 2010).

[5.270]

5: Rights or Legitimate Interests in .au Domain Names

According to the auDA auDRP Overview 1.0 the following are also relevant authorities on this point: Asset Housing Pty Ltd v Kitome Pty Ltd;228 Technosystems Consolidated Corp, Invention Submission Corp t/as Invent Help v Hugh Godman, Royal Computer Pty Ltd;229 Insure & Go Insurance Services Ltd v CoverDirect Pty Ltd;230 QSoft Consulting Ltd v BSP;231 and General Television Pty Ltd v Laszlo Till.232

Acquisition or Cessation of Business [5.270] Where a person or entity acquires another’s business – for example, in the case of a corporate acquisition or merger, rights or legitimate interests in relation to a particular domain name might arise due to such an acquisition. This is demonstrated by KFM Properties Pty Ltd v The Trustee for the Painter Family Trust (t/as Best Western Great Ocean Road Motor Inn)233 where the panel observed: While the respondent might have had a legitimate interest in the domain name as a putative buyer of the business, once it failed to effect that transaction, any right or legitimate interest it might have had was lost. Accordingly, the panel finds that the respondent has no rights or legitimate interests in the domain name.234

A similar and more recent example on point is M/s Info Edge (India) Ltd v Harjeet Singh / Harry Singh,235 where the respondent argued that the use of the disputed domain name “99acres.com.au” was legitimate on the basis that the respondent’s company 99acre.com.au Pty Ltd was set up as the successor to the 99 Acres Group Pty Ltd company. However, the panel found that the two companies did not have any corporate relationship: In this panel’s view, however, 99 Acres Group Pty Ltd and 99acres.com.au Pty Ltd are different companies, the first having been deregistered. They also have different directors and shareholders, albeit the respondent is common to both. The respondent does not rely on any transfer or assignment of the assets of the first company to the new company. Arguably, the business indicated in the advertisement in Annex C to the Response is of a rather different nature to the business as indicated by the screenshot included in Annex D to the Response of the website to which the disputed domain name resolved shortly before the complaint was filed. In any event, as already noted, the first company ceased trading in 2010 and the respondent’s new activities did not commence until about 2 years later. Accordingly, the panel considers that it is appropriate to apply the usual rule that the time to assess a claim to rights or legitimate interests is when the respondent became the registrant.236

Where a complainant establishes that the respondent has ceased to engage in any business in relation to the disputed domain name, and the respondent fails to provide any reasonable explanation for the cessation, the respondent is 228 229 230 231 232 233 234

235 236

CIArb 06/01 (27 April 2006). WIPO Case No DAU2007-0001 (19 June 2007). WIPO Case No DAU2008-0019 (15 December 2008). WIPO Case No DAU2009-0003 (1 July 2009). LEADR Case No auDRP08/09 (15 October 2009). WIPO Case No DAU2012-0023 (1 October 2012). KFM Properties Pty Ltd v The Trustee for the Painter Family Trust (t/as Best Western Great Ocean Road Motor Inn), WIPO Case No DAU2012-0023 (1 October 2012). Compare 13 Flowers Pty Ltd v Flowers On The Net Pty Ltd, LEADR Case No auDRP03/05 (8 April 2005). WIPO Case No DAU2013-0022 (29 November 2013). WIPO Case No DAU2013-0022 (29 November 2013).

151

152

Australian Domain Name Law

[5.270]

deemed not to have rebutted the complainant’s prima facie claim. Thus, in Woopie-Do Pty Ltd v Goodwin Reading Diagnostic Centre,237 evidence that the respondent’s Australian Business Number (ABN) and GST status was cancelled on 13 December 2010 was accepted by the panel as an effective cessation of the respondent’s commercial activities. Accordingly, the panel found: The panel therefore finds that up until December 2010, the respondent had rights and a legitimate interest in respect of the disputed domain name. But it does not have any such rights or legitimate interest in the disputed domain name after the cessation of trading by it in December 2010. The panel notes that the respondent has not sought to establish any legitimate non-commercial or fair use of the disputed domain name as opposed to use of the disputed domain name in connection with its trading activities.238

Similarly, in CruiseMart Pty Ltd v Debretts Travel Services239 which related to the domain name “cruiseholidays.com.au” the panel held the disputed domain name is not being used in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use because: The respondent is not called “Cruise Holidays”, and no longer holds a registration of the business name CRUISE HOLIDAYS… the respondent acknowledged that no such website now operates. Currently, the disputed domain name resolves to a parking page with automatically generated links to various websites, some of which appear to be unrelated to cruise holidays and none of which appear to be connected to a business operated by the respondent.240

In other words, where a complainant demonstrates that the respondent does not, or has ceased to, carry out any commercial trade under the disputed domain name, and the respondent does not provide a sufficient explanation to rebut that evidence, the complainant would have succeeded in establishing that the respondent does not use the domain name for bona fide supply of any goods or services.241 However, this must be contrasted with the situation where a respondent’s business name registration lapses. Accordingly, where a business name registration has lapsed, a registrant will still be considered as having rights or legitimate interests in the domain name if it is still entitled to re-register the business name – and actually re-registers the business name. As the panel held in PFD Food Services Pty Ltd v Terence Bergagna:242 “The mere fact that the business name lapses for a period of time does not disentitle a registrant to the domain name.”243

237 238 239 240 241 242 243

IAMA Case No 3714 (12 April 2013). Woopie-Do Pty Ltd v Goodwin Reading Diagnostic Centre IAMA Case No 3714 (12 April 2013), p 10 [71]. LEADR Case No auDRP06/12 (5 July 2012). CruiseMart Pty Ltd v Debretts Travel Services LEADR Case No auDRP06/12 (5 July 2012), p 4. See also Regional Publishers Pty Ltd v Australianews.com.au Pty Ltd LEADR Case No auDRP03/10 (29 March 2010), p 4 [23], [24]. PFD Food Services Pty Ltd v Terence Bergagna LEADR Case No auDRP11/06 (2 November 2006). PFD Food Services Pty Ltd v Terence Bergagna LEADR Case No auDRP11/06 (2 November 2006), p 6.

[5.290]

5: Rights or Legitimate Interests in .au Domain Names

Rights or Legitimate Interests in Eligibility and Allocation Rules Does a respondent’s satisfaction of the eligibility requirements for registration of a disputed domain name automatically generate rights or legitimate interests?

[5.280] Paragraph 2.7C of the auDA auDRP Overview 1.0 states: The issue does not arise under the uDRP. The fact that a respondent satisfied the eligibility requirements for registration of the domain name does not, of itself, establish that the respondent has rights or legitimate interests in the domain name. This is because Note 2 of the auDRP expressly states that rights or legitimate interests in a domain name are not established “merely by the registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration”. However, at least one auDRP panel has found that the respondent has rights or legitimate interests in a domain name that was acquired by way of a competitive auction rather than normal registration.244

As the panelist in Easy Living Home Elevators Pty Ltd v Lift Shop Pty Ltd245 remarked: “meeting the eligibility criteria to register a domain name does not of itself establish a right or legitimate interest in respect of the domain name: refer auDRP Sch A para 4(a)(ii) and Note [2].” The following are cited to be relevant decisions on this issue under the auDA auDRP Overview 1.0: Jenna IP Holding Company LLC v Mobile Alive Pty Ltd;246 and Westralia Airports Corp Pty Ltd v Package Computers Pty Ltd.247

Influence of the Domain Name Eligibility and Allocation Policy Rules [5.290] Although Note 2 attaching to paragraph 4(a)(ii) of Schedule A to the auDRP provides that the rights or legitimate interests in a disputed domain name are not established merely because a respondent had fulfilled the domain name eligibility criteria at the time of registering the domain name, the fact that a respondent had met that criteria under the Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (2012-04) may be an influential factor in determining the existence of rights or legitimate interests of a respondent in the disputed domain name. Thus, for example, where a respondent’s trading name or trade mark is relevantly identical to the domain name, which is the first criteria for domain name allocation, such a respondent would usually establish its rights or legitimate interests in using the domain name, provided that it is being used for a bona fide purpose.248 In contrast, however, where a respondent fails to meet the domain name allocation and eligibility criteria, that fact will be weighed in favour of the 244

245 246 247 248

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, 19, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. LEADR Case No auDRP09/08 (8 January 2009) p 7 [14]. WIPO Case No DAU2006-0013 (7 February 2007). LEADR Case No auDRP07/08 (17 December 2008). See Michael Sweep v Douglas Berry WIPO Case No DAU2012-0008 (23 May 2012); Ozefax Pty Ltd v OzMedia Pty Ltd LEADR Case No auDRP06/10 (19 April 2010).

153

154

Australian Domain Name Law

[5.290]

complainant. Thus, in Bathox Australia Pty Ltd v Haresh Bhojwani,249 the panel referred to the former Domain Name Eligibility and Allocation Policy Rules for Open Second Level Domains (2LDs) (2008-05) (now superseded by auDA’s Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (2012-04) and concluded that the respondent had no rights or legitimate interests in the disputed domain name “bathox.com.au” as it did not meet the allocation criteria for “.com.au”.250 Similarly, in Red Frog Events LLC v Maximum Adventure Pty Ltd,251 the three member panel decided in favour of the complainant because, amongst other things, the respondent failed to satisfy the domain name allocation criteria.252 It is noteworthy that a respondent might fall short of the domain name eligibility criteria years after the domain name was registered. Thus, applying Note 2 attached to paragraph 4(a)(ii), the panel in Pepper Australia Pty Ltd v Massive Networks Pty Ltd, Scott Julian253 observed in the context of a respondent company that had been de-registered: “even if the respondent had legitimate interests in the registration of the disputed domain name when it applied for such registration, it cannot be heard now to maintain that it has such interests, given that it has ceased to exist.”254 Similarly, in Cobb International Ltd v Cobb Australia & New Zealand (Pty) Ltd255 the respondent asserted that it had registered the business name “Cobb Australia and NZ”, and therefore was entitled to use the disputed domain name “cobb.com.au”. However, the panel held that while the domain name’s similarity to the respondent’s registered business name “satisfies the eligibility criteria for registration of the disputed domain name but, as Note 2 to the Policy makes clear, it does not of itself provide an entitlement in the face of the complainant’s registered trademarks.” The panel found that the respondent’s continued use of the complainant’s mark and business name was unlawful in view of the termination of a distributorship agreement that existed between the two. Both Pepper Australia Pty Ltd v Massive Networks Pty Ltd, Scott Julian256 and Cobb International Ltd v Cobb Australia & New Zealand (Pty) 249 250

WIPO Case No DAU2011-0040 (20 February 2012). auDA’s Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (Policy No: 2012-04), (17/12/2012), auDA, Sch C, para 2, http://www.auda.org.au/pdf/auda-201204.pdf at 13 October 2014 provides: Domain names in the com.au 2LD must be: a) an exact match, abbreviation or acronym of the registrant’s name or trademark; or b) otherwise closely and substantially connected to the registrant, in accordance with the categories of “close and substantial connection” set out in the Guidelines on the Interpretation of Policy Rules for the Open 2LDs.

251 252

253 254

255 256

WIPO Case No DAU2012-0002 (23 May 2012). See further Peacock Media Group Pty Ltd v Darrell Wilson LEADR Case No auDRP02/12 (2 April 2012), p 4 [7.3] – [7.6]; Autronic Automotive Controls Pty Ltd v Air Power Systems Pty Ltd LEADR Case No auDRP02/07 (3 May 2007), p 6 [9(h)] – [9(i)]; BT Financial Group Pty Ltd v Basketball Times Pty Ltd WIPO Case No DAU2004-0001 (1 June 2004); Nemetschek North America Inc, OzCAD Pty Ltd v CAD Australia Pty Ltd WIPO Case No DAU2008-0014 (29 November 2008). WIPO Case No DAU2012-0007 (24 April 2012). See also Galvin Green AB, Tomas Nilsson v John Waugh, Buffalo Technology Solutions Pty Ltd WIPO Case No DAU2010-0011 (1 June 2010), a decision bearing similar facts to Pepper Australia Pty Ltd v Massive Networks Pty Ltd, Scott Julian WIPO Case No DAU2012-0007 (24 April 2012). WIPO Case No DAU2013-0005 (23 April 2013). WIPO Case No DAU2012-0007 (24 April 2012).

[5.290]

5: Rights or Legitimate Interests in .au Domain Names

Ltd257 demonstrate that while the respective respondents did meet the domain name allocation and eligibility criteria at the time the domain names were registered, the eligibility to maintain the registration had expired due to the change in their legal status. Thus, a relevant consideration is whether the respondent would be eligible to register the disputed domain name at or after the date of the dispute – particularly if the legal status of the respondent has changed. As the panelist held in Private Real Estate Pty Ltd v Chris Papas,258 “at the date of this decision, which is the time at which the second limb test is applied, the respondent appears to have a legitimate interest in respect of the disputed domain name.”259 A decision which considered the second aspect of the domain name eligibility criteria – that of the domain name having a “close and substantial connection” with the domain name – was OASE Asia Pacific Pte Ltd v Wifitech Pty Ltd,260 where the panel observed: Domain names in the com.au 2LD must be an exact match, abbreviation or acronym of the registrant’s name or trademark, or be otherwise closely and substantially connected to the registrant…As to whether the domain name is otherwise “closely and substantially connected”, s.10.2 of policy 2008-06 indicates this is intended to allow some flexibility for registrants who do not want to license a domain name that is directly related to their name (or cannot do so, because the domain name has already been licensed by another registrant with the same or similar name). Examples of categories of “close and substantial connection” (s. 10.5) include: a product that the registrant manufactures or sells; a service that the registrant provides; an event that the registrant organizes or sponsors; an activity that the registrant facilitates, teaches or trains; a venue that the registrant operates; or a profession that the registrant’s employees practise.261

The panel in Australian Government Department of Education, Science and Training v Blogger Pty Ltd262 held that for the purposes of the eligibility requirements “the close association that needs to be established is between the domain name and the registrant. This is not shown by establishing a close association between the domain name and the content of the website.”263 Of 257 258 259

260 261 262 263

WIPO Case No DAU2013-0005 (23 April 2013). IAMA Case No 3665 (18 February 2013), p 5. Compare Inbound Telecommunications Pty Ltd, Phonename Marketing Australia Pty Ltd v 1300 Directory Pty Ltd, Demetrio Padilla WIPO Case No DAU2009-0018 (21 April 2010), where the majority panel appear to suggest that the relevant time for consideration as to whether the respondent had any rights or legitimate interests in the disputed domain name is registration – and not the time of the complaint. The majority panel relevantly held: “…based on the majority’s finding above that the complainant’s rights under element one are derived from its registered trade mark rights, rather than from its acquisition of smartnumbers, it follows that at the date of registration of each of the disputed domain names the respondent had as much of an interest or legitimate right in registering the disputed domain names as did the complainant. By the requisite dates the complainant neither owned corresponding registered trade marks nor had it made substantive use of the smartnumbers as phonenames such as might result in the development of a protectable goodwill and secondary meaning. As a consequence it cannot be said that the respondent had ‘no rights or legitimate interests in the disputed domain names at this time’”. Note: this issue was not in consideration in the dissenting opinion. LEADR Case No auDRP13/11 (10 January 2012). LEADR Case No auDRP13/11 (10 January 2012), p 3 [7.5] – [7.6]. IAMA Case No 3058 (2 June 2007). Australian Government Department of Education, Science and Training v Blogger Pty Ltd IAMA Case No 3058 (2 June 2007), p 6.

155

156

Australian Domain Name Law

[5.290]

course, the content of a website will often demonstrate the purpose of registering the domain name and thereby provide evidence of the actual relationship between the registrant and the disputed domain.264

Delay or Laches in Bringing Proceedings under the auDRP [5.300] Although a defence based on delay alone would be insufficient to lead to a dismissal of a complaint, it might be the case that considerable delay on the part of a complainant may give rise to a legitimate claim by a respondent to use the disputed domain name. The panel in Victoria’s Secret Stores Brand Management Inc v Linda Cameron Pickard, Linda Watson265 considered this issue at length: The issue of delay – and the related issue of acquiescence and the doctrine of laches – has been considered in a number of cases decided under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). The Policy is based upon, and is very similar to, the uDRP and so this panel considers it is appropriate to consider the reasoning in cases decided under the uDRP in determining this issue under the Policy. According to the WIPO Overview of WIPO Panel Views on Selected uDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 4.10, uDRP Panels have recognized that the doctrine or defense of laches as such does not generally apply under the uDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the uDRP, or from being able to succeed under the uDRP, where a complainant can establish a case on the merits under the requisite three elements. The WIPO Overview 2.0, at paragraph 4.10, goes on to state, however, that “Panels have also noted that a delay in bringing a complaint under the uDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements” of the Policy. The approach reflected in the WIPO Overview 2.0 received strong support in the recent case Alimak Hek Inc v Richard Wheat, where it was stated: “The proper approach to delay-based defenses, now reflected in paragraph 4.10 of the Overview, […] is sound, rejecting a standalone equitable defense based only upon the passage of time in favor of considering delay in light of the Policy’s latter two express requirements.” This panel agrees, and believes that the principles that apply in relation to delay under the uDRP also apply in relation to delay under the Policy. This panel further believes that delay can, in exceptional circumstances, contribute to the respondent acquiring through its subsequent bona fide use a right or legitimate interest in a domain name even though it had no such right or legitimate interest at an earlier time.

Accordingly, the panel in this decision considered factors such as the respondent’s use of the disputed domain name for over 10 years before the filing of the complaint, and the complainant’s failure to bring proceedings against the respondent for almost seven years, and held that the complainant’s failure to expeditiously bring proceedings qualified as “exceptional circumstances”: 264 265

See, for example, GE Capital Finance Australasia Pty v Dental Financial Services Pty Ltd WIPO Case No DAU2004-0007 (7 January 2005). WIPO Case No DAU2012-0015 (3 July 2012).

[5.300]

5: Rights or Legitimate Interests in .au Domain Names

In this panel’s view, the exceptional circumstances of this case produce just that outcome. The panel’s finding, above, about the respondent’s knowledge of the complainant’s trademark and the respondent’s motivation for registering the disputed domain name precludes the conclusion that the respondent had a right or legitimate interest in the disputed domain name when it registered and first began using the disputed domain name in the early 2000s. In this panel’s view, however, the situation changed some time after the respondent replied to the complainant’s second cease-and-desist letter in August 2005. In its response to the second cease-and-desist letter, the respondent disputed the complainant’s allegations of trademark and trade practices infringements, and requested the complainant’s legal representative to “provide full details of the matters on which your client relies in relation to (a) its distribution of the VICTORIA’S SECRET catalogue in Australia and (b) the ‘range of products and associated services’ in relation to which your client’s VICTORIA’S SECRET registered trade mark are used”. It appears that the complainant never responded to this request. In this panel’s opinion, once a reasonable period of time had elapsed without the complainant providing such information or initiating some legal action, the respondent was entitled to conclude that the complainant had ceased to press its allegations of trademark and trade practices infringement. From that time forward, it became possible for the respondent to acquire a right or legitimate interest in the disputed domain name through subsequent use of it, so long as that subsequent use was bona fide.266

Interestingly, the panel held that had it not been for the delay in bringing proceedings it would have found for the complainant because the respondent had clearly registered the domain name in bad faith: this panel is persuaded, on the balance of probabilities, that the respondent knew of the complainant’s trade mark at the time it registered and began using the disputed domain name, and deliberately chose the disputed domain name so its business could benefit from the notoriety of the complainant’s trade mark. In this panel’s view, the respondent’s registration of the disputed domain name in those circumstances constituted registration in bad faith. Accordingly, this panel considers that the complainant has established the requirements of paragraph 4(a)(iii) of the Policy. The complaint does not succeed, however, due to the complainant’s failure to establish the requirement of paragraph 4(a)(ii) of the Policy.

266

Victoria’s Secret Stores Brand Management Inc v Linda Cameron Pickard, Linda Watson WIPO Case No DAU2012-0015 (3 July 2012). See also Jacuzzi Inc v Wangra Pty Ltd WIPO Case No DAU2005-0001 (24 August 2005), where the complainant had sent a letter of demand in 1996 but had not taken action until 2004. The three member panel in Clark Equipment Co v AllJap Machinery Pty Ltd WIPO Case No DAU2011-0042 (5 March 2012) stated: “the Panel accepts the consensus view of the uDRP panelists on the issue of laches, acquiescence and delay set out in paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected uDRP Questions, Second Edition (‘WIPO Overview 2.0’) that ‘the doctrine or defence of laches as such does not generally apply under the uDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the uDRP, or from being able to succeed under the uDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the uDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.’”

157

158

Australian Domain Name Law

[5.300]

Awareness of Name, Mark or Business [5.310] In most instances where it is established that the respondent was aware of the complainant, its name or mark or of its business, it is unlikely that the respondent would succeed in establishing a right or legitimate in a disputed domain name, that is identical or confusingly similar to the complainant’s name or mark.267 Indeed, the motivation of a respondent registering a domain name that is very similar to the business name of a competitor – and thereby presumably seeking to benefit from that established reputation is relevant in relation to whether a domain name was registered in good faith. As the panel in Confo Pty Ltd v Meridian Project Consulting Pty Ltd268 held: “Seeking to benefit from another’s reputation is not an action undertaken in good faith.”269 This is particularly so where the complainant enjoys a significant degree of reputation in Australia.270 In ESPA International (UK) Ltd, ESPA House v Espa of Australia Pty Ltd,271 notwithstanding the respondent’s argument that the domain name “espa.net.au” was the acronym of its corporate name, the panel found for the complainant because it held the respondent had taken advantage of the complainant’s reputation or goodwill. Further, the intention of a respondent in adopting a domain name which is descriptive, and which may subsequently achieve trade mark status, may be a relevant consideration in determining their rights or legitimate interests in the disputed domain name.272 In Yaffa Publishing Group Pty Ltd v Jackaroo Solutions Pty Ltd,273 the panel was not convinced by the respondent’s argument that the words “Australian Flying”, which were incorporated into the disputed domain name “australianflying.com.au”, was being used in a descriptive sense because the respondent “was very well aware” of the complainant’s publication 267

268 269

270

271 272 273

See, for example, Carrier Air Conditioning Pty Ltd as the holding company of Brivis Australia Pty Ltd v The Trustee for the Ferreri Family Trust t/as Dynamic Services HVAC & R LEADR Case No auDRP02/10 (23 February 2010); 1SaleADay LLC and Benyamin Federman v LivinWireless, Simon Mochkin and Eli Feiglin WIPO Case No DAU2010-0016 (27 September 2010); Horwitz Publications Pty Ltd v Majella Gai Gall LEADR Case No auDRP10/06 (24 October 2006); Arena Entertainment Pty Ltd v Alex Haddad LEADR Case No auDRP05/05 (27 June 2005); ESPN Inc v IMCO Corp Pty Ltd WIPO Case No DAU2005-0005 (31 January 2006); Cartier International AG v Blogger Pty Ltd, Publishing Australia WIPO Case No DAU2013-0037 (22 January 2014). LEADR Case No auDRP20/10 (12 February 2011). Confo Pty Ltd v Meridian Project Consulting Pty Ltd LEADR Case No auDRP20/10 (12 February 2011), p 5. See Mrsupplement Australia Pty Ltd and Mrsupplement.com.au Pty Ltd v Tony Hatzeandreou WIPO Case No DAU2012-0018 (25 July 2012) for an example of where the panel concluded that there was insufficient evidence to demonstrate that the respondent registered the disputed domain name with the intent to trade off the reputation of the complainants. See, for example, Melway Publishing Pty Ltd v Fopoco Pty Ltd t/as Melways Advertising WIPO Case No DAU2006-0005 (26 June 2006), where the respondent’s use of the disputed domain name for almost six years prior to the notice of the dispute was not enough to overcome the complainant’s prior reputation. See further Telstra Corp Ltd v The Directors / Blogger Pty Ltd WIPO Case No DAU2008-0005 (8 April 2008) and Telstra Corp Ltd v Mikhail Doubinski and Yury Sharafutdinov t/as AAA Marketing World WIPO Case No DAU2006-0008 (5 October 2006), where the disputed domain names were held to be confusingly similar to Telstra’s well-known “YELLOW PAGES” and “WHITE PAGES” marks. WIPO Case No DAU2011-0010 (17 May 2011). Corporate Mobile Recycling Ltd v Mazuma Mobile Pty Ltd WIPO Case No DAU2011-0034 (9 December 2011). LEADR Case No auDRP05/10 (31 March 2010), p 7.

[5.320]

5: Rights or Legitimate Interests in .au Domain Names

“Australian Flying”. Similarly, in Screwfix Direct Ltd v Brian Perry,274 the panel affirmed the position taken in TrueLocal Inc, Geosign Technologies Inc and True Local Ltd v News Interactive Pty Ltd275 and held that where a respondent uses a generic word to describe its business without intending to take advantage of the complainant’s rights, then it has a legitimate interest. However, the panel went on to distinguish the facts in Screwfix from TrueLocal, and held that while the words “screw”, “fix” and “direct” are all generic words in isolation, the combination of the words “Screwfix Direct” is not generic (despite assertions to the contrary from the respondent). Of course, where the respondent’s evidence can demonstrate that it chose the disputed domain name without seeking to create confusion with the complainant’s website, products or customers, then the panel will readily be able to make a finding that the respondent does have rights or a legitimate interest in the domain.276

Failure to Renew a Domain Name and Subsequent Purchase by a Respondent [5.320] The registration of a domain name does not in any sense give any title to the registrant over that domain name. It is merely a license to use that domain name, which can be indefinite subject to payment of renewal fees. In many instances, domain names are descriptive, and more than one business may be able to prove a legitimate interest to use a given domain name. Accordingly, one entity’s failure to renew the domain name within the required timeframe might result in another party acquiring the domain name for a legitimate purpose – as was the case in Penelope Blair v Choice 4U Pty Ltd,277 where it was common ground: The disputed domain has been held consistently since 2002 and subsequently lapsed for want of renewal. The respondent acquired to the domain through an auction process, shortly after it became available for auction. The respondent has since acquisition approached an insurance underwriter known to the complainant in relation to developing a business relationship to provide an insurance product for the pet industry.278

The disputed domain name in this decision related to “petinsurance.com.au”. In relation to the rights or legitimate interests of a subsequent purchaser of a domain name, the panel observed: I do not accept that the complainant has made out this ground. The respondent has evidenced clear commercial activities which are consistent with the correct commercial exploitation of the asset they have acquired. The complainant has not established an absence of such rights. The objection raised with regard to the original purchaser of the lapsed domain name are not established as being fatal to the rights of a subsequent purchaser, and there is no reason to find they would not 274 275 276

277 278

Screwfix Direct Ltd v Brian Perry WIPO Case No DAU2010-0019 (16 December 2010). WIPO Case No DAU2006-0003 (29 May 2006). American Future Technology Corp v Rex Hall WIPO Case No DAU2009-0007 (6 October 2009). Here the panel accepted that there was little or no potential for confusion because the complainant did not trade in Australia or sell to Australian-based customers, and had minimal reputation in Australia. Further, the respondent had Australian trade mark registrations, and had also demonstrated use of their mark in Australia for more than two years. LEADR Case No auDRP03/11 (18 April 2011). LEADR Case No auDRP03/11 (18 April 2011), p 3 [4].

159

160

Australian Domain Name Law

[5.320]

have the best title in all the world save the true owner (to draw a parallel with entitlement to stolen property). However, in this matter the disputed name was not acquired by fraud, theft or the like, it lapsed for want of renewal.279

Conduct of Prior Registrant of the Disputed Domain [5.330] In Pelican Products Inc v Terri Curyer,280 the complainant asserted that the transfer of the disputed domain name by its prior registrant to the respondent was a devious move and merely a pretext after notice of the dispute seeking to immunise the disputed domain name from the prior registrant’s conduct. The panel cited National Collegiate Athletic Association v Dusty Brown,281 where it was observed: The panel agrees with the respondent that, in most instances, the actions of a prior registrant would be irrelevant in assessing that of the present registrant. This assumes that both registrants are strictly dealing with each other in a totally disinterested, arms-length fashion. Other than consummating a given transaction, neither entity has any other interest in or dealings with the other. Clearly, this is not the case where a continuing relationship of any sort exists between the prior and present registrants. Where such a relationship exists, the question arises whether, under the facts at issue and given the nature of the relationship, the actions of the prior registrant should be imputed to the present registrant such that the conduct of both entities, from the perspective of assessing the propriety of that action, is viewed collectively, that is, as one single entity, one single actor. … If uDRP Panels could not impute conduct where appropriate between transacting registrants – as here, then any prior registrant could very easily and successfully shield its names from transfer, and, by doing so, thwart the action of the Policy.282

Accordingly, it becomes clear that apart from the specific circumstances listed in paragraph 4(c) of the auDRP, panels have decided that a respondent may have rights or legitimate interests for any one or a combination of the factors set out above. However, despite the fact that a complainant might be successful under paragraph 4(a)(ii) by demonstrating that a respondent has no rights or legitimate interests in a domain name, a complainant would still have to demonstrate the conditions set out in the next (and final) limb of paragraph 4(a) – that the respondent had registered or used the domain name in bad faith. Usually where panels have found in favour of a respondent under the second limb of paragraph 4(a), it is most likely that the complaint will fail. On the other hand, where a respondent’s lack of any rights or legitimate interests in a disputed domain is established, a finding that the domain name was either registered or subsequently used in bad faith will usually follow. The next chapter will examine this third ground of paragraph 4(a) of the auDRP relating to bad faith. As discussed earlier, a complainant must satisfy all three grounds of paragraph 4(a) of the auDRP in order to be entitled to have the disputed domain name either transferred or cancelled.

279 280 281 282

Penelope Blair v Choice 4U Pty Ltd LEADR Case No auDRP03/11 (18 April 2011), p 6 [7(B)]. WIPO Case No DAU2011-0021 (26 October 2011). WIPO Case No D2004-0491 (30 August 2004). National Collegiate Athletic Association v Dusty Brown WIPO Case No D2004-0491 (30 August 2004).

6

Bad Faith Registrations or Subsequent Use of .au Domain Names [6.10] Introduction................................................................................................161 [6.20] Relationship between “Bad Faith” and “Rights or Legitimate Interests”..........................................................................................................164 [6.30] Either Registered or Subsequently Used a Disputed Domain Name in Bad Faith......................................................................................................... 167 [6.90] Typical Types of Bad Faith Conduct Outlined in Paragraph 4(b) of auDRP..............................................................................................................172 [6.160] Use in Bad Faith – Passive Holding...................................................... 188 [6.180] What Constitutes a Pattern of Conduct?................................................ 193 [6.190] Awareness of the Complainant, its Name or Mark and Bad Faith....... 193 [6.230] Disclaimers in the Resolving Website and Bad Faith............................201 [6.240] Statements Made in Settlement Discussions.......................................... 202 [6.250] Renewal of a Domain Name...................................................................203 [6.260] Automatically-generated Material...........................................................204 [6.270] Privacy and Proxy Registration Services............................................... 204 [6.280] “Robots.txt” and Similar Mechanisms....................................................204 [6.290] “Tarnishment” of a Trade Mark..............................................................205

Introduction [6.10] As discussed in the previous chapters, there are three elements that a complainant must prove under paragraph 4(a) of the auDRP in order to have a disputed domain name either transferred or cancelled. Paragraph 4(a)(i) and paragraph 4(a)(ii) were discussed in Chapters 4 and 5 respectively. This Chapter will examine paragraph 4(a)(iii) of the auDRP which provides that in order to have a domain name either transferred or cancelled the complainant must establish that the: “domain name has been registered or subsequently used in bad faith.”1

According to the panelist in UFC Gym Australia Pty Ltd v The Trustee for Moose & I Trust:2 “This is probably the most important element of the Policy, as its basis, like the basis for the uDRP, is that a party has engaged in abusive domain name registration in view of the complainant having a trademark and the respondent registering the domain name.” 1 2

au Dispute Resolution Policy (auDRP) (Policy No: 2016-01) (15/04/2016), auDA, Sch A, para 4(a)(iii), https://www.auda.org.au/assets/pdf/auda-2016-01.pdf. IAMA Case No 3712 (22 March 2013), p 10.

162

Australian Domain Name Law

[6.10]

As noted in Chapter 2, there is a significant difference in the wording between paragraph 4(a)(iii) of the auDRP and uDRP – where the uDRP provides that domain name holders are required to both register and use the domain name in bad faith, whereas the corresponding provision in the auDRP provides that the domain name has been registered or subsequently used in bad faith. Clearly, the scope of the third limb under the auDRP is much wider, making it relatively easier for complainants to succeed under the auDRP when compared to the uDRP. In this regard, the panel in Adjudicate Today Pty Ltd v Institute of Arbitrators and Mediators observed: “Unlike for the uDRP, this requirement under the auDRP is disjunctive. It is necessary for the complainant to show only registration in bad faith or use in bad faith.”3 Similarly, the panel in Wendgold Pty Ltd v Ozbizweb Pty Ltd as trustee of The Blue Sky Trust4 held: “The panel is of the view that the disputed domain name was both registered and continues to be used in bad faith by the respondent. A finding of either of those forms of conduct would have been sufficient for the complainant to succeed on this ground of the auDRP.”5 Just as paragraph 4(c) of the auDRP (and uDRP) outline three non-exhaustive instances which can be taken to demonstrate rights or legitimate interests in the disputed domain for purposes of paragraph 4(a)(ii), paragraph 4(b) of the auDRP (and uDRP) outline the four non-exhaustive circumstances which would provide evidence of the registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii). As noted previously in Chapter 2, paragraph 4(b) of the auDRP provides: For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or (iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that web site or location or of a product or service on that web site or location.

While the wording of paragraph 4(b) in the auDRP and uDRP is similar, the auDRP is arguably wider in scope. In this regard, the panelist in Statoil ASA v Creative Domain Pty Ltd / Christine K Hoyer6 observed: 3

4 5 6

WIPO Case No DAU2012-0033 (13 March 2013). See further Sharp Corporation of Australia Pty Ltd v Sharp Computing Services Pty Ltd LEADR Case No auDRP11/09 (11 February 2010), pp 10-11; Alibaba Group Holding Ltd v Teresa Bostle WIPO Case No DAU2014-0041 (27 February 2015). LEADR Case No auDRP07/10 (9 July 2010). LEADR Case No auDRP07/10 (9 July 2010), p 14. WIPO Case No DAU2013-0012 (18 June 2013).

[6.10]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

It will be noted that, unlike paragraph 4(a)(iii) of the uDRP, either registration or use of the disputed domain name in bad faith will suffice under the auDRP. Further, there are some significant differences between paragraphs 4(b) of the two Policies, with the auDRP being somewhat less restrictive in relation to subparagraphs 4(b)(i) (may be sale, etc to “another person” rather than just to the complainant), 4(b)(ii) (no need to show a “pattern of such conduct”) and 4(b)(iv) (“a website…” rather then “your [the respondent’s] website…”). However, in view of the fact that these factors are stated to be non-exclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and/or in use. In this regard, it is worth noting an early decision of a uDRP panel that may still remain relevant here, to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can also amount to use in bad faith, Telstra Corp Ltd v Nuclear Marshmallows WIPO Case No D2000-0003.

The circumstances identified in paragraph 4(b) are “without limitation”, and therefore represent a non-exhaustive list. Accordingly, there could be other circumstances that might lead a panel to make a finding of bad faith registration or use of a domain name. As the panelist explained in ADHD Australia Inc v ADDults with ADHD (NSW) Inc7: “Paragraph 4(b) is not a comprehensive definition of ’bad faith’ use for the purposes of the Policy. Conduct may be bad faith use even though it does not fall within paragraph 4(b).”8 Like other elements of paragraph 4(a), the onus of proving bad faith is on the complainant.9 As will be analysed in detail below, to make a finding of bad faith a panel may consider the following factors inter alia as relevant: the resolving website containing content relating to a complainant’s competitors; the lack of a disclaimer distinguishing the respondent from the complainant; the consequential effect of the website giving an impression that the respondent is somehow affiliated with or endorsed by the complainant; the lack of any response by the respondent to the complainant (for example, letters of demand, etc); strong evidence of amendments being made to the resolving webpage consequent to the letter of demand or any other representations made by or on behalf of the complainant; the distinctiveness of the complainant’s name or mark; the identity or confusing similarity between the disputed domain name and the complainant’s mark or name; the respondent’s awareness of the complainant or its mark or name and their reputation. This chapter will examine the way in which paragraph 4(a)(iii) has been interpreted by panels under the auDRP. As with previous chapters, this chapter will include the findings of the auDA auDRP Overview 1.0 on paragraph 4(a)(iii) (or to use the terminology from the auDA auDRP Overview 1.0 the “third auDRP element”).10 As stated in Chapter 1, the auDA auDRP Overview 1.0 was published half way through writing this book in July 2014 7 8

9 10

LEADR Case No auDRP05/07 (12 June 2007). ADHD Australia Inc v ADDults with ADHD (NSW) Inc LEADR Case No auDRP05/07 (12 June 2007), p 10 [31]. See also Clark Equipment Co v R & R Equipment Pty Ltd WIPO Case No DAU2012-0011 (4 June 2012); General Television Pty Ltd v Laszlo Till LEADR Case No auDRP08/09 (15 October 2009), p 6 [7.17]; Birchbox Inc v Nabil Sabet WIPO Case No DAU2012-0035 (18 February 2013), citing two uDRP decisions: Telstra Corp Ltd v Nuclear Marshmallows WIPO Case No D2000-0003 (18 February 2000) and Jupiters Ltd v Aaron Hall WIPO Case No D2000-0574 (3 August 2000). See for example, General Television Pty Ltd v Laszlo Till LEADR Case No auDRP08/09 (15 October 2009), p 6 [7.21]. Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First

163

164

Australian Domain Name Law

[6.10]

and represents the consensus view on auDRP decisions to date. As noted in previous chapters, while the auDA auDRP Overview 1.0 refers to a number of auDRP decisions, these decisions are only referenced and not at all discussed. This chapter will analyse the decisions relevant to paragraph 4(a)(iii) of the auDRP (where they have not otherwise been examined in this book).

Relationship between “Bad Faith” and “Rights or Legitimate Interests” [6.20] Where a respondent successfully demonstrates that it has rights or legitimate interests in a domain name, a consideration of the third limb usually becomes unnecessary.11 This is because not only must a complainant satisfy all three limbs of paragraph 4(a), but also because finding that the respondent has a right or legitimate interest implies that it had not registered or used the domain name in bad faith. Similarly, the converse is also true – that is, a complainant’s success in establishing that a respondent has no rights or legitimate interests in a domain name implies that the respondent registered or subsequently used the domain name in bad faith.12 The panel in Sharp Corporation of Australia Pty Ltd v Sharp Computing Services Pty Ltd13 provides a rather curious discussion on the relationship between rights or legitimate interests – specifically the scope of paragraph 4(c)(i) of the auDRP, and subsequent bad faith use under paragraph 4(a)(iii). In this decision, the experienced panelist accepted that while the disputed domain name, “sharp.com.au”, was initially used as a bona fide offering of goods or services, it was subsequently used in bad faith. In assessing the relationship between paragraph 4(c)(i) and 4(a)(iii) of the auDRP, the panel stated: The key issue for the panel then becomes whether the respondent obtains the benefit of that provision and, if so, whether it precludes a finding that such rights or legitimate interests as may have then existed can be lost by a subsequent bad faith use of the disputed domain name. It seems to the panel that the respondent’s conduct immediately after registering the disputed domain name, and long before any communication from or with the complainant, was squarely within the kind of conduct envisaged by paragraph 4(c)(i) of the auDRP. In relation to its world wide web usage, up until

11

12

13

Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, http://www.auda.org.au/assets/ Policies/auDRP/auDRP-Overview/auDRP-Overview-2014.pdf. There are numerous examples of this, but see RigCool Australia Pty Ltd v Optima Solutions UK Ltd, Kevin Mathieson WIPO Case No DAU2010-0006 (29 April 2010); Spanton Media Group Pty Ltd v Lion Global Pty Ltd WIPO Cases Nos DAU2007-0007 and DAU20070008 (2 January 2008); TrueLocal Inc, Geosign Technologies Inc and True Local Ltd v News Ltd WIPO Case No DAU2006-0004 (29 June 2006); Jacuzzi Inc v Jacuzzi Pty Ltd WIPO Case No DAU2005-0003 (24 August 2005); Jacuzzi Inc v Jacuzzi Unit Trust WIPO Case No DAU2005-0002 (24 August 2005). For detailed consideration of the relationship between bad faith and rights or legitimate interests under the auDRP, see Alpana Roy and Althaf Marsoof, ““Bad faith” and “rights or legitimate interests” under domain name law – emerging themes from the UDRP and auDRP”, (2015) 20 Media and Arts Law Review 282. See, for example, Pelican Products Inc v Terri Curyer WIPO Case No DAU2011-0021 (26 October 2011); BayerischeMotorenWerkeAktiengesellschaft v Gregory James Talifero WIPO Case No DAU2011-0009 (25 April 2011). Sharp Corporation of Australia Pty Ltd v Sharp Computing Services Pty Ltd LEADR Case No auDRP11/09 (11 February 2010) (Philip N Argy). For further discussion of this decision, see Alpana Roy and Althaf Marsoof, ““Bad faith” and “rights or legitimate interests” under domain name law – emerging themes from the UDRP and auDRP”, (2015) 20 Media and Arts Law Review 282.

[6.20]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

March 2005, the panel is similarly satisfied that the respondent has the benefit of that provision of the auDRP. The panel also finds that the respondent’s use of the disputed domain name for its computing services business email was within the kind of conduct envisaged by paragraph 4(c)(i) of the auDRP. To the extent to which the onus of proof shifted to the respondent to demonstrate the legitimacy of its interest in the disputed domain name, it has successfully brought itself within paragraph 4(c)(i). For more than 10 years the almost universal jurisprudence under the Uniform Doman Name Dispute Resolution Procedure (uDRP), on which the auDRP is based, has been to find for the respondent in such cases, even if there has been subsequent use in bad faith: http://www.wipo.int/amc/en/domains/search/ legalindex.jsp?id=11520. Whereas under paragraph 4(a)(iii) of the uDRP, a complainant needs to show that a disputed domain name has been registered AND used in bad faith, under the auDRP bad faith use subsequent to a good faith registration can be disentitling. It may be possible to use that difference to argue that the auDRP should be interpreted to require the safe harbour usage of paragraph 4(c)(i) to continue for the life of the disputed domain name before a respondent can claim its benefit. However, that would require the respondent to demonstrate by evidence that which the provision was intended to deem to exist. On balance, the panel has come to the view that it is proper to follow the uDRP jurisprudence and not introduce a new principle into auDRP jurisprudence. That is not to say that, in a court proceeding where evidence can be tested and a wider range of principles considered, the respondent would succeed; but the auDRP, like the uDRP, is designed for clear cases and this proceeding is not such a clear cut case given that the respondent was hardly a cybersquatter at the time of registration and for the first eight years of use of the disputed domain name. Accordingly, notwithstanding the panel’s view that, as at the date of the complaint, and indeed for most of the last five years, the respondent has not been making a bona fide use of the disputed domain name in conjunction with its “Technology Shop” website, the complainant has not been able to displace the operation of paragraph 4(c)(i) with the consequence that the complaint cannot succeed.14

In determining the application of the bad faith limb under paragraph 4(a)(iii) the panel found: “On any objective view, the complainant has made out paragraph 4(a)(iii) of the auDRP, and the panel finds that, subsequent to March 2005, the respondent has used the disputed domain name in bad faith.”15 In other words, although the complainant was successful under the bad faith limb, it could not adequately make out the rights or legitimate interests limb, notwithstanding the fact that for several years preceding the complaint the domain name was not being put to bona fide use. Interestingly, in a later decision, Private Real Estate Pty Ltd v Chris Papas,16 the same panelist (Philip N Argy) observed: However, unlike the uDRP, the third limb of the auDRP permits a complainant to succeed if it can demonstrate to the satisfaction of a panel that a domain name registered in good faith was subsequently used in bad faith. So the question still to 14 15 16

Sharp Corporation of Australia Pty Ltd v Sharp Computing Services Pty Ltd LEADR Case No auDRP11/09 (11 February 2010), pp 10-11. Sharp Corporation of Australia Pty Ltd v Sharp Computing Services Pty Ltd LEADR Case No auDRP11/09 (11 February 2010), p 12. IAMA Case No 3665 (18 February 2013).

165

166

Australian Domain Name Law

[6.20]

be considered is whether at any time subsequent to its initial registration the disputed domain name has been used in bad faith.17

Similarly, the same panelist in David Harry Birch and Judith Alison Birch t/as Aussie Soap Supplies v Yvonne Tracey Cowell t/as Aussie Soap Supply18 held: Paragraph 4(a)(iii) of the auDRP requires the complainants to demonstrate that the disputed domain name was either registered or subsequently used in bad faith. The panel is of the view that the disputed domain name was both registered and continues to be used in bad faith by the respondent. A finding of either of those forms of conduct would have been sufficient for the complainants to succeed on this ground of the auDRP.19

On this specific issue, the panel in Bathox Australia Pty Ltd v Haresh Bhojwani20 correctly summarised the position under the uDRP and auDRP: Paragraph 4(a)(iii) of the uDRP Policy requires the complainant to establish that the respondent both registered and used the disputed domain name in bad faith (the “conjunctive requirement”). For example, if the evidence showed that a disputed domain name had been registered in good faith, but later put to a bad faith use, the requirements of paragraph 4(a)(iii) of the uDRP Policy would not have been met, and the complaint would fail. However, unlike the uDRP on which it is based, the auDRP does not require a complainant to prove both that the disputed domain name has been registered and used in bad faith. Proof of either limb is enough to satisfy the requirements of Schedule A, paragraph 4(a)(iii).21

Finding that the respondent had both registered and used the disputed domain name in bad faith (which, of course, is not required under the auDRP), the panel in Turlen Holding SA v Blue Racer Pty Ltd22 held: The evidence on the record provided by the complainant with respect to the use of its trademark, combined with the absence of any evidence provided by the respondent to the contrary, is sufficient to satisfy this panel that the respondent both knew of the complainant’s trademark at the time of registration of the disputed domain name and knew that it had no rights or legitimate interests in the disputed domain name. Accordingly, this panel finds that the respondent registered the disputed domain name in bad faith. Furthermore, the evidence on the record provided by the complainant with respect to the respondent’s use of the disputed domain name indicates that the respondent has used the disputed domain name to attract, for commercial gain, internet users to a website by creating a likelihood of confusion with the complainant’s trademark as to the source, sponsorship, affiliation or endorsement of that website. Accordingly, this panel is satisfied that the respondent has used the disputed domain name in bad faith.

This issue will be explored in further detail below.

17 18 19

20 21 22

Private Real Estate Pty Ltd v Chris Papas IAMA Case No 3665 (18 February 2013), p 5. LEADR Case No auDRP22/10 (21 February 2011). David Harry Birch and Judith Alison Birch t/as Aussie Soap Supplies v Yvonne Tracey Cowell t/as Aussie Soap Supply LEADR Case No auDRP 22/10 (21 February 2011), p 5 (Philip N Argy). WIPO Case No DAU2011-0040 (20 February 2012). Bathox Australia Pty Ltd v Haresh Bhojwani WIPO Case No DAU2011-0040 (20 February 2012). WIPO Case No DAU2010-0008 (5 May 2010).

[6.40]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

Either Registered or Subsequently Used a Disputed Domain Name in Bad Faith Registration in Bad Faith [6.30] When registration occurred: In order to determine whether a domain name was registered in bad faith it is necessary to first ascertain when the actual registration took place. This is a relatively straightforward inquiry where the respondent is the first registrant of the domain name. However, this is not so clear-cut where the respondent is not the first registrant, but, for example, is only a transferee of the domain name. This issue was considered in Facebook Inc v Callverse Pty Ltd,23 where the learned three member panel held: In order to determine whether a domain name was registered in bad faith, it is necessary to determine when registration occurred. As noted above, the respondent is not the original registrant of the disputed domain name. It became the registrant of the disputed domain name upon transfer from the Original Registrant in or around October 2007. It has been established in a number of previous panel decisions that the acquisition of a domain name from a previous registrant constitutes registration within the meaning of the uDRP policy (see for example MC Enterprises v Mark Segal (Namegiant.com) WIPO Case No D2005-1270; Société Air France v Vladimir Federov WIPO Case No D2003-0639; Laure Pester (Lorie) and Sony Music Entertainment France SA v Movie Name WIPO Case No D2003-0312; see also paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected uDRP Questions). Registration in bad faith must occur at the time the current registrant took possession of the domain name (see paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected uDRP Questions). This panel applies the rationale of these decisions to the auDRP. Consequently, for the purposes of this decision, the date of registration is the date the disputed domain name was transferred from the Original Registrant to the respondent.

Thus, registration in bad faith must occur at the time the current registrant took possession of the domain name. Relevantly, the date of registration is the date the disputed domain name was transferred from the original registrant to the respondent. Can bad faith be found if the domain name was registered before the trade mark or name was registered or before unregistered trade mark rights were acquired?

[6.40] On this issue, paragraph 3.1 of the auDA auDRP Overview 1.0 states: The general position is different from that under the uDRP. Where a domain name is registered prior to the acquisition of rights by the complainant, auDRP panels have tended to assess the timing issue under the second, rather than the third, element of the Policy. Specifically, auDRP panels have taken the fact of the respondent’s prior registration of the domain name into account when considering whether the respondent has used, or prepared to use, the domain name in connection with a bona fide offering of goods or services as specified in paragraph 4(c)(i) of the Policy [see paragraph 2.1A]. This represents a substantial deviation from the uDRP, under which panels have tended to take the fact of the respondent’s prior registration of the domain name into account in considering whether the respondent registered the domain name in bad faith. In any event, paragraph 4(a)(iii) of the auDRP requires that the domain name has been registered or subsequently used in bad faith for the third requirement to be 23

WIPO Case No DAU2008-0007 (4 June 2008).

167

168

Australian Domain Name Law

[6.40]

satisfied. Unlike the equivalent provision in the uDRP, the word “and” is not used; thus, the issue of whether a complainant must establish both bad faith registration and bad faith use does not arise. As a result, registration – even one that is demonstrably in good faith – of the domain name prior to the complainant acquiring rights in its mark or name will not protect a respondent from a finding that the third requirement is satisfied where it is established that the respondent subsequently used the domain name in bad faith.24

The auDA auDRP Overview 1.0 cites Sitecore Australia Pty Ltd v WB Solutions Pty Ltd;25 and Cobb International Ltd v Cobb Australia & New Zealand (Pty) Ltd26 as relevant decisions for this proposition. [6.50] Applicability of the domain name allocation criteria: Where the question is bad faith registration, panels look to see if the respondent meets the domain name eligibility and allocation criteria. On the question of whether the respondent’s failure to meet the eligibility requirements for registration of a domain name amount to registration or use in bad faith, paragraph 3.2A of the auDA auDRP Overview 1.0 provides: The issue does not arise under the uDRP. A domain name will have been registered or used in bad faith where the respondent registered the domain name despite not meeting the applicable eligibility requirements (currently set out in auDA Policy “2012-04 – Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs”). Paragraph 2 of the auDRP states that by applying to register the domain name, or by requesting maintenance or renewal of the domain name registration, the respondent warrants that statements made in the domain name application are complete and accurate, including those as to the respondent’s eligibility for a domain name in the open second-level domains (2LDs). Where the respondent does not meet the relevant eligibility requirement, the respondent is in breach of the paragraph 2 warranty. auDRP panels have found this breach satisfies the paragraph 4(a)(iii) requirement that the domain name has been registered or subsequently used in bad faith. One panel has made an exception in the case of a “technical” rather than a “knowing” breach of the warranty. Where the respondent was ineligible to register the domain name but had a bona fide belief in its eligibility to do so, a panel has found that such a belief precluded a finding that the registration constituted bad faith use.27

The auDA auDRP Overview 1.0 cites the following decisions to be relevant on this issue: EFG Nominees Pty Ltd v Lenland Property Development Pty Ltd;28 Private Real Estate Pty Ltd v Chris Papas;29 and Debbie Morgan Macao Commercial Offshore Ltd, Missguided Ltd v Samir Vora.30 These decisions are referred to further below. 24

25 26 27

28 29 30

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 19, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. LEADR Case No auDRP10/08 (20 January 2009). WIPO Case No DAU2013-0005 (23 April 2013). Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, pp 22-23, http:// www.auda.org.au/assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. IAMA Case No 3658 (12 October 2012). IAMA Case No 3665 (18 February 2013). WIPO Case No DAU2013-0024 (30 October 2013).

[6.60]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

Panels have not made a finding of bad faith registration where the respondent has met the domain name eligibility and allocation criteria.31 However, providing false information in order to satisfy the domain name eligibility and allocation criteria would in all likelihood lead to a finding of bad faith. As the panelist in BT Financial Group Pty Ltd v Basketball Times Pty Ltd32 held: Providing false or misleading details when registering a domain name, and registering a domain name in the name of an entity that does not exist, is registration of the domain name in bad faith. There are many uDRP decisions reaching this conclusion, including: Home Director Inc v HomeDirector WIPO Case No D2000-0111; Telstra Corp v Nuclear Marshmallows WIPO Case No D2000-0003; Novus Credit Services v Personal WIPO Case No D2000-1158; National Hockey League And Lemieux Group Lp v Domain For Sale WIPO Case No D2001-1185; Francesco Totti v Jello Master WIPO Case No D2002-0134.

In Compagnie Générale des Etablissements Michelin v Thomas Panagiotopoulos,33 the panelist found that the disputed domain name was contrary to auDA’s allocation requirements and registered in bad faith because searches on ATMOSS and ASIC revealed that no such trade mark or company existed respectively.34 Similarly, in Regional Publishers Pty Ltd v Australianews.com.au Pty Ltd,35 the panel found that the disputed domain name was registered in bad faith and did not meet the eligibility and allocation rule requirements because there was a lack of nexus between the domain names and the respondent, and the domain names did not reflect the respondent’s company or trading name or business operations. While the panelist in Arla Foods Amba v Graytech Hosting Pty Ltd ABN 49106229476, Elizabeth Rose36 was reluctant to accept the complainant’s contention that the respondent’s registration of the disputed domain name was contrary to auDA’s eligibility and allocation rules, the panel nevertheless found bad faith registration by the respondent because of the lack of evidence to demonstrate its rights or legitimate interests in the disputed domain name. The timing of when the domain name was actually registered is clearly a relevant factor. In Debbie Morgan Macao Commercial Offshore Ltd, Missguided Ltd v Samir Vora,37 the three member panel found that the disputed domain name did not meet the requisite eligibility criteria as the disputed domain names were registered by the respondent well before the trade mark application.38

[6.60] Prior rights: Where it is shown that the disputed domain name was registered on a date prior to the acquisition by the complainant of its rights in its name or trade mark, it is unlikely that the domain name was registered in bad faith. As the panel in Mark Kingsley Williams v Bbhinds Pty Ltd39 observed: 31 32 33 34 35 36 37 38 39

See, for example, Objective Ware Pty Ltd v Select Software Telecommunications Pty Ltd IAMA Case No 2757 (28 April 2005), p 15 [7.14]. BT Financial Group Pty Ltd v Basketball Times Pty Ltd WIPO Case No DAU2004-0001 (1 June 2004). WIPO Case No DAU2013-0011 (31 May 2013). Compagnie Générale des Etablissements Michelin v Thomas Panagiotopoulos WIPO Case No DAU2013-0011 (31 May 2013). LEADR Case No auDRP03/10 (29 March 2010), p 5 [30(a)]. WIPO Case No DAU2016-0001 (29 March 2016). Debbie Morgan Macao Commercial Offshore Ltd, Missguided Ltd v Samir Vora WIPO Case No DAU2013-0024 (30 October 2013). Debbie Morgan Macao Commercial Offshore Ltd, Missguided Ltd v Samir Vora WIPO Case No DAU2013-0024 (30 October 2013). WIPO Case No DAU2013-0010 (21 May 2013).

169

170

Australian Domain Name Law

[6.60]

The trade mark upon which the complainant allegedly relies – assuming it was registered and is owned by the complainant as alleged – was apparently registered after the disputed domain name. As the complainant adduces no evidence of prior trade mark rights, nor of continued use with a presumed intention to mislead, the complainant’s argument with respect to registration in bad faith cannot succeed.40

However, this does not mean that every time a domain name is registered before a complainant acquires its rights in relation to a name or mark, an inference of good faith registration will be made. Thus, in Databank Technologies Pty Ltd v Tape Management Services Pty Ltd41 where the complainant and respondent were close competitors, the disputed domain name had been registered only eight days before the complainant had registered its trading name, this proximity in timing gave rise to the following questions for the panelist: If the respondent had, in good faith, registered the disputed domain name with the intention of using it, in good faith, why did the respondent not subsequently challenge the registration of the complainant’s trading name, and, why did the respondent not subsequently challenge the complainant’s registration of the domain name www.databanktech.com.au, and why did the respondent not subsequently challenge the complainant’s use of the word “Databank” on the complainant’s website.42

Accordingly, the panel found that the disputed domain name had been both registered and used in bad faith. In Inbound Telecommunications Pty Ltd Phonename Marketing Australia Pty Ltd v 1300 Directory Pty Ltd Demetrio Padilla,43 the majority panel found that at the date of registration of each of the disputed domain names the respondent had as much of a right or legitimate interest in registering the names as the complainant because at this time the complainant neither owned corresponding registered trade marks nor had it made substantive use of the disputed domain names for the purposes of developing “a protectable goodwill and secondary meaning.” On the issue of bad faith, the majority held: the respondent did not, in the majority’s view, register the disputed domain names in bad faith. Quite simply, the complainant had no relevant trade mark rights at the time of registration and therefore (absent evidence of substantive use by the complainant or of specific respondent knowledge and intent to target a likelihood of complainant obtaining such rights) the respondent’s act of registration could not have been made in bad faith. Further, it is notable that there is no evidence that the respondent sought to pro-actively sell the disputed domain names and it has provided a reasonably credible explanation for its apparent willingness to sell the disputed domain names when approached by representatives of the complainant and others. Nor is there any other evidence which would indicate use in bad faith.44 40 41 42 43 44

Mark Kingsley Williams v Bbhinds Pty Ltd WIPO Case No DAU2013-0010 (21 May 2013). IAMA Case No 3124 (10 December 2007). Databank Technologies Pty Ltd v Tape Management Services Pty Ltd IAMA Case No 3124 (10 December 2007), p 8 [9.36]. WIPO Case No DAU2009-0018 (21 April 2010). Inbound Telecommunications Pty Ltd, Phonename Marketing Australia Pty Ltd v 1300 Directory Pty Ltd, Demetrio Padilla WIPO Case No DAU2009-0018 (21 April 2010). However on this point, the dissenting panelist held: “Unlike the uDRP, this requirement under the auDRP is disjunctive. It is necessary for the complainants to show only registration in bad faith or use in bad faith. The dissenting panelist would find that the respondent is at least using the disputed domain names in bad faith in circumstances where it does not have

[6.80]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

However, merely because a domain name was registered in good faith does not eliminate the possibility of a finding of subsequent bad faith use. In such cases, although at the time of registering the domain name a respondent might have done so in good faith, certain intervening events may of course lead to the conclusion that it was subsequently used in bad faith.45

Use in Bad Faith Meaning of “Use” [6.70] The threshold of what constitutes bad faith “use” under paragraph 4(a)(iii) of the auDRP can be quite minimal. For example, in Sterling Marine Pty Ltd v Etolin Pty Ltd,46 the panel accepted the complainant’s submission that an offer to sell can amount to “use” of the domain name for the purposes of bad faith – even if that offer constituted the respondent’s only use of the disputed domain name. Further, that offer alone may amount to “use” for the purposes of bad faith under paragraph 4(a)(iii).47

Subsequent Bad Faith Use Sufficient [6.80] Although a respondent may have registered a domain name in good faith, its subsequent and continued use might not be held to be in good faith – particularly in cases where the legal status of the respondent has changed. Thus, in Woopie-Do Pty Ltd v Goodwin Reading Diagnostic Centre,48 the cancellation of the respondent’s Australian Business Number (ABN) and GST status – resulting in its commercial activities ceasing on 13 December 2010, persuaded the panel that the continued use of the disputed domain name by the respondent would not be in good faith. In this regard, the panel found: Having ceased commercial trade, the panel fails to see any legitimate interest of the respondent continuing to maintain the disputed domain name. The inference arises that the respondent continues to maintain the disputed domain name in order to prevent other commercial users from using the domain name in connection with genuine commercial activity in a like business. Therefore, the panel finds that the continuation of the registration of the disputed domain name following December 2010 was, and continues to be, in bad faith.49

In Sterling Marine Pty Ltd v Etolin Pty Ltd50 the initial registration of the disputed domain name was not in bad faith, but was subsequently found to be used in bad faith – “for spiteful reasons and/or for the reason of financial gain” when the respondent’s “handling” of the complainant’s marketing and website

45 46 47 48 49 50

the rights to use the phonewords. This conclusion is reinforced by the prices significantly in excess of the registration fees for which the respondent offered to sell the disputed domain names when approached about them. The respondent fully appreciated the monetary value associated with the disputed domain names by reason of their phoneword significance and sought to capitalize on that significance.” See for example, AAT Australian Adventure Tours Pty Ltd v Wade John t/as Top End Escapes CIArb Case No 07/01 (8 October 2007), p 7 [7.3]. Sterling Marine Pty Ltd v Etolin Pty Ltd LEADR Case No auDRP03/13 (16 April 2013). Sterling Marine Pty Ltd v Etolin Pty Ltd LEADR Case No auDRP03/13 (16 April 2013), p 2. Woopie-Do Pty Ltd v Goodwin Reading Diagnostic Centre IAMA Case No 3714 (12 April 2013). Woopie-Do Pty Ltd v Goodwin Reading Diagnostic Centre IAMA Case No 3714 (12 April 2013), pp 10-11 [76]. Sterling Marine Pty Ltd v Etolin Pty Ltd LEADR Case No auDRP03/13 (16 April 2013), p 2.

171

172

Australian Domain Name Law

[6.80]

ceased. Similarly, in Cobb International Ltd v Cobb Australia & New Zealand (Pty) Ltd,51 while the initial registration of the disputed domain name was bona fide and with the consent of the complainant (owing to an existing distributorship agreement between the parties at the time of registration), this entitlement ceased when the distributorship agreement was terminated. In KFM Properties Pty Ltd v The Trustee for the Painter Family Trust (t/as Best Western Great Ocean Road Motor Inn),52 the respondent registered the disputed domain name in contemplation of purchasing the complainant’s business – however, failed to purchase the business. The panel found that although the registration of the domain name was in good faith, the failure of the respondent to purchase the complainant’s business and transfer the domain name was held to constitute use in bad faith. Thus, while the initial relationship between the parties may indicate good faith registration on behalf of a respondent, frequently this will cease if and when the relationship fails and/or is terminated.53

Typical Types of Bad Faith Conduct Outlined in Paragraph 4(b) of auDRP [6.90] As discussed earlier in Chapter 2, paragraph 4(b) of the auDRP outlines four non-exhaustive circumstances which provide evidence of the registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii). In the words of the panel in ADHD Australia Inc v ADDults with ADHD (NSW) Inc:54 “Paragraph 4(b) is not a comprehensive definition of ’bad faith’ use for the purposes of the Policy. Conduct may be bad faith use even though it does not fall within paragraph 4(b).” The following section will discuss the four non-exhaustive circumstances under paragraph 4(b) in detail.

Paragraph 4(b)(i): Registration of Domain Name Primarily for the Purpose of Selling, Renting or Otherwise Transferring the Domain Name Registration for Valuable Consideration [6.100] On the question of when will an offer to sell, rent or otherwise transfer the domain name to another person constitute bad faith, paragraph 3.1A of the auDA auDRP Overview 1.0 provides: The general position is similar to that under the uDRP. Paragraph 4(b)(i) of the auDRP states that evidence of the registration and use of the domain name in bad faith includes circumstances indicating that the 51 52 53

54

WIPO Case No DAU2013-0005 (23 April 2013). WIPO Case No DAU2012-0023 (1 October 2012). See further Veneziano Coffee Pty Ltd v Rick Caspersen WIPO Case No DAU2012-0009 (22 May 2012); Cambridge Nutritional Foods Ltd and Cambridge Manufacturing Co Ltd v Cambridge Diet Pty Ltd WIPO Case No DAU2010-0021 (16 February 2011); Custom Building Products Inc v Stone Age (NSW) Pty Ltd WIPO Case No DAU2011-0014 (11 July 2011); US Bank National Association as trustees for the First Alert Trust v Master Distributors Unit Trust, Bradley Green WIPO Case No DAU2011-0031 (24 November 2011); Ella’s Kitchen Group Ltd, Ella’s Kitchen (Brands) Ltd, Ella’s Kitchen (IP) Ltd v Nourish Foods Pty Ltd WIPO Case No DAU2011-0036 (21 December 2011). ADHD Australia Inc v ADDults with ADHD (NSW) Inc LEADR Case No auDRP05/07 (12 June 2007), p 10 [31]. In this decision, the complainant could satisfy the first two limbs of paragraph 4(a) – but was not successful under paragraph 4(a)(iii). Interestingly, there was no response filed to the complaint in this decision.

[6.100]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

respondent registered the domain name in order to prevent the owner of a trademark or name from selling, renting or otherwise transferring the domain name registration to another person for valuable consideration in excess of out-of-pocket expenses directly related to the domain name. Unlike the equivalent provision in the uDRP, paragraph 4(b)(i) of the auDRP does not require that the respondent’s offer of transfer be to “the complainant” or “a competitor of that complainant”; an offer of transfer to any person is sufficient. auDRP panels have drawn a distinction between an offer to transfer that is unsolicited and an offer to transfer that is solicited by the complainant. Where the complainant has solicited an offer of transfer, such as by enquiring if the respondent is willing to sell the domain name, a consequential offer by the respondent to transfer the domain name is generally considered insufficient, of itself, to demonstrate bad faith on the part of the respondent. However, the presence of additional facts – such as a false statement by the respondent to the complainant about the registration and use of the domain name, or “the tone of the correspondence” between the respondent and the complainant – may support a finding that, even though the offer was solicited by the complainant, the respondent registered the domain name with the intention of selling it to the complainant.55

Finding for the complainant in PA Consulting Services Pty Ltd v Joseph Barrington-Lew56 the panel found: Correspondence from the respondent to the complainant strongly suggests that the respondent wished to sell or transfer the domain name to the complainant… for valuable consideration in excess of the respondent’s out of pocket expenses. The panel concludes that, on the balance of probabilities, that the respondent was aware of the complainant when registering the disputed domain name, and that the primary purpose of registering this domain name was to sell it to the complainant at a significant profit.

Finding for the complainant again in AW Faber-Castell (Aust) Pty Ltd v Pen City Pty Ltd / Atf Diblasi Jones Unit Trust57 the three member panel held: An offer to transfer a domain name in return for payment greater, even much greater, than the out of pocket expenses in registering would not usually lead to a finding of bad faith under the Policy where the holder of the domain name had rights or legitimate interests in the domain name under the Policy. That, however, is not the present case. As noted above, the panel has found on the record in this case that the complainant has established that the respondent does not have a right or legitimate interest in the disputed domain name. The offer for sale for a sum far in excess of the costs of registering the disputed domain name combined with the unexplained failure to use the disputed domain name for almost two years satisfies the requirements specified in paragraph 4(b)(i).

The panelist in Bendigo Community Telco Ltd v IT Co Pty Ltd58 relevantly found: The panel accepts that an unsolicited offer by the respondent to sell the disputed domain name to the complainant for such an amount might, in appropriate circumstances, be evidence that the respondent registered the disputed domain 55

56 57 58

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 20, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2003-0002 (20 May 2003). WIPO Case No DAU2013-0018 (15 August 2013). LEADR Case No auDRP04/14 (30 May 2014), p 5.

173

174

Australian Domain Name Law

[6.100]

name in bad faith. However, this is not the situation in this case… The panel is of the view that a solicited offer to sell the disputed domain name does not, of itself, establish that the respondent registered the disputed domain name in bad faith. According to the information in the case record currently before the panel, there is no evidence of any other circumstances that establish the respondent registered the disputed domain name in bad faith. Accordingly, the panel does not find that the disputed domain name has been registered in bad faith.

The auDA auDRP Overview 1.0 also cites Gloria Jean’s Coffees Holdings Pty Ltd v Jeremy Paul Cleaver,59 as a relevant decision on this point. HCOA Pty Ltd, Molescan Australia Pty Ltd v The Trustee for the Terantica Trust / Terry Lockitch,60 is a typical case where the panel was satisfied that the disputed domain name was registered in bad faith, primarily for the purpose of selling, renting, or otherwise transferring it to the complainant for valuable consideration in excess of documented out-of-pocket costs61 (and also for the purpose of using it to attract, for commercial gain, internet users to a website by creating confusion with the complainant’s trade marks). This was because in its email correspondence with the complainants representative the respondent inferred that it would consider selling the domain name to the complainants for a figure in line with its expected monthly earnings – which was far higher than its out-of-pocket costs directly related to the disputed domain name. Similarly, in McD Asia Pacific, LLC v Nicholas Zivadinovic (Sole Trader) / Zed Creative,62 the panelist was able to readily make a finding of bad faith under paragraph 4(b)(i) as the respondent was offering to sell the domain name, and also had never used the domain name nor provided any evidence of preparations to use it. [6.110] In order to satisfy this ground, evidence of a firm offer made by the respondent to transfer the domain name to the complainant for valuable consideration is required, although panels have been willing to infer the existence (or not) of bad faith in other circumstances as well. In Harness Racing Australia v Acronym Wiki Pty Ltd,63 in the absence of a response being filed the panelist held: “The panel can draw the inference from the evidence provided by the complainant that the disputed domain name was most likely registered by the respondent primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to another person for valuable consideration in excess of out-of-pocket costs directly related to the disputed domain name”. In Bose Corp and Bose Pty Ltd v AAA 01 Center WS DS Ltd,64 the panel found that the following words of the respondent’s director: “if the opportunity presents itself a commercial arrangement could be found to suit both parties” did not amount to an offer to transfer the disputed domain name for valuable consideration, but rather was aimed at an attempt to form a collaboration between the parties.65 In contrast, the panel in Statoil ASA 59 60 61

62 63 64 65

WIPO Case No DAU2007-0006 (11 November 2007). WIPO Case No DAU2013-0003 (18 April 2013). Note the panelist also held that the respondent satisfied the circumstances outlined in paragraph 4(b)(iv): that is, the domain name had been registered in bad faith for the purpose of using it to attract, for commercial gain, internet users to a website by creating confusion with the complainant’s trade marks. WIPO Case No DAU2015-0001 (15 February 2015). WIPO Case No DAU2011-0007 (13 May 2011). LEADR Case No auDRP04/13 (28 April 2013), p 6 [26]. Although in this decision, finding for the complainant, the panelist was satisfied that paragraph 4(b)(iv) was “sufficiently evidenced.” See LEADR Case No auDRP04/13

[6.110]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

v Creative Domain Pty Ltd / Christine K Hoyer66 found that the presence of the disputed domain name for sale on a separate website clearly established the circumstances outlined in paragraph 4(b)(i), and even though no price was indicated on the website the panelist held that “the words ‘make offer’ suggest that this is not an altruistic invitation to transfer the disputed domain name at cost.”67 In Rainbow Sandals Inc v Malua Point Holdings Pty Ltd, Anthony Brown / Malua Point Holdings Pty Ltd aka Malua Point Merchants,68 the panel held that the respondent’s demand for USD 60,000 for the transfer of the disputed domain name, which was an amount far beyond its out-of-pocket costs, was indicative of bad faith.69 Similarly, in Momondo A/S v Green Eye Evolvement Pty Ltd70 the panel held: The panel finds that the respondent’s actions fall squarely under paragraph 4(b)(i) above. The following facts are determinative of that finding. The term “momondo” has no meaning in the English language. There has been no use of the disputed domain name by the respondent. The respondent initiated contact with the complainant to sell the domain name to the complainant. The respondent indicated that it would sell the name to another if the complainant did not take up that purchase offer. The amount which the respondent insinuated it would be prepared to accept for the disputed domain name far exceeded out-of-pocket registration costs.

The asking price for the disputed domain name need not necessarily be excessive. As the panelist in Advanced Book Exchange Inc v Argyle Emporium71 held: Numerous panels have found that the fact that a respondent did not make an exorbitant offer to sell the disputed domain name until after contact by the complainant is immaterial. See for example, PA Consulting Services Pty Ltd v Joseph Barrington-Lew WIPO Case No DAU2003-0002 and Lusomundo – Sociedade Gestora de Parcipaçoes Sociais SA and Lusomundo Audiovisuais SA v InmoSoria and Andres Ceballos Moscoso WIPO Case No D2000-0523.

66 67 68 69

70 71

(28 April 2013), pp 6-7 [28] – [30]. See also Yaffa Publishing Group Pty Ltd v Sporting Shooters Association of Australia (Victoria) LEADR Case No auDRP15/10 (4 August 2010), pp 3-4, where the panel found for the respondent. WIPO Case No DAU2013-0012 (18 June 2013). WIPO Case No DAU2013-0012 (18 June 2013). Note the panelist was satisfied that all the other circumstances referred to in paragraph 4(b) had also been established. WIPO Case No DAU2013-0014 (7 July 2013). Similarly, see Liposonix Inc v Robert Fam, Cosmedix Pty Ltd WIPO Case No DAU20150019 (15 July 2015); ZO Skin Health Inc v PodRepairs Pty Ltd / Brian Morris and Ulla Saynajaaho WIPO Case No DAU2012-0024 (4 February 2013); ALDI Stores v Peter Gerard Colless WIPO Case No DAU2012-0032 (1 February 2013), where the panelist held that paragraphs 4(b)(ii) and 4(b)(iii) had also been met; Deutsche Lufthansa AG v Office Links Pty Ltd, Wang Degui WIPO Case No DAU2009-0005 (12 August 2009); Advanced Book Exchange Inc v Argyle Emporium WIPO Case No DAU2003-0004 (13 November 2003). WIPO Case No DAU2013-0035 (13 January 2014). WIPO Case No DAU2003-0004 (13 November 2003). See also Yingli Green Energy Australia Pty Ltd v The 12 Volt Shop LEADR Case No auDRP03/14 (30 May 2014), p 7, where the respondent’s asking price was AUD 4000. Finding that bad faith had been established under paragraph 4(b)(iv), the panelist observed: “Although, the cost of $4,000 is prima facie in excess of the respondent’s out-of- pocket costs of registering the domain name, the respondent’s statements suggest that the domain name was not registered primarily for the purpose of selling or renting but for marketing its business. It is worth noting that the respondent does in fact appear on the evidence submitted to be using the domain name to generate traffic to a number of websites.”

175

176

Australian Domain Name Law

[6.110]

Panels have also been prepared to adopt a broad view in relation to what constitutes “valuable consideration”. For example, in Telstra Corp Ltd v CQ Media Group Pty Ltd72 the panel held that the respondent: seeking to barter the disputed domain name in exchange for commercial opportunities with the complainant, does support a finding of bad faith… The respondent’s email to the Center on December 16, 2008 in which the respondent confirms an interest in transferring the disputed domain name to the complainant, and respondent’s prior conduct and communications indicate an intention to profit from the transaction that also supports a finding of bad faith (see: Telstra Corp Ltd v Mr Andy Kang WIPO Case No D2002-0832). The respondent’s failure to reply to the complainant’s second and subsequent cease and desist communications is an aggravating circumstance (see: Ebay Inc v Ebay4sex.com and Tony Caranci WIPO Case No D2000-1632).73

A panel must be satisfied that the respondent registered the disputed domain name “primarily” for the purpose of selling or transferring to another entity for valuable consideration. Panels are required to determine this question based on the evidence submitted, although “there is no requirement under the auDRP for parties to provide the panel with statutory declarations or the like in order to affirm the truthfulness of allegations made by them.”74 In Sitecore Australia Pty Ltd v WB Solutions Pty Ltd,75 the parties submitted contradictory versions of the discussion relating to the sale of the domain name for valuable consideration, and the panelist concluded that the bad faith limb had not been made out by the complainant. The panelist found that the respondent’s submissions were more persuasive as they collaborated by a third party who overheard the conversation.76 As stated previously, the circumstances outlined under paragraph 4(b) are non-exhaustive. Panels are thus at liberty to make a finding of bad faith based on the evidence submitted. As the panelist in M2 Telecommunications Group Ltd v Arun Varma77 held: Paragraph 4(b) of the auDRP Policy sets out circumstances of “evidence of the registration and use of a domain name in bad faith”. This paragraph contains four sets of example circumstances, any one of which, if established, can constitute evidence of registration in bad faith. It is important to note also that it is a non-exhaustive list of circumstances such that, for example, the panel is not necessarily constrained from a finding of bad faith should it arise (also by example) from not only any one or other of them, but from a combination of them, or indeed, upon the basis of other reliable material before the panel inclusive of the illustrated list. 72 73 74

75 76 77

WIPO Case No DAU2008-0023 (3 March 2009). Telstra Corp Ltd v CQ Media Group Pty Ltd WIPO Case No DAU2008-0023 (3 March 2009). See Provisio Technologies Pty Ltd v Brenden Thomas Rolley LEADR Case No auDRP13/10 (20 July 2010), p 8 [5.3], citing ADHD Australia Inc v ADDults with ADHD (NSW) Inc LEADR Case No auDRP05/07 (12 June 2007). LEADR Case No auDRP10/08 (20 January 2009). Sitecore Australia Pty Ltd v WB Solutions Pty Ltd LEADR Case No auDRP10/08 (20 January 2009), p 5 [7.18]. LEADR Case No auDRP11/07 (31 December 2007), p 6 [7.13]. See also The Calvin Klein Trademark Trust and Calvin Klein Inc v Yangjae Kim (t/as Primary Blue) LEADR Case No auDRP08/08 (23 December 2008), pp 4-7 [22] – [37], where the panelist found sufficient evidence of bad faith conduct to satisfy paragraphs 4(b)(i), 4(b)(ii) and 4(b)(iv), however did not agree with the complainant’s submissions that paragraph 4(b)(iii) had also been made out.

[6.120]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

Thus, facts and circumstances that are considered to be bad faith conduct under the other subparagraphs of 4(b) may also lead to a finding of bad faith under paragraph 4(b)(i). To illustrate, in M2 Telecommunications Group Ltd v Arun Varma78 the panelist found the following to be evidence of bad faith conduct to satisfy paragraph 4(b)(i) – although arguably, a finding could also have been made under paragraphs 4(b)(ii) and/or 4(b)(iii): (i) The respondent never used the domain name to display a website in relation to sale of goods or services or for any other reason. (ii) The respondent initially rejected a reasonable offer made by an agent of the complainant as not being appropriate, and then later attempted to accept the offer by an email after the complaint for the present proceeding was filed. (iii) The complainant has successfully developed a business based on the trade marks “GREEN MOBILE” and “GREEN MOBILES” and the respondent attempted to use the domain name in a manner to prevent the complainant from legitimately using it.79

Paragraph 4(b)(ii): Registration of a Domain Name in Order to Prevent the Owner of a Name, Trade Mark or Service Mark from Reflecting that Name or Mark in a Corresponding Domain Name [6.120] On the issue of when will conduct preventing a trade mark or name holder from reflecting the mark or name in a corresponding domain name constitute bad faith, paragraph 3.1B of the auDA auDRP Overview 1.0 states: The general position is similar to that under the uDRP. Paragraph 4(b)(ii) of the auDRP states that evidence of the registration and use of the domain name in bad faith includes the respondent registering the domain name in order to prevent the owner of a trademark or name from reflecting that mark or name in a corresponding domain name. Unlike the equivalent provision in the uDRP, paragraph 4(b)(ii) of the auDRP does not require that the respondent has “engaged in a pattern of such conduct” [see paragraph 3.3]. There is an obvious potential for a respondent’s conduct to fall simultaneously within both this paragraph and paragraph 4(b)(iii) of the Policy, since a domain name registration that prevents the complainant from reflecting its mark or name in a domain name may well have been done to disrupt the business activities of that complainant [see paragraph 3.1C]. auDRP panels generally have found that registration of a domain name which consists solely (once the second-level and top-level domain extensions are ignored) of the complainant’s trademark or name has the effect of preventing the complainant from reflecting its mark or name in that domain name – and hence is evidence of bad faith.80 78 79 80

M2 Telecommunications Group Ltd v Arun Varma LEADR Case No auDRP11/07 (31 December 2007). M2 Telecommunications Group Ltd v Arun Varma LEADR Case No auDRP11/07 (31 December 2007), pp 6-7 [7.15]. Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, pp 20-21, http:// www.auda.org.au/assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf.

177

178

Australian Domain Name Law

[6.120]

The auDA auDRP Overview 1.0 cites the following as relevant decisions on this issue: Arena Entertainment Pty Ltd v Alex Haddad;81 The Calvin Klein Trademark Trust and Calvin Klein Inc v Yangjae Kim (t/as Primary Blue);82Bernard Janes v LJ Bubenicek & A J Main, A&L Technologies;83 and Statoil ASA v Creative Domain Pty Ltd / Christine K Hoyer.84 The second limb of paragraph 4(b) covers instances of deliberate cybersquatting aimed at preventing the person or entity with rights or legitimate interests in a particular name or mark from reflecting that name or mark in the form of a domain name.85 While paragraph 4(b)(ii) of the auDRP does not refer to the respondent’s “pattern of conduct” (unlike the uDRP), auDRP decisions have also referred to the respondent’s pattern of conduct for the purposes of indicating bad faith registration and/or use. For example, in L’Oreal / L’Oreal Australia Pty v Namewise Pty Ltd / Nicholas Bolton the panel observed: the complainant has provided damning evidence that the respondent has been involved in a pattern of abusive registration, infringement and cybersquatting. WhoIs entries show that the respondent has registered many domain names incorporating famous and distinctive trademarks such as: “BLACKBERRY”, “CHANEL”, “FACEBOOK”, “HOTMAIL”, “MACBOOK”, “MARVEL”, “MTV”, “NINTENDO”, “STAR-WARS” and “TWITTER”. The panel accepts that this constitutes a “pattern of conduct” of both the registration and use of a domain names to prevent the owner of that name, trademark or service mark from reflecting that name or mark in a corresponding domain name.86

In cases where the respondent has registered more than one domain name that corresponds to the complainant’s name or mark – without making any legitimate use of the domain names, the inference of bad faith is greater as here the pattern of conduct relates to the complainant itself.87 A good example of this proposition is Woolworths Ltd v Cracka IP Pty Ltd,88 where the respondent had registered eight domain names comprising the complainant’s mark: 81 82 83 84 85

86

87

88

LEADR Case No auDRP05/05 (27 June 2005). LEADR Case No auDRP08/08 (23 December 2008). WIPO Case No DAU2010-0014 (6 September 2010). WIPO Case No DAU2013-0012 (18 June 2013). See, for example, Transport Workers Union of NSW and Transport Workers Union of Australia Federal Branch v National Union of Workers NSW Branch IAMA Case No 3348 (27 October 2009), p 3 [23]–[27]; Hytorc South Pacific Pty Ltd v Byron Howell IAMA Case No 2865 (9 November 2005), pp 11-12 [7.18] – [7.19]. WIPO Case No DAU2013-0009 (23 May 2013). For other examples of decisions referring to the respondent’s “pattern of conduct” being indicative of bad faith, see Statoil ASA v Creative Domain Pty Ltd / Christine K Hoyer WIPO Case No DAU2013-0012 (18 June 2013); FreeTV Australia Ltd v Domain Services Pty Ltd LEADR Case No auDRP13/06 (20 November 2006), p 5 [5.14]; Woolworths Ltd v Cracka IP Pty Ltd WIPO Case No DAU2011-0028 (8 December 2011), where the panelist held: “the panel has considered whether the involvement of the respondent in previous cases under the Policy resulting in the transfer of four domain names is sufficient to establish a ’pattern of conduct’ for the purpose of paragraph 4(b)(ii). The panel notes that only one of these cases proceeded to a decision (see, Woolworths Ltd v Cracka IP Pty Ltd, Calvie Brodie WIPO Case No D2011-1574). The panel finds that a ‘pattern’ is evident having regard to the number of transfers: see Mobile Communication Service Inc v WebReg, RN, supra; Centron GmbH v Michele Dinoia WIPO Case No D2006-0915). The pattern is not the product of mere inadvertence but evidence of bad faith.” See for example, Marshmallow Skins Inc v Piipiinoo Australia Pty Ltd WIPO Case No DAU2013-0015 (24 June 2013); GM Holden Ltd v Bradley John Lawless WIPO Case No DAU2010-0010 (23 May 2010). WIPO Case No DAU2011-0028 (8 December 2011).

[6.120]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

The volume of names registered by the respondent, the unlikelihood that registering eight domain names containing the complainant’s trademarks or phonetic equivalents on the same day was pure coincidence and the apparent lack of any good faith attempt to ascertain whether or not the respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see, Mobile Communication Service Inc v WebReg RN WIPO Case No D2005-1304; L’Oréal v Domain Park Ltd WIPO Case No D2008-0072; Bouygues v Chengzhang, Lu Ciagao WIPO Case No D2007-1325; Media General Communications Inc.v Rarenames, Webreg WIPO Case No D2006-0964; Grundfos A/S v Texas International Property Associates WIPO Case No D2007-1448; mVisible Technologies Inc v Navigation Catalyst Systems Inc WIPO Case No D2007-1141).89

Evidence of a respondent’s intention to preclude a complainant from reflecting its mark in a domain name might also arise out of the respondent’s knowledge of the reputation of the complainant, and its possible future entry in to the Australian market. Thus, in Asos PIc v Ceravolo Premium Wines Pty Ltd,90 the panel noted the likelihood that Mr Ceravolo was familiar with the complainant’s trade mark from his time working in the United Kingdom, and with his involvement in media and online companies as an investment banker he would probably have been aware of the activities of the complainant as a listed company. Further, it is likely that he would have been aware that a successful business would wish to reflect its trade mark in a corresponding Australian domain name in due course. Thus, the learned three member panel found that the disputed domain name had been registered and subsequently used in bad faith under paragraph 4(b)(ii) (and also paragraph 4(b)(iv)) of the auDRP. Where the complainant previously registered and used the disputed domain name, the respondent’s subsequent registration of the domain name may lead to the conclusion that it was done so to prevent the complainant from reflecting its mark or name in the relevant domain name.91 However, this may not apply where a complainant is unable to reflect its name or mark in a “.com.au” when it had already registered a “.com” – and had opportunity to register a “.com.au” corresponding to the “.com” domain name – as was the case in Genuine Benefits Pty Ltd v Mr Justin Hankinson92 where the panel held: the complainant had already registered the domain name “www.buyaustralian.com” before the disputed domain name was registered. The situation at which paragraph 4(b)(ii) of the Policy is directed is one in which a respondent has registered a domain name for the purpose of preventing the owner of a name, trade mark or service mark from reflecting that name, trade mark or service mark in a corresponding domain name. It is not directed at the situation where, as here, a complainant previously registered its own domain name and complains about the respondent’s subsequent registration of a similar domain name which the complainant could have registered in the first place, had it chosen to do so. 89 90 91

92

Woolworths Ltd v Cracka IP Pty Ltd WIPO Case No DAU2011-0028 (8 December 2011). Case No DAU2012-0016 (19 September 2012). Tina Arena v Enigmatic Minds Pty Ltd LEADR Case No auDRP01/07 (17 March 2007), p 18. Note that the panelist found bad faith under each of the other elements in paragraph 4(b) as well. Genuine Benefits Pty Ltd v Mr Justin Hankinson LEADR Case No auDRP08/06 (23 August 2006), p 18 [6.19].

179

180

Australian Domain Name Law

[6.120]

Of course, where a complainant’s “.com” domain name is well known in the relevant market, it would arguably be more difficult for a respondent to demonstrate rights or legitimate interests in the corresponding “.com.au” domain name with respect to the issue of bad faith.93

Paragraph 4(b)(iii): Registration of a Domain Name Primarily for the Purpose of Disrupting the Business or Activities of Another Person [6.130] On the question of when will disruption of the business or activities of another person constitute bad faith, paragraph 3.1C of the auDA auDRP Overview 1.0 provides: The general position is similar to that under the uDRP. Paragraph 4(b)(iii) of the auDRP states that evidence of the registration and use of the domain name in bad faith includes the respondent registering the domain name primarily for the purpose of disrupting the business or activities of another person. Unlike the equivalent provision in the uDRP, paragraph 4(b)(iii) of the auDRP does not require that the respondent has disrupted the business of a “competitor”; it is sufficient that the business or activities of any other person are disrupted. There is an obvious potential for a respondent’s conduct to fall simultaneously within both this paragraph and paragraph 4(b)(ii) of the Policy, since a domain name registration done to disrupt the business activities of the complainant could also be a registration which prevents that complainant from reflecting its mark in a domain name [see paragraph 3.1B]. auDRP panels have generally found that registration of a domain name that contains the complainant’s trademark or name has the effect of disrupting the business of the complainant, so long as the complainant is actively involved in business in Australia. In at least one case, the panel found there was disruption even though the complainant did not have a substantial business presence in Australia, in the special circumstances of the complainant planning to expand its business to Australia, this fact being known to the respondent, the respondent registering the domain name in the same year as the planned expansion, and the respondent being a competitor of the complainant in the overseas jurisdiction where the complainant was based.94

The auDA auDRP Overview 1.0 cites the following as relevant decisions on this issue: Arena Entertainment Pty Ltd v Alex Haddad;95Insure & Go Insurance Services Ltd v CoverDirect Pty Ltd;96 Bernard Janes v LJ Bubenicek & A J Main, A&L Technologies;97 and Statoil ASA v Creative Domain Pty Ltd / Christine K Hoyer.98 Under paragraph 4(b)(iii) of the auDRP, panels typically look to the issue of whether there is a legitimate business relationship between the parties. For 93

94

95 96 97 98

See for example, Arena Entertainment Pty Ltd v Alex Haddad LEADR Case No auDRP05/05 (27 June 2005), pp 7-8 [6.14] – [6.18], in relation to the disputed domain name “rnbsuperclub.com.au”; Camper Trailers WA Pty Ltd v Off Road Equipment Pty Ltd LEADR Case No auDRP06/04 (12 November 2004), pp 9-10 [6.26]. Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 21, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. LEADR Case No auDRP05/05 (27 June 2005). WIPO Case No DAU2008-0019 (15 December 2008). WIPO Case No DAU2010-0014 (6 September 2010). WIPO Case No DAU2013-0012 (18 June 2013).

[6.140]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

example, the panel decided this issue in the negative in Moroccanoil Israel Ltd v Olly and Associates Pty Ltd,99 where it was found that the respondent was both disrupting the complainant’s legitimate activities and attracting users by creating confusion between their products and those of the complainant. Similarly, in HMAS Sydney Search Pty Ltd as Trustee for the Finding Sydney Foundation v PCMail Pty Ltd,100 the panel found that bad faith had been established under paragraph 4(b)(iii) because of the lack of a legitimate business relationship between the parties and the respondent creating a false impression that a connection existed with the complainant. In FreeTV Australia Ltd v Domain Services Pty Ltd101 the three member panel unanimously held that bad faith under paragraph 4(b)(iii) had been made out because the registration of the domain name was disruptive to the legitimate business activities of the complainant. With respect to how panels have construed the term “another person”, the panel in Horwitz Publications Pty Ltd v Majella Gai Gall102 interpreted the words to include an entity other than the complainant – such as a foreign corporation that had granted the complainant an exclusive license to use its trade marks in Australia.

Paragraph 4(b)(iv): By using the Domain Name, the Respondent has Intentionally Attempted to Attract, for Commercial Gain, Internet Users to a Website or Other Online Location, 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 Location or of a Product or Service on that Website or Location [6.140] On the issue of when will use of the domain name to attract internet users to a website or other online location constitute bad faith, paragraph 3.1D of the auDA auDRP Overview 1.0 states: The position is the same as that under the uDRP. Paragraph 4(b)(iv) of the auDRP, like the equivalent provision in the uDRP, states that evidence of the registration and use of the domain name in bad faith includes the respondent using the domain name to intentionally attract, for commercial gain, internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s mark or name as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service thereon. Where a domain name is identical or confusingly similar to a trademark or name in which the complainant has rights, auDRP panels typically find that use of the domain name by the respondent to resolve to a website – whether of the respondent or some third party – is use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.103 99 100 101 102 103

LEADR Case No auDRP11/12 (7 December 2012), pp 3-4 [8.1]. LEADR Case No auDRP10/07 (13 December 2007), p 5. LEADR Case No auDRP13/06 (20 November 2006), p 5 [5.15]. LEADR Case No auDRP10/06 (24 October 2006), p 4 [5.12]. Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, pp 21-22, http:// www.auda.org.au/assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf.

181

182

Australian Domain Name Law

[6.140]

The auDA auDRP Overview 1.0 cites the following decisions to be relevant on this question: GlobalCenter Pty Ltd v Global Domain Hosting Pty Ltd,104 and National Office for the Information Economy v Verisign Australia Ltd.105 Both these decisions are considered further below. The fourth of the four circumstances is probably the widest of the four limbs in paragraph 4(b). This is because the reference here is to a domain name’s “use” rather than its “registration” – unlike the other three limbs, and therefore is capable of capturing both the registration as well as the post-registration use of the domain name.106 In the words of the panelist in Bose Corp and Bose Pty Ltd v AAA 01 Center WS DS Ltd107 (finding for the complainant that paragraph 4(b)(iv) was “sufficiently evidenced”): The fourth element is evidenced by the processes the respondent has used the site. It acts to direct traffic to its other sites, and also was intended to generate revenue by securing information relevant to marketing of the products of the complainant. It is relevant to record that, in my view, websites that host forums, product reviews and the like do not axiomatically offend the forth element of the current limb. However, by utilising the name in which the rights were properly and lawfully held by the complainant, the respondent sought to and probably did, secure a commercial advantage. It does not alter the force of the relevant codes that establish entitlement, that subsequent to registration, the respondent has sought to put commercial propositions to the complainant. For the first two limbs some element rests on the intention at the time of registration. The current limb in the fourth element deals with actions after the registration and in this regard, all material before me, including the respondent’s submissions are supportive of commercial gain for the respondent.108

This fourth limb is frequently relied on where the complainant and the respondent are competitors in a common field of activity.109 In the decisions discussed in this section, complainants typically are able to succeed under this limb where they can demonstrate that the intention of the respondent was to direct traffic from the complainant’s website to its own, or to exploit the confusing similarity between the complainant’s name or mark and the disputed domain name in order to gain a commercial advantage. In Just Car Finance Pty 104 105 106

107 108 109

WIPO Case No DAU2002-0001 (5 March 2003). National Office for the Information Economy v Verisign Australia Ltd LEADR Case No auDRP02/03 (26 June 2003). See Smart Voucher Ltd t/as Ukash v Chowdhury, MD Abu Russel and Sydney Business & Technology Group Pty Ltd WIPO Case No DAU2013-0006 (8 May 2013), where panelist held that paragraph 4(b)(iv) of the auDRP “is the single scenario linked to the act of use rather than the act of registration”. See also Informa Australia Pty Ltd v Equipment Research Group Pty Ltd LEADR Case No auDRP23/10 (3 March 2011), p 12 [7.2(iv)]. LEADR Case No auDRP04/13 (28 April 2013). LEADR Case No auDRP04/13 (28 April 2013), pp 6-7 [29] – [30]. See for example, Adultshop.com Pty Ltd v Josh Marsden, Importa Pty Ltd WIPO Case No DAU2015-0002 (13 March 2015), where both the complainant and the respondent were in the adult sex industry, providing a range of goods and services relating to adult sex toys; H-D USA LLC v Queensland Performance Pty Ltd aka Shadex Industries P/L WIPO Case No DAU2014-0038 (12 February 2015), where both parties sold Harley Davidson motorcycles; Freelife International Holdings LLC and Freelife International Australia Pty Ltd v Wealth Creators Australia Ltd, Corey Allan Sievers and Linda May Barker LEADR Case No auDRP03/08 (17 October 2008), where the parties were in the health and wellness product industries; United Business Media LLC v 4 Square Media Pty Ltd WIPO Case No DAU2008-0008 (2 July 2008), where the parties were media companies; 3M Australia Pty Ltd and 3M Co v Phillip Brumby LEADR Case No auDRP06/07 (17 July 2007), where both parties sold stethoscopes.

[6.140]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

Ltd v Aussie Pty Ltd,110 the panelist made a finding of bad faith under paragraph 4(b)(iv) and held: “The likelihood of confusion comprises the probability that the consumers accessing the disputed domain name would expect to be directed to the complainant’s website, not the respondent’s.” Similarly, finding for the complainant under paragraph 4(b)(iv) (and also paragraph 4(b)(ii)) in Roses Only and Lush Flowers Pty Ltd v Flowers On the Net Pty Ltd,111 the panelist made the following observations with respect to this fourth limb: Paragraph 4(b)(iv) of the Policy requires a complainant to firstly establish that the respondent has intentionally attempted to attract internet users to a website. The internet users must be attracted for the purpose of commercial gain and through the use of the domain name. This was clearly the intention of the respondent: the domain name has been used to divert customers to the “flowers.com.au” website. Secondly, the attraction must have been effected by “creating a likelihood of confusion with the complainant’s name or mark”. The respondent specifically addressed this issue. It contended that its activities could not fall within the language of paragraph 4(b)(iv) as the complainant had not established any likelihood of confusion in the minds of members of the public between the domain name and the complainant’s roses only business or the trade mark. The respondent referred to the passage in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre (1978) 140 CLR 216 at p229 where Stephen J warned of the dangers of having a name which is descriptive of the nature of the business – the name might legitimately be used to describe a number of businesses. In the present case, however, the respondent already had the domain name “flowers.com.au”, which is descriptive of the nature of the business carried on through that site. The addition of the expression “only” does not make the domain name more descriptive than “flower.com.au”. One might ask “why would a member of the public bother to enter ‘flowersonly’ or ‘flowersonly.com.au’ in a search engine or net browser rather than ‘flowers’ or ‘flowers.com.au?’” I consider that a likely reason would be some recollection of the complainant’s business, and, in particular the repeated use of “only” in relation to its products. Where this recollection existed, there would also be confusion, at least, about the link or affiliation between the domain name and the complainant’s business.

In Ink King v CamerasDirect.com.au Pty Ltd,112 the panel was satisfied that paragraph 4(b)(iv) had been made out because of the following: (a) in the absence of any response by the respondent, the panel accepts the complainant’s contention that the reputation of the complainant in its registered business name of “Ink King” is sufficient to establish that the respondent would have been aware of the complainant and viewed the complainant as a competitor; (b) as noted in paragraph 6.17(a) of this decision, the complainant and the respondent are both businesses based in Queensland which sell printer ink cartridges and refill kits and, in these circumstances, the respondent’s use of the disputed domain name, which is essentially identical to the complainant’s registered business name of “Ink King”, is colourable; (c) indeed, it is telling to ask whether, had the respondent and the complainant not been competitors, the respondent would have registered the disputed domain name as opposed to some other domain name: compare Camper 110 111 112

LEADR Case No auDRP08/05 (15 August 2005), p 9 [6.25]. LEADR Case No auDRP05/06 (16 June 2006), p 13 [44] – [45]. LEADR Case No auDRP01/05 (6 April 2005), pp 10-11 [6.30].

183

184

Australian Domain Name Law

[6.140]

Trailers WA Pty Ltd (cited at paragraph 6.7(a) of this decision). This is especially so when one considers that the word “king” is not in any way descriptive of the relevant goods (printer ink cartridges and refill kits). This makes it inherently unlikely that the respondent would, by a mere coincidence, have chosen a domain name identical to the complainant’s business name and used it in relation to similar goods: compare Overture Services (cited at paragraph 6.7(b) of this decision); (d) the complainant put forward some evidence that the respondent has registered other domain names which are identical or confusing similar to names, trade marks or service marks in which parties other than the respondent have rights and in respect of which the respondent has no rights. In that regard, the complainant relied on a decision of Jonathan Sumption QC (sitting a Deputy Judge of the English High Court in Marks & Spencer Plc & Ors v One in a Million Ltd & Ors [1998] FSR 265 (affd. sub nom British Telecommunications Plc & Ors v One in a Million Ltd & Ors [1999] 1 WLR 903). In that case, however, the evidence established that the defendant had registered numerous domain names comprising the names or trade marks of well known commercial enterprises without the consent of those enterprises and, in some cases, had offered to sell the domain names to those enterprises. In short, the One in a Million case was a clear case of “cyber-squatting” and evidence of the nature and extent which existed in that case is not present here. Nevertheless, in the absence of any response by the respondent to this contention (which was put fairly and squarely by the complainant) the panel considers that there is credible evidence to show that the respondent has created other domain names which are identical or confusingly similar to names, trade marks or service marks in which parties other than the respondent (including the complainant or its related entities) have rights and in respect of which the respondent has no rights; (e) upon examining the long list of other domain names registered by the respondent (as detailed in the complaint), the overwhelming majority of them use the open 2LD “com.au”. It is telling to note, however, that respondent uncharacteristically used the open 2LD “net.au” to register the disputed domain name. It also happens to have used the open 2LD “net.au” to register the domain name “inkcartridges.net.au” which is identical or confusingly similar to “inkcartridges.com.au” (another domain name owned Broko Investments). In the absence of any explanation from the respondent, these circumstances entitle the panel to infer that the respondent chose to use the open 2LD “net.au” to register the disputed domain name because it knew that the domain name “ink-king.com.au” had already been registered in connection with the complainant’s business. The panel considers that it is appropriate to draw that inference in the circumstances of this case; (f) as a general matter, the respondent failed to respond to the complainant’s contentions and paragraph 14(b) of the Rules provides that the panel “shall draw such inferences” from the respondent’s failure to comply with the Rules “as it considers appropriate”. In this case the complainant set out in detail the reasons for its contention that the respondent’s registration and use of the disputed domain name were in bad faith. If the respondent had been in a position to rebut the complainant’s contentions, it is reasonable to assume that it would have done so. The respondent’s failure to respond in any way to the complainant’s contentions justifies the drawing of inferences such as those referred to above which amply support the conclusion that the respondent has registered and used the disputed domain name in bad faith.

[6.150]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

In Yola Inc v Aaron John Peter Johnson / Aaron Johnson,113 the panel found bad faith on the part of the respondent for the following reasons: the panel considers that it is improbable that the respondent would not have been aware of the complainant and its name or mark when it obtained registration of the disputed domain name in April 2009. It is difficult to avoid the impression that the respondent registered the disputed domain name for the purposes described in paragraph 4(b)(iv) of the Policy which are: that the respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, internet users to the respondent’s web site, by creating a likelihood of confusion with the complainant’s name or mark. Under the Policy, this constitutes evidence of bad faith registration and use. See for example, Gerd Petrik v Johnny Carpela WIPO Case No D2004-1043; Nokia Corp v Nokia Ringtones & Logos Hotline WIPO Case No D2001-1101.

In Beachbody LLC v Pan Wei Hong114 the panel accepted the complainant’s evidence of the screenshots of the webpages which corresponded with the disputed domain name. Further: The panel notes that those pages directly lift images from the complainant’s official website. The very purpose of the resolving website in this case is commercial gain. In terms of paragraph 4(b)(iv) of the Policy, the panel finds that the respondent is using the disputed domain name to attract, for commercial gain, internet users to the respondent’s website by creating a likelihood of confusion with the complainant’s trade mark.

[6.150] Bad faith might also be found where a respondent intentionally misleads consumers by utilising confusingly similar product labels (that are similar to those on the complainant’s website) in the resolving website.115 Similarly in Virtual Industries Group Ltd v Mr Simon Totonjian, 116 bad faith was found on the part of the respondent in relation to one of the disputed domain names in that decision (“schoolinterviews.net.au”) because of the respondent’s adoption of colours and layout in its resolving website that were very similar to the colours and layout to be found in the complainant’s website. In David Harry Birch and Judith Alison Birch t/as Aussie Soap Supplies v Yvonne Tracey Cowell t/as Aussie Soap Supply117 the respondent went much further than merely adopting a similar feel to that of the complainant’s website. Here the panel observed: The complainants’ evidence demonstrates quite convincingly that the respondent has engaged in a pattern of deliberate if not malicious conduct that comprised the placing of orders for products from the complainants over a period of some two months from April 2009, the downloading of many of the recipes and soapmaking instructional material that the complainants make available on their website to their customers, and the adoption of a look and feel for the respondent’s deceptively named Aussie Soap Supply online store that was strongly redolent of the complainants’ Aussie Soap Supplies store. The evidence includes examples of consumers being misled to the point of engaging in communications with the respondent in circumstances where it was perfectly obvious that she had been mistaken for the complainants, and in which a reasonable and honest person 113 114 115

116 117

WIPO Case No DAU2010-0017 (3 November 2010). WIPO Case No DAU2013-0020 (11 September 2013). See for example, Thompsons, Kelly & Lewis Pty Ltd t/as Flowserve Pump Division Australia v DNS Advertising Pty Ltd CIArb Case No 08/01 (24 March 2008), p 6 [7.3.3] – [7.3.4]. LEADR Case No auDRP03/12 (22 May 2012), p 28 [19.4]. LEADR Case No auDRP 22/10 (21 February 2011).

185

186

Australian Domain Name Law

[6.150]

would be expected to have put the consumer in touch with the complainants (with whose business the respondent was very well acquainted). The respondent in fact continued to engage with people to the point where orders intended for the complainants were placed with the respondent and paid for but not delivered on time or at all. When the complainants received complaints about “their” poor service it quickly became apparent that it was the respondent’s deceptive if not dishonest conduct that was responsible.118

Although in determining bad faith registration or use the circumstances set out in paragraph 4(b) of the auDRP are useful, panels have often looked at the overall conduct of a respondent in determining the existence of bad faith. In this sense the conduct of the respondent should not be strictly compartmentalised, and its conduct may relate to one or more of the circumstances in paragraph 4(b),119 or may independently lead to evidence of bad faith.120 To 118 119

120

David Harry Birch and Judith Alison Birch t/as Aussie Soap Supplies v Yvonne Tracey Cowell t/as Aussie Soap Supply LEADR Case No auDRP 22/10 (21 February 2011), pp 5-6. For example, see De Beers UK Limited v Scott van Iperen WIPO Case No DAU2016-0004 (24 March 2016), where the panelist found bad faith under paragraph 4(b)(i) and paragraph 4(b)(iv); Federation Tuck Pointing (WA) Pty Ltd ACN 079 825 291 v Brick and Mortar Restorations Pty Ltd ACN 602 844 682 LEADR Case No auDRP06/15 (28 July 2015), p 5 [8.12] – [8.13], where the panelist found bad faith under paragraph 4(b)(iii) and paragraph 4(b)(iv); Banque Pictet & Cie SA v Alan Meltzer WIPO Case No DAU2015-0017 (18 June 2015), where the panelist found bad faith under paragraph 4(b)(i) and paragraph 4(b)(iv); Elite Licensing Co SA v Michael Francis t/as Elite Model Management Australia WIPO Case No DAU2015-0007 (21 April 2015), where the panelist found bad faith under paragraph 4(b)(ii), paragraph 4(b)(iii), and paragraph 4(b)(iv); Messages on Hold Australia Pty Ltd v Media Group Pty Ltd LEADR Case No auDRP14/14 (5 January 2015), p 5, where the panelist found bad faith under paragraph 4(b)(ii), paragraph 4(b)(iii), and paragraph 4(b)(iv); LJ Hooker Corp Ltd v ASHI Pty Ltd LEADR Case No auDRP05/14 (29 June 2014), pp 8-9 [23], where the panelist found bad faith under paragraph 4(b)(i), paragraph 4(b)(ii), and paragraph 4(b)(iii); Blueline Hygienics Pty Ltd v I Like It Pty Ltd LEADR Case No auDRP02/14 (7 April 2014), where the panelist found bad faith under paragraph 4(b)(ii), paragraph 4(b)(iii), and paragraph 4(b)(iv); Ecohort Pty Ltd v Earth Repair and Restoration Pty Ltd LEADR Case No auDRP 09/07 (6 September 2007), p 6 [6.18] – [6.19], where the panelist found bad faith under paragraph 4(b)(ii) and paragraph 4(b)(iv); Skyrail Pty Ltd v William Albert Birch and Denise Lesley IAMA Case No 2959 (4 July 2006), where the panelist found bad faith under each of the subparagraphs of 4(b); Hytorc South Pacific Pty Ltd v Byron Howell IAMA Case No 2865 (9 November 2005), pp 11-12 [7.18] – [7.19], where the panelist found bad faith under paragraph 4(b)(ii) and paragraph 4(b)(iii). For example, see Fiskars Corp v Domenic Carosa, Domain Folio 1 Pty Ltd WIPO Case No DAU2015-0025 (7 August 2015), where the panelist cited the following passage from Google Inc v Dmitri Rytsk WIPO Case No DAU2007-0004 (8 August 2007) with approval, describing “a general type of bad faith”: “The complainant does not rely specifically on these criteria, but rather on a general notion of bad faith which it is entitled to do. It contends that it can be concluded that the respondent intended to register or use the domain name in bad faith because the GOOGLE trade mark is so distinctive that the respondent must have intended to ‘trade off’ the complainant’s rights in that mark. Further, the complainant says that it is significant that the respondent is using his domain name and website to offer the same services as the complainant, thus increasing the chances of confusion.” See also Allmedic Pty Ltd v AJ Dixon Pty Ltd LEADR Case No auDRP05/09 (12 August 2009), p 33 [8.33]. The panelist in Jaguar Land Rover Ltd v Downshire Motors (Service) Pty Ltd WIPO Case No DAU2015-0039 (14 December 2015) also observed: “the respondent has since the registration of the disputed domain name in 2011 done nothing to establish use in good faith. Given the nature of the disputed domain name, it was in any case unlikely to be able to obtain that result.” Similarly, the panelist in Questionmark Computing Ltd v Question Mark Solutions Pty Ltd WIPO Case No DAU2015-0038 (15 December 2015) held: “It appears to the panel that the respondent has subsequently contrived excuses and reasons not to transfer the disputed domain name in terms of the agreement. It has done so for its own ends, whatever they may be and on repeated occasions. This is not legitimate

[6.150]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

illustrate, the panel in The National Office for the Information Economy v Verisign Australia Ltd121 made the following observations in relation to bad faith: The panel’s strong impression is that the respondent registered the disputed domain and re-directed it to “verisign.com.au/gatekeeper” so that relevant consumers would believe that the respondent was the sole supplier of digital certificates under the complainant’s scheme. The panel is satisfied that the complainant has established that by using the disputed domain, the respondent has intentionally attempted to attract, for commercial gain, interest users to the respondent’s website “verisign.com.au/gatekeeper”, by creating a likelihood of confusion with the complainant’s trade mark as to some sponsorship, affiliation and endorsement of that website. The respondent, as a result of being granted accreditation by the complainant, is only granted the right to state that it can supply Gatekeeper-compliant digital certificates. The respondent is not granted the right to use the name Gatekeeper as a badge of origin or title, which its use in the disputed domain must have been calculated to achieve. Even if one could charitably take the view that the respondent’s conduct was honestly misconceived rather than “sharp” and disingenuous, the auDRP allows the circumstances which the complainant has shown here to prevail to be taken as conclusive proof that paragraph 4(a)(iii) of the auDRP has been made out, and the panel so finds.

It should be noted that in order to find bad faith use, it is not necessary for a respondent to personally derive commercial benefit from the registration of the domain name. It is sufficient to demonstrate that the respondent is infringing a complainant’s rights on the basis that it is allowing a third party to reap the profits of its wrongful conduct. As the panel held in Pickles Auctions Pty Ltd v Complete Hire Pty Ltd:122 The respondent seeks to distance itself from the sponsored link portal, claiming to have been unaware of the sponsored links and unsure how this occurred, saying that it did not instruct the registrar to undertake this activity. The respondent also denies receiving a fee or reward from the registrar or any other party. These facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons, as stated in Villeroy & Boch AG v Mario Pingerna WIPO Case No D2007-1912: “(i) paragraph 4(b)(iv) requires the respondent to intend to attract internet users ‘for commercial gain’, but this gain does not need to be derived by the respondent himself. The respondent cannot infringe the complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the respondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the registrar to remove the parking page.”

Pepper Australia Pty Ltd v Massive Networks Pty Ltd, Scott Julian123 is an interesting decision. The panel found that the domain name had not been registered in bad faith. The disputed domain name could not be traced to the

121 122 123

or acceptable commercial behaviour and parties in these circumstances cannot just impose conditions upon conditions before choosing to comply with their admitted contractual obligations, ie it is not good faith use of the disputed domain name by the respondent for the purposes of the Policy. In the panel’s view, this sort of conduct amounts to a form of cybersquatting in bad faith and as a result the panel finds that the complaint also succeeds under the third element of the Policy.” National Office for the Information Economy v Verisign Australia Ltd LEADR Case No auDRP02/03 (26 June 2003), p 11 [6.3]. Pickles Auctions Pty Ltd v Complete Hire Pty Ltd WIPO Case No DAU2012-0005 (16 April 2012). WIPO Case No DAU2012-0007 (24 April 2012).

187

188

Australian Domain Name Law

[6.150]

respondent – as that person or company no longer existed. Based on the evidence, the panel found that: “The website to which the disputed domain names resolves directs a visitor to travel agency offers and products and appears to have no connection to the respondent or anyone connected to it.” Nevertheless, the panel still concluded that the disputed domain name was being used in bad faith by the “unidentified person or company”. Similarly, in EFG Nominees Pty Ltd v Lenland Property Development Pty Ltd,124 the identity of the domain name registrant was unclear, and the panel made the following observations: Self-evidently the panel could not reach any finding that the respondent had registered or subsequently used the disputed domain name in bad faith. However, the Policy does not require such a finding for the third element to be made good. All that is required is a finding that the disputed domain name was registered or was subsequently used in bad faith without the need for a finding that the bad faith conduct was that of the respondent.

Use in Bad Faith – Passive Holding Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or to contact the trade mark holder (passive holding)?

[6.160] On this issue, paragraph 3.2 of the auDA auDRP Overview 1.0 states: The position is the same as that under the uDRP. auDRP panels have found that a passive holding of the domain name (that is, an apparent lack of active use of the domain name – for example, to resolve to a website – without any active attempt to sell or to contact the trademark holder about the domain name), does not, as such, prevent a finding of bad faith. The panel will examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances indicative of bad faith include the complainant having a wellknown trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith from the circumstances surrounding the domain name’s registration, and vice versa. Where the domain name is initially registered in good faith pursuant to an agreement (for example, distributorship) between the complainant and respondent, and the respondent passively retains the domain name after the agreement concludes, this may constitute use in bad faith. This is particularly so if the domain name is seen as being retained by the respondent to assist in its negotiations over a dispute with the complainant.125

Finding that the respondent had used the complainant’s “good name” primarily for the purpose of commercial gain, the panelist in Supre Pty Ltd v Paul King126 held: The facts are that the respondent registered the domain name but, so far as is known, he has never used it for an active website. When he has not been using it to 124 125

126

EFG Nominees Pty Ltd v Lenland Property Development Pty Ltd IAMA Case No 3658 (12 October 2012), p 6-7 [C]. Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 22, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2004-0006 (22 December 2004).

[6.160]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

divert traffic to other websites, he has simply held it passively, thus preventing others from taking up the name and putting it to good use.

In Produits Berger v Lay Tee Ong127 the three member panel found on this issue: as established in previous uDRP Panel decisions, of which the most frequently cited is Telstra Corp Ltd v Nuclear Marshmallows WIPO Case No D2000-0003, although inaction does not itself constitute evidence of registration and use in bad faith, it may do so where there is no obvious justification for the selection of the domain name, where the respondent has not sought to put before the panel any credible justification for selection of the domain name and where it is difficult to conceive of any use of the domain name which would not be likely to cause confusion: Google Inc v Mohammad Jabbari WIPO Case No DIR2005-0001.

In Mr Jean Heitz v Truly Natural Products Pty Ltd / Mr Cordeiro128 the panel held: The disputed domain name does not point to an active webpage. In that sense therefore there has been no active use of the disputed domain name. However, it has been well established from the very early days of the operation of the Policy that such passive holding of a domain name, taken in conjunction with other evidence of bad faith conduct, amounts to use in bad faith within the terms of paragraph 4(a)(iii) of the Policy – see Telstra Corp Ltd v Nuclear Marshmallows WIPO Case No D2000-0003.

The majority panel in Hill & Smith Ltd v LB International Pty Ltd129 observed: The original registration and use of the disputed domain name was not in bad faith. However, the respondent has continued to hold the disputed domain name when it is not entitled to do so under the Eligibility Rules, and semi-passively to use the disputed domain name in circumstances which have the potential to damage the complainant and to prevent it from reflecting its name and mark in the corresponding domain name. At the time of the complaint, the disputed domain name pointed to parked webpage which had links to sites offering wire rope products in competition with the complainant. Whilst there is no evidence that the respondent was directly responsible for those links or profited from them (and the complainant has not so asserted), they indicate that the respondent’s holding of the disputed domain name in the face of the complainant’s demand for its return has the potential to harm the complainant and amounts to bad faith use within the rationale of Telstra Corp Ltd v Nuclear Marshmallows WIPO Case No D2000-0003.

Although the majority position in Hill & Smith Ltd v LB International Pty Ltd130 was rejected by the dissenting panelist (Dan Hunter) on the grounds of insufficient evidence: This assertion and the majority’s conclusion are wrong, as a matter of fact and of law… My problem here is not in the majority’s differing interpretation of whether the evidence is plausible, rather it is that the majority should not be using that standard at all. This panel is in no position to assess plausibility or otherwise of the complainant’s or the respondent’s assertions. We are not a court and we do not have the opportunity to examine any evidence. All we have are the complaint and the response, two self-serving statements by the two parties or their 127 128 129 130

WIPO Case No DAU2004-0008 (30 March 2005). WIPO Case No DAU2011-0017 (6 September 2011). WIPO Case No DAU2014-0008 (10 June 2014). WIPO Case No DAU2014-0008 (10 June 2014).

189

190

Australian Domain Name Law

[6.160]

representatives that are not sworn under oath (notwithstanding the attestation required under paragraph 3(b)(xiv) of the Rules) and cannot be assessed for veracity. By design, no sworn documentary material is provided in domain name administrative proceedings and, again by design, we cannot interview witnesses, or see them examined or cross-examined. These cases are therefore different from court assessments of plausibility or veracity, and we cannot use that standard. In assessing bad faith, where the complainant provides evidence of bad faith, the burden shifts to the respondent to provide some rebuttal of that evidence. Where, as here, the respondent provides some credible evidence of an absence of bad faith, it is improper for a panel to decide that the respondent is lying or has another motivation. Just as it would be improper for a panel to decide that the complainant is lying absent some other extenuating circumstances. The auDRP and uDRP works as it was intended to work–as an expeditious administrative proceeding that doesn’t require high standards of proof on either side–when we confine it to situations where panels can apply the three requirements of paragraph 4(a) in a manner that does not rely on value judgments about the truth of the parties’ assertions. Cases involving license terminations are notoriously difficult to assess on this basis. In my view, the complainant has failed to meet its evidentiary burden that there is bad faith pursuant to paragraph 4(a)(iii), and therefore has not made out all the requirements in paragraph 4(a).

The auDA auDRP Overview 1.0 also cites Cobb International Ltd v Cobb Australia & New Zealand (Pty) Ltd131 to be a relevant decision on this issue. In Sportsdirect.com Retail Ltd v Russell Ekas,132 the panel found that the respondent’s continued passive holding of the disputed domain name, despite the complainant’s letter outlining the complainant’s trade mark rights, demonstrated use in bad faith by passive holding.133 The panel in Moleskine SpA (formerly Moleskine Srl) v Pen City Pty Ltd134 held that the passive holding of the disputed domain name – including incorporating the complainant’s well-known mark in the domain name, did not absolve the respondent from a finding of bad faith. In support of this view, the panel cited Recordati SPA v Domain Name Clearing Co,135 and Comerica Inc v Horoshiy Inc:136 As the Recordati case acknowledges, “passive holding of the domain name, without use in commerce, may support a holding of use in bad faith” (citing Telstra Corp Ltd v Nuclear Marshmallows WIPO Case No D2000-0003). In Comerica Inc v Horoshiy Inc WIPO Case No D2004-0615, the panel observed: “there cannot be any legitimate use to which such disputed names can be put that would not violate complainant’s rights”. Every schoolboy knows that the role of a registered trademark is to serve its owner rather than a third party: only the owner is entitled to decide whether (and on what terms) to share it or not and to decide how its business will exploit those rights.

131 132 133 134 135 136

WIPO Case No DAU2013-0005 (23 April 2013). WIPO Case No DAU2015-0028 (23 September 2015). In support of its view, the panel cited Telstra Corp Ltd v Nuclear Marshmallows WIPO Case No D2000-0003 (18 February 2000). WIPO Case No DAU2012-0030 (31 January 2013). WIPO Case No D2000-0194 (21 July 2000). WIPO Case No D2004-0615 (18 October 2004).

[6.170]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

In TeamViewer GmbH v Nigel Burke137 the resolving website referenced the complainant’s product and stated it was “very expensive”, and then provided “click through” links to competing products. The panel found that the respondent had acted in bad faith: It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the association of the domain name with a complainant, such use amounts to use in bad faith (see for example, Magnamail Pty Ltd v Domain Admin, PrivacyProtect.org ID#10760, Luis Vicente Rodrigues, Grupo JBS SA WIPO Case No D2011-2037 and Rolex Watch USA Inc v Vadim Krivitsky WIPO Case No D2008-0396).

[6.170] Typically, where a website to which a domain name resolves is merely parked without any activity taking place, or is used for monetisation by providing links to other commercial websites, an inference of bad faith is drawn. As the panel in L’Oreal / L’Oreal Australia Pty v Namewise Pty Ltd / Nicholas Bolton138 observed: by providing “click-through” links to products other than those of the complainant, the respondent has intentionally attempted to attract internet users to its website at which the disputed domain name resolves, in order to obtain a commercial gain, by creating a likelihood of confusion with the complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the website and the products that are offered for sale. The respondent’s use of the disputed domain name is clearly for a commercial purpose and previous panels have found that such use amounts to bad faith, see: Pickles Auctions Pty Ltd v Complete Hire Pty Ltd WIPO Case No DAU2012-0005 (finding that providing pay-per-click access to third party websites was not a bona fide use of the disputed domain name in connection with the supply of goods or services and its use in this way was in bad faith.

Even the mere passive use of a domain name, where for example the domain name resolves to a blank page with minimal text, such as “under construction” could lead to an inference of bad faith. Such inference would depend on the circumstances of each case, and there could be factors that might show otherwise. For example, in Vacaciones eDreams SL v BuyDirect Pty Ltd, 139 although there was no actual use of the disputed domain name other than a static “coming soon” page, the fact that the complaint was filed only a month after the disputed domain name was registered (the time including part of the summer vacation period in Australia) was relevant to finding that the respondent had not acted in bad faith. The three member panel in GlobalCenter Pty Ltd v Global Domain Hosting Pty Ltd140 observed: The panel notes that re-direction is not of itself evidence sufficient to satisfy 4(a)(iii) of the Policy. However, where the respondent is using a “virtually identical” or “confusingly similar” name to redirect customers to a competitor of the complainant, and no response or evidence of any legitimate use of the disputed domains is provided, the panel can draw adverse inferences against the respondent. 137 138 139 140

WIPO Case No DAU2012-0027 (19 December 2012). L’Oreal / L’Oreal Australia Pty v Namewise Pty Ltd/ Nicholas Bolton WIPO Case No DAU2013-0009 (23 May 2013). Vacaciones eDreams SL v BuyDirect Pty Ltd WIPO Case No DAU2011-0043 (3 April 2012). WIPO Case No DAU2002-0001 (5 March 2003).

191

192

Australian Domain Name Law

[6.170]

Similarly, in Budget Rent A Car v Emma Faye Weekly141 the panel observed: The respondent has used the disputed domain name to direct traffic to a “click through” or “landing” website, containing links to websites selling products competing with the complainant. It is now well-established that the use of a parking page in this manner is strong evidence of bad faith. See for example, Serta Inc v Charles Dawson WIPO Case No D2008-1474; Get Away Today.Com Inc v Warren Gilbert WIPO Case No DCO2010-0021. This does not mean that the operation of a “click through” site is always a sign of bad faith, in circumstances where a respondent uses it to profit from its descriptive, common meaning. (See for example, the cases cited in Grundfos A/S v Texas International Property Associates WIPO Case No D2007-1448.)

Where the disputed domain name redirects users to a website of the complainant’s competitor, bad faith is more easily inferred. As the panelist in Tom Stoddart Pty Ltd v Roband Australia Pty Ltd142 held: “the subsequent use of the disputed domain name to redirect internet traffic to competing products, however, is clearly in bad faith”.143 The panel in Fast Enterprises Pty Ltd v Gifts for Girls Pty Ltd144 also observed: The actuality of “redirection”, of itself, does not necessarily attract an automatic conclusion of “bad faith”. It is certainly a highly examinable factor however, and the question can only be answered in respect of the particular facts of each specific presentation. The total context and history are accountable under the heading (Global Centre Pty Ltd v Global Domain Hosting Pty Ltd [DAU2002-001] and Telstra Corp Ltd v Nuclear Marshmallows [D2000-003]). The totality of pertinent history and background are for scrutiny as has been applied here. It is in this context that (including for reasons previously set out) the complainant’s contentions are persuasive and compelling. Additionally, by illustration, it may be revealing to ask whether, had the respondent and complainant not been competitors, the respondent would have even initiated the registrations of the disputed names as opposed to some other name.

Similarly, the panel in QSoft Consulting Ltd v BSP145 found: “It is well established under both the Policy and the uDRP that the use of a domain name which is identical with or confusingly similar to another’s trademark rights to promote products or services that compete with those of the trademark holder is use in bad faith. This follows in particular from the example given by paragraph 4(b)(iv) of the Policy.” Importantly, panels have found that it does not matter that a respondent has dealt with genuine products of the complainant – what is misleading is not the nature of the goods but rather the actual website – particularly in cases where the disputed domain name resolved to a website that offered the complainant’s products and also their competitors. As the panel in Proxxon SA v Woodworking Machinery Specialists Pty Ltd146 observed: Here the disputed domain name, which comprises the complainant’s distinctive PROXXON trademark with the “com.au” suffix, conveys to internet users both 141 142 143 144 145 146

WIPO Case No DAU2010-0020 (10 February 2011). WIPO Case No DAU2015-0015 (12 May 2015). See also BGC Partners Inc, BGC Partners LP, BGC Partners (Australia) Pty Ltd v Dean McCarthy, BGC Trading Pty Ltd WIPO Case No DAU2015-0012 (30 April 2015). Fast Enterprises Pty Ltd v Gifts for Girls Pty Ltd LEADR Case No auDRP06/05 (28 June 2005), p 12 [9.24]. WIPO Case No DAU2009-0003 (1 July 2009). WIPO Case No DAU2009-0017 (19 February 2010).

[6.190]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

that it will lead them to a website at which the complainant’s Proxxon products are available for purchase and that it will lead them to the official Australian website of the complainant. Thus the disputed domain name itself conveys an affiliation or endorsement of the website to which it resolves. In the hands of the respondent the latter representation is misleading because the respondent’s “www.woodworking.com.au” website is not the official Australian website of the complainant. It matters not that the respondent is a dealer in genuine Proxxon goods. What is misleading is not the nature of the goods but the nature of the website. As in the case of Nikon Inc and Nikon Corp v Technilab Inc WIPO Case No D2000-1774, the domain name in dispute suggests a broader relationship than actually exists.

What Constitutes a Pattern of Conduct? What constitutes a pattern of conduct of preventing a trade mark or name holder from reflecting the mark or name in a corresponding domain name?

[6.180] On this question, paragraph 3.3 of the auDA auDRP Overview 1.0 states: The general position is different from that under the uDRP. Under paragraph 4(b)(ii) of the auDRP, the complainant is only required to prove that the respondent registered the disputed domain name in order to prevent the complainant from reflecting its trademark or name in the form of a domain name. There is no additional requirement, as there is under the uDRP, that the respondent has “engaged in a pattern of such conduct” [see paragraph 3.1B]. Accordingly, auDRP panels have not been required to consider, and have not considered, what constitutes a pattern of conduct preventing the complainant from reflecting its trademark or name in the form of the domain name.147

The auDA auDRP Overview 1.0 does not cite any decisions on this issue.

Awareness of the Complainant, its Name or Mark and Bad Faith [6.190] On the question of constructive notice, wilful blindness, or that a respondent “knew or should have known” about a trade mark or name, paragraph 3.4 of the auDA auDRP Overview 1.0 states: The general position is somewhat different from that under the uDRP. It appears that auDRP panels have not adopted the concept of constructive (that is, deemed) notice in determinations of bad faith. Instead, panels review evidence relevant to actual knowledge of the complainant’s trademark or name, and draw conclusions about the respondent’s likely knowledge from that evidence. Where the complainant’s trademark or name is extremely well-known, or where there is evidence indicating that the respondent would reasonably have been aware of the trademark or name (for example, where the complainant and respondent are competitors in the same industry, or where the respondent was previously a customer or business partner of the complainant), panels are likely to find that the respondent was in possession of the necessary knowledge. This is not a concept of constructive notice; rather, it is a conclusion about actual knowledge, in 147

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 23, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf.

193

194

Australian Domain Name Law

[6.190]

circumstances that indicate that the respondent was more likely than not aware of the complainant’s mark or name. It appears that auDRP panels to date have not imposed on the respondent a general duty to determine whether a domain name registration infringes on or violates someone else’s rights.148

The auDA auDRP Overview 1.0 cites the following decisions to be relevant on this question: Ink King v CamerasDirect.com.au Pty Ltd;149 Informa Australia Pty Ltd v Reed Business Information Pty Ltd;150 and Hertz Systems Inc v Throne Ventures Pty Ltd.151

Awareness of the Complainant’s Name or Mark [6.200] In determining bad faith registration or use, a key factor is whether the respondent was aware of the complaint’s mark or name – and registered or used the disputed domain name for commercial gain. As the panelist observed in Aastra Telecom Inc v Spring Mountain Enterprises Pty Ltd:152 the respondent has registered a domain name that is identical to the complainant’s mark. The respondent was clearly aware of the complainant and its mark. The respondent nevertheless registered the disputed domain name without first seeking a licence or authority from the complainant. The respondent did so for commercial gain: as the respondent states “to increase sales in Aastra products”. Having registered a domain name identical to a trademark with which it was familiar, the respondent must have been aware of the obvious risk of confusion that would be created.

Referring to various authorities, the panel in Jean Heitz v Ghidella Rosalia153 similarly held: The panel finds that the respondent, most likely, was aware of the complainant’s trade marks when registering the disputed domain name. The panel refers to Asian World of Martial Arts Inc v Texas International Property Associates, supra and finds here, as there, that “[i]t defies common sense to believe that respondent coincidentally selected [the] precise domain [name] without any knowledge of complainant and its […] trademarks”. (See also, F Hoffmann-La Roche AG v MFS Holdings WIPO Case No D2010-0307… While use as a pay-per-click (“PPC”) parking page is not bad faith in and of itself, here it appears that the respondent intentionally selected the disputed domain name in order to create confusion in the mind of internet users as to the association between the disputed domain name and the complainant’s trade marks and thereby generate PPC revenue. The panel finds that the respondent attempted to divert internet traffic to its website in order to generate “pay-per-click revenue” (see for example, BAB Inc v Eighty Business Names WIPO Case No D2010-0478; mVisible Technologies Inc v Navigation Catalyst Systems Inc WIPO Case No D2007-1141; Hayward Industries Inc v WebQuest.com Inc WIPO Case No D2009-1493). Moreover, the fact that the website resolving from the disputed domain name appears to have provided links to websites of the complainant’s competitors is strong evidence of bad faith. (See for example, PepsiCo Inc v Charlie Chang, supra; Merrill Lynch & Co Inc v Andrew Miller WIPO Case No D2008-1496). 148

149 150 151 152 153

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, pp 23-24, http:// www.auda.org.au/assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. LEADR Case No auDRP01/05 (6 April 2005). LEADR Case No auDRP02/09 (9 April 2009). WIPO Case No DAU2009-0013 (20 January 2010). WIPO Case No DAU2008-0003 (9 April 2008). WIPO Case No DAU2011-0023 (18 October 2011).

[6.200]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

Another factor relevant to a finding of bad faith registration or use is where a complainant can demonstrate that the respondent was aware of the complainant’s established reputation, and in fact registered the disputed domain name because of that reputation. To illustrate, in A&G Insurance Services Pty Ltd v Tiana Smith154 the panel made a finding of bad faith registration and use because the complainant’s name and mark – “BUDGET DIRECT” was well known, and the respondent’s inclusion of that name and mark with a word describing the complainant’s industry in the disputed domain name put it “beyond reasonable doubt that the respondent was aware of the complainant’s rights and reputation”. Sometimes, the awareness of a complainant’s name or mark may be imputed on a respondent, thus giving rise to “constructive knowledge”. Thus, in Pickles Auctions Pty Ltd v Complete Hire Pty Ltd WIPO Case No DAU2012-0005,155 the respondent s sole ’ director and company secretary had been a customer of the complainant since 2002 and was well aware of the complainant’s common law mark “PICKLES” when the disputed domain name “picklesonline.com.au” was registered. The panel treated the respondent’s director’s knowledge as the respondent’s knowledge, and made the following observations: The respondent seeks to distance itself from the sponsored link portal, claiming to have been unaware of the sponsored links and unsure how this occurred, saying that it did not instruct the registrar to undertake this activity. The respondent also denies receiving a fee or reward from the registrar or any other party. These facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons, as stated in Villeroy & Boch AG v Mario Pingerna WIPO Case No D2007-1912: “(i) paragraph 4(b)(iv) requires the respondent to intend to attract internet users ‘for commercial gain’, but this gain does not need to be derived by the respondent himself. The respondent cannot infringe the complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the respondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the registrar to remove the parking page.”

In Hertz Systems Inc v Throne Ventures Pty Ltd,156 the panel made an important observation on the requisite “knowledge” or “awareness” required on the part of a respondent. The panel observed: The prevailing consensus of opinion under the Policy is that proof of actual knowledge of a complainant’s trademark rights is necessary. There are instances, most notably involving well-known trademarks, where panelists have seemingly deemed a respondent with knowledge of the trademark. The better understanding of those cases is that they have in fact applied a test of actual knowledge, which when based on the balance of probability, so overwhelmingly favoured the complainant that it might seem that the decision rests on imputed knowledge of the complainant’s rights. Whilst the complainant’s reputation in its industry is enormous, the panel is not prepared to fetter the respondent with constructive knowledge of complainant’s trademark rights. It looks, instead, to evidence of whether it is more likely than not that respondent had actual knowledge of complainant’s rights. 154 155 156

WIPO Case No DAU2012-0013 (27 June 2012). WIPO Case No DAU2012-0005 (16 April 2012). WIPO Case No DAU2009-0013 (20 January 2010).

195

196

Australian Domain Name Law

[6.200]

The respondent’s use of the words “car rental” in forming the domain name “hertzcarrental.com.au” was sufficient for the panel to find “that the respondent registered the domain name in bad faith in full knowledge of the complainant’s trademark rights.” However, “knowledge” of the complainant does not always result in a finding of bad faith. In The Crown in Right of the State of Tasmania t/as Tourism Tasmania v Gordon James Craven,157 the three member panel found: the evidence suggests the respondent had no knowledge of any exclusive rights of the complainant in the “brand” Discover Tasmania. This is because the complainant has failed to prove that it has or ever had any such rights. The respondent was aware of the “TASMANIA Discover your natural state (with image)” mark, but this is irrelevant since it is neither identical nor confusingly similar to the disputed domain name. The respondent certainly knew of the complainant’s statutory role in promoting tourism in Tasmania and he acknowledges that, before he registered the disputed domain name, he was aware of and, indeed, searched the websites at “discovertasmania.com” and “discovertasmania.com.au” operated by Tourism Tasmania. Given the descriptive character of the words Discover Tasmania, such knowledge does not establish bad faith. See for example, Goldline International Inc v Gold Line WIPO Case No D2000-1151 (January 8, 2001). The evidence shows that the respondent also checked beforehand for the existence of any relevant Business Name registration, which he might have expected to find if Tourism Tasmania had previously intended to try to establish any proprietary claims to exclusive use of “Discover Tasmania”. At that time, he found that the name was not currently registered, although it had previously been, and was then available for registration.

The conduct of the respondent and the complainant before the registration of a domain name is a relevant consideration when determining the issue of bad faith – for instance, where the parties previously had an ongoing agreement which would imply the respondent’s knowledge of the complainant’s name or mark. In Freelife International Holdings LLC and Freelife International Australia Pty Ltd v Nick Nastevski dba Health Doctor158 the respondent was a distributor of the complainants’ products and had signed an agreement that prohibited the respondent from registering domain names that were identical or similar in sound or spelling to the complainants’ marks. The respondent’s conduct in registering the domain names – when it was aware of the complainants’ marks and the prohibitions under the agreement amounted to registration and use of the disputed domain names in bad faith. Similarly, in GE Capital Finance Australasia Pty v Dental Financial Services Pty Ltd,159 the respondent’s registration of the disputed domain name on the same day that the complainant advised the respondent that its services would not be required to assist the marketing of the complainant’s business was for the panel “too much of a co-incidence to accept the respondent’s good faith protestations.” The overall conduct of a respondent once the domain name is registered is relevant when deciding the issue of bad faith. Thus, bad faith was found where a respondent registered a business name for the sole purpose of bolstering its claim to retain the disputed domain name.160 157 158 159 160

WIPO Case No DAU2003-0001 (16 April 2003). WIPO Case No DAU2012-0017 (30 July 2012). WIPO Case No DAU2004-0007 (7 January 2005). See Conquest Sports (Aust) Pty Ltd v Converse & Co LEADR Case No auDRP12/10 (2 July 2010), p 8.

[6.210]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

Distinctive Trade Marks and Names [6.210] The more distinctive a mark or name is, the greater the chance that panels will find that the respondent was aware of it and used it for unlawful commercial gain. Thus, in Stardoll AB v Domain Folio 1 Pty Ltd,161 the mark “STARDOLL” was held to be distinctive, and registered and used by the respondent in bad faith for commercial gain. Similarly, in Mayne Pharma International Pty Ltd v Namewise Pty Ltd,162 the panel found bad faith registration and use under paragraph 4(b)(iv) for commercial gain with respect to the complainant’s distinctive “ASTRIX” mark. In Google Inc v Q Interactive Pty Ltd / Mr Victor Quinteros,163 notwithstanding the respondent’s argument that it was using the complainant’s mark “ANDROID” in a descriptive sense, the panel found bad faith use for commercial gain under paragraph 4(b)(iv). Similarly, where a descriptive mark or word has acquired distinctiveness through use, attempts to use the descriptive term in a domain name has resulted in a finding of bad faith under paragraph 4(b)(iv) of the auDRP.164 On the other hand, where a complainant’s name or mark is found to be descriptive, and used in a descriptive sense – as opposed to a trade mark sense, a finding of bad faith may be precluded. This occurred in PayBurst Financial Technologies and Gregory Fx Iannacci v Virgin Blue Airlines Pty Ltd,165 where the three member panel held with respect to the word “rewards” incorporated into the domain name: The use to which the disputed domain name has been put has likewise been in furtherance of respondent’s bona fide loyalty program. The fact that complainant and respondent may each be using their domain names in relation to rewards schemes (albeit in somewhat different ways and in different jurisdictions) is also hardly surprising, given the ordinary descriptive meaning of “rewards”. respondent has legitimately adopted and used the trademark VELOCITY in Australia for its loyalty program as described above. The combination of this mark with “rewards” in the disputed domain name is therefore entirely logical in the circumstances. There is no element of bad faith involved.

Where a trade mark is an uncommon word such as “Tumblr” it is more likely that the respondent adopted that mark or name with knowledge of the complainant’s reputation: The complainant and the trade mark were extremely well-known in 2012 in Australia (as well as in 2009 when it appears that the disputed domain name was first registered by another person). The complainant’s website at the domain name “tumblr.com” attracts millions of visitors every day. Additionally, the word “tumblr” has no dictionary meaning. It would be highly unlikely that the respondent was unaware of the complainant when it registered the disputed domain name.166 161 162 163 164

165 166

WIPO Case No DAU2011-0038 (23 January 2012). WIPO Case No DAU2012-0001 (8 March 2012). WIPO Case No DAU2012-0026 (14 January 2013). See Informa Australia Pty Ltd v Reed Business Information Pty Ltd LEADR Case No auDRP02/09 (9 April 2009), pp 18-22 [8], finding for the complainant with respect to the disputed domain name “earthmove.com.au”. WIPO Case No DAU2006-0001 (16 March 2006). Tumblr Inc v Chris Dutton / The trustee for Bean Media Group Trust WIPO Case No DAU2013-0017 (30 July 2013). See also GP Technology Solutions (NSW) Pty Ltd v Genisys Group Pty Ltd (formerly Profusion Media Pty Ltd) LEADR Case No auDRP04/10 (16 March 2010), p 8 [9.13], which concerned the disputed domain names “sentral.com.au” and “sentral.net.au” and the “Sentral” registered trade mark.

197

198

Australian Domain Name Law

[6.220]

Well Known Marks and Names [6.220] The more well known a name or mark is, the more likely a panel will make a finding that the respondent would have been aware of the complainant’s name or mark for the purposes of finding bad faith. As the three member panel held in relation to the well-known “IBM” mark: That conclusion is certainly open when a trademark is of such prominence and longevity as the IBM mark; the use in the domain name of such a famous trademark as IBM is almost evidence in itself of bad faith, for it instantly arouses suspicion that the motivation for registering and using the domain name was to create the false impression that the website was in some way connected with IBM itself or, if that impression arose accidentally, to allow it to continue, knowing that it was false.167

Similarly, in Clark Equipment Co v AllJap Machinery Pty Ltd,168 the three member panel found bad faith on the part of the respondents because of the overwhelming likelihood that they chose the domain name for its identity to the well known “BOBCAT” trade mark, and for the purpose of deriving some kind of commercial benefit. In ESPN Inc v IMCO Corp Pty Ltd the panel found bad faith because the respondent “registered the disputed domain name with knowledge of complainant’s famous ESPN mark and has intentionally used it misleadingly to divert internet users from complainant’s website for financial gain.”169 Further, in Singapore Airlines Ltd v Scott Hoggett and Meredith Hoggett,170 the panel found that the disputed domain name was identical to the well known brand “Singapore Airlines”, and sufficient to demonstrate bad faith under paragraph 4(b)(iv) inter alia on the part of the respondent. Where a domain name was registered by the complainant, but later upon expiry of the complainant’s registration the respondent moved to register it, this does not in itself lead to an inference of bad faith. However, this is less likely when a well-known name or mark is incorporated into the disputed domain name. As the panel held in UEIP Pty Ltd v Fincar Pty Ltd:171 It is apparent from the response that respondent and its director Mr Lye are experienced users of the domain name system and that they seized the opportunity to register the domain name when complainant’s registration of it lapsed in March 2007. That in itself is not evidence of bad faith. However, where the domain name in question incorporates a well known name or trademark in which another person has rights, and where the use of the trademark and the domain name is calculated to deceive persons familiar with the trademark and lead them to a website from which the domain name holder derives commercial gain, that is evidence of bad faith falling within paragraph 4(b)(iv) of the Policy.172

167 168 169 170 171 172

International Business Machines Corp v Investment Backed Mortgages Ltd WIPO Case No DAU2007-0009 (7 January 2008). WIPO Case No DAU2011-0042 (5 March 2012). WIPO Case No DAU2005-0005 (31 January 2006). CIArb Case No 0301 (29 August 2003), p 5 [7.3]. UEIP Pty Ltd v Fincar Pty Ltd WIPO Case No DAU2007-0010 (13 December 2007). See also InfoMedia Services Ltd v Mr Drew Alexander Weeks LEADR Case No auDRP03/06 (8 May 2006), p 9 [6.28], where the respondent not only registered the disputed domain name a few days after it was not renewed, but also then offered to transfer the domain name for an amount exceeding the respondent’s out-of-pocket costs.

[6.220]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

Indeed, panels willingly infer bad faith where a complainant’s mark or name is well known in Australia and/or internationally. As the panel held in Swarovski Aktiengesellschaft AG v Paul Giles dba Banjos bead house:173 the panel finds that the respondent’s choice of the disputed domain name indicates an awareness of the complainant’s mark. The panel finds that the SWAROVSKI mark in this field is well known to traders and many consumers of crystal, glass and like objects in Australia and that the respondent was aware of the mark and that reputation at the time of registering the disputed domain name. Further the panel finds that the initial registration and use of the domain name were undertaken in bad faith with the intention of impermissibly garnering to the respondent the commercial benefit of association with the complainant’s goodwill and reputation.174

Another issue to consider is where a complainant’s name or mark is well known in other parts of the world – but not in Australia, such evidence may be relevant in tilting a case in favour of the respondent, particularly where a mark or name is more descriptive as opposed to being distinctive. For instance, in Vacaciones eDreams SL v BuyDirect Pty Ltd,175 a relevant issue in finding that the respondent did not register the domain name in bad faith was when the panel repeated the respondent’s Google search the complainant did not appear on any of the first ten pages of results. The panel found that “the complainant has failed to show that its name and trademark were well-known in Australia or that the respondent knew or ought to have known of the complainant or its 173 174

175

WIPO Case No DAU2008-0001 (24 February 2008). WIPO Case No DAU2008-0001 (24 February 2008). There are numerous other examples of this: Vanguard Trademark Holdings USA LLC v IP Mirror Pte Ltd / Chistovich Vyacheslav WIPO Case No DAU2015-0024 (17 August 2015); Google Inc v Dmitri Rytsk WIPO Case No DAU2007-0004 (8 August 2007): “The use in the domain name of such a famous trademark GOOGLE is almost evidence in itself of bad faith, for it instantly arouses suspicion that at least one motivation for registering the domain name must have been to create a false impression that the website was in some way connected with Google itself”; Fiskars Corp v Domenic Carosa, Domain Folio 1 Pty Ltd WIPO Case No DAU2015-0025 (7 August 2015), citing Google Inc v Dmitri Rytsk WIPO Case No DAU2007-0004 (8 August 2007) with approval; Morrocanoil Israel Ltd v Clare Bella Ayumi Kim and Marcelo Lacerda Schoon LEADR Case No auDRP10/12 (17 December 2012), p 6 [11.7]: “the respondent’s original registration of the disputed domain, in full knowledge that: (a) the name was identical to ‘Moroccanoil.com’ and (b) the complainant owned ‘Moroccanoil’ trademarks in Australia, constitutes an action made in bad faith insofar as a reasonable person in possession of that knowledge would have known that it was wrongful to so register the domain”; Gloria Jean’s Coffees Holdings Pty Ltd v Jeremy Paul Cleaver WIPO Case No DAU2007-0006 (11 November 2007): “Given the significant reputation of the complainant’s business and the well known nature of its mark, the respondent must have known that it would be likely that there would be confusion with the complainant’s mark if not one or more of their franchises”; Napoleon Perdis Cosmetics Pty Ltd v Rebecca Jones WIPO Case No DAU2006-0014 (31 January 2007): “Rather the panel considers that the respondent has in all likelihood knowingly taken the complainant’s mark and obtained the domain name registration ‘napoleonperdis.com.au’ with the deliberate intention of making use of it in the form of a web address to redirect web surfers to one or more other websites for the potential benefit of herself or others and to the deliberate disbenefit of the complainant”; Cash Converters Pty Ltd v The Trustee For The Capital Finance Trust WIPO Case No DAU2015-0006 (26 March 2015): “the panel accepts that the respondent must have at all material times known of the complainant’s trade mark rights in CASH CONVERTERS and its reputation, and has acquired and is using the disputed domain name in order to exploit these trade mark rights and the complainant’s considerable reputation”; Verizon Trademark Services LLC v Jillian Pearce WIPO Case No DAU2014-0010 (20 May 2014), which related to the famous “VERIZON” mark. WIPO Case No DAU2011-0043 (3 April 2012).

199

200

Australian Domain Name Law

[6.220]

trademark when it decided to pick up the lapsed registration of the disputed domain name.” Similarly, in We Buy Any Car Ltd v Highway Auto Mart and Jason Collings176 the panel observed: The respondents have clearly provided evidence to show that they registered the disputed domain names in order to carry out legitimate business interests relevant to the descriptive term in the disputed domain names and they have subsequently done so. Furthermore, due to the limited reputation of the complainant in Australia and its lack of trading in Australia, there is a similarly limited chance of any likelihood that the respondents sought to gain from this.177

What matters here is not awareness of a complainant’s possible entry into the Australian market, but the respondent’s awareness of the complainant, or its name or mark. Thus, in Bernard Janes v LJ Bubenicek & A J Main, A&L Technologies,178 the complainant was active in the United Kingdom, and the respondent was aware of the complainant as they were competitors in the same market. The respondent argued that it was not aware of the complainant’s intentions of entering into the Australian market at the time of registering the domain name – which was identical to the complainant’s registered mark “GO BALLISTIC” in the UK, EC and US (with pending registration in Australia). Here, the panel observed: As stated by the panel in Mandarin Oriental Services BV v Control Alt Delete WIPO Case No D2000-1671: “The essential question for the panel is whether or not the respondent registered the domain name with the complainant specifically in mind.” … It is notable that the declarations attached to the response deny knowledge particularly of the complainant’s plans to expand into Australia – they do not deny that the respondent was aware of the complainant when the disputed domain name was registered. …The respondent’s denial of bad faith instead rests substantially on its claim to have been unaware of the complainant’s plans to expand its business into Australia and the complainant’s lack of business reputation in Australia. Even if that contention is true, it would not however prevent a finding of bad faith under paragraph 4(a)(iii) of the Policy. Such a finding does not require the complainant to establish a general reputation in a particular jurisdiction (although evidence to that effect may, in certain circumstances, be relevant to the issue of bad faith). Under paragraph 4(a)(iii) of the Policy, and as noted above, what matters is the state of mind of the respondent.179

176 177 178 179

WIPO Case No DAU2012-0004 (11 April 2012). WIPO Case No DAU2012-0004 (11 April 2012). WIPO Case No DAU2010-0014 (6 September 2010). Bernard Janes v LJ Bubenicek & A J Main, A&L Technologies WIPO Case No DAU20100014 (6 September 2010). Similarly, in Insure & Go Insurance Services Ltd v CoverDirect Pty Ltd WIPO Case No DAU2008-0019 (15 December 2008), the panel held: “The respondent contends that the registration could not have been in bad faith because the complainant did not have a notable trading activity in Australia at the time of the registration. There are circumstances in which this could be sufficient to rebut a finding of bad faith. In this case, however, that the owners of the respondent and the complainant were already competitors in the United Kingdom, that the website established at the disputed domain name contained links to United Kingdom as well as to Australian websites, and that the registration of the domain name was in the same year as the expansion of the complainant’s business to Australian clients, together suggest that the registration was intended to disrupt the expansion of the complainant’s business in Australia, and to divert trade for commercial gain.”

[6.230]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

Disclaimers in the Resolving Website and Bad Faith [6.230] On the question of the role of a disclaimer on the web page of a disputed domain name paragraph 3.5 of the auDA auDRP Overview 1.0 states: The general position is the same as that under the uDRP. The existence of a disclaimer cannot, by itself, cure bad faith when bad faith has been established by other factors. This is typically explained by auDRP panels with reference to the probability of internet user “initial interest confusion” – that is, by the time the user reaches and reads any disclaimer on a webpage to which the domain name resolves, any respondent objective of attracting visitors for financial advantage to its website through use of the trademark in the domain name will generally have been achieved [see paragraph 1.2]. A disclaimer may in fact show that the respondent had prior knowledge of the complainant’s trademark or name. This, in turn, may support a finding that the respondent has acted in bad faith, as well as a finding that the respondent does not have rights or legitimate interests in the domain name [see paragraph 2.2]. The lack of a disclaimer on a website to which the domain name resolves may support a finding that the respondent’s use of the domain name is deliberately misleading, and thus may provide evidence of bad faith use, as well as preclude a finding that the respondent has rights or legitimate interests in the domain name [see paragraph 2.3].180

These issues were explored in Australian Rugby Union v Weeks181 where the panelist observed: There is a strong inference… that [the] questioned domain name, despite the formal attempt at disclaimer, would raise in the mind of a reasonable viewer that there was an association of the questioned domain name and its website with the complainant.

In Perpetual Ltd v Perpetual Home Loans Pty Ltd182 the panelist held: having regard to the reputation of the complainant’s mark, and the operation of the respondent in the same field of business, it is notable there is no disclaimer or other statement on the respondent’s website which avoids or reduces the potential for confusion with the complainant. The lack of such a disclaimer reinforces the impression that the respondent’s use of “perpetual” is deliberately misleading.

The auDA auDRP Overview 1.0 also cites Advanced Medical Institute Pty Ltd v World Wide Internet Services (Aust) Pty Ltd183 to be a relevant decision on this issue. This decision is discussed below. The inclusion of a disclaimer that clearly clarifies the exact nature of any relationship (or lack thereof) between the registrant/respondent and the complainant may be a relevant factor for the panel when deciding the issue of bad faith registration or use.184 In Roku Inc v It’s So Easy Pty Ltd / Sharyn 180

181 182 183 184

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 24, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. LEADR Case No 09/05 (23 September 2005), p 4 [13]. WIPO Case No DAU2009-0009 (2 November 2009). IAMA Case No 3021 (11 December 2006). See auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”), auDA, July 2014, paragraph 3.5: http://www.auda.org.au/assets/ Policies/auDRP/auDRP-Overview/auDRP-Overview-2014.pdf. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)

201

202

Australian Domain Name Law

[6.230]

Webber185 the three member panel held that without the authorisation or approval of the complainant, the respondent registered the disputed domain name – in the pretext of an information site relating to the complainant’s devices, in order to attract users to the webpage and generate revenue. The panel relevantly observed: According to paragraph 3.5 of the WIPO Overview 2.0, a disclaimer, especially if it is sufficiently clear and prominent, may sometimes be found to support other factors indicating good faith or legitimate interest. However, the existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. This is typically explained by uDRP and .auDRP panels with reference to the probability of internet user “initial interest confusion” – by the time such user reaches and reads any disclaimer under the disputed domain name, any registrant objective of attracting visitors for financial advantage to its website through use of the trade mark in the domain name will generally have been achieved.

Panels have held that disclaimers on the resolving website do not dispel “initial interest confusion” which might ensue owing to the use of domain names that are identical or confusingly similar to a complainant’s name or mark.186

Statements Made in Settlement Discussions Can statements made in settlement discussions be relevant to showing bad faith?

[6.240] On this issue paragraph 3.6 of the auDA auDRP Overview 1.0 provides: The general position is the same as that under the uDRP. Evidence of an offer to sell the domain name is generally admissible in proceedings under the auDRP, and is often used to show bad faith. This is so in relation to an offer to sell made by a respondent prior to filing of the complaint, as well as after filing of the complaint. An offer to sell the domain name made in settlement discussions may be seen as a “use” of the domain name for the purposes of showing bad faith, even if that is the respondent’s only use of the domain name.187

In Tyre Depot Holdings Pty Ltd v Tyre Kingdom Pty Ltd188 the panel found: The complainant states in its Further Submissions that on May 22, 2014, after the complaint had been filed, the complainant received telephone calls from the respondent offering to transfer the disputed domain name to the complainant in exchange for payment of AUD 5,000. As supported by previous decisions under the uDRP and auDRP (see The South African Football Association (SAFA) v Fairfield Tours (Pty) Ltd WIPO Case No D2009-0998 and Sungen International Ltd v D C F X Solar Systems Pty Ltd WIPO Case No DAU2011-0035) an offer to sell the disputed domain name in this way is evidence of bad faith on the part of the respondent and further undercuts his assertions as to operating a legitimate business through the disputed domain name.

185 186 187

188

WIPO, 2011 http://www.auda.org.au/assets/Policies/auDRP/auDRP-Overview/auDRPOverview-2014.pdf, paragraph 3.5: http://www.wipo.int/amc/en/domains/search/overview. WIPO Case No DAU2013-0004 (3 May 2013). See Advanced Medical Institute Pty Ltd v World Wide Internet Services (Aust) Pty Ltd IAMA Case No 3021 (11 December 2006), p 6 [D]. Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 24, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. WIPO Case No DAU2014-0016 (15 July 2014).

[6.250]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

The auDA auDRP Overview 1.0 also cites Sterling Marine Pty Ltd v Etolin Pty Ltd189 to be a relevant decision on this issue. The passive retention of the domain name by a respondent as a trigger to negotiate a resolution to its claim for compensation under a distributorship agreement has been found to qualify as use in bad faith.190 Further, a respondent cannot use a domain name to “leverage” a settlement of a dispute. As the three member panel held in Red Frog Events LLC v Maximum Adventure Pty Ltd:191 As was observed in Bank of Alabama v Sumith Rodrigo & Co WIPO Case No D2004-0912 (December 16, 2004), “a registrant cannot use a domain name to ‘leverage’ a settlement of a dispute he has with the owner of marks to which the domain name is confusingly similar.” The respondent’s subsequent cessation of such use does not alter this conclusion, as it has already demonstrated its bad faith and can return to such behaviour at any time, unless the disputed domain name is cancelled or transferred under the Policy.

Similarly, in Navico Australia Pty Ltd v Quin Marine Pty Ltd192 the panel found: It appears to the panel that, in the period since its distributorship was terminated in about September 2006, the respondent has used its registration of the disputed domain name for the ulterior purpose of leveraging its position in negotiations with the complainant in relation to financial matters arising from their past relationship, rather than for any good faith purpose associated with the sale of its remaining stock of Navico branded products.

Renewal of a Domain Name Does the renewal of the registration of a domain name amount to a registration for the purposes of determining whether the domain name was registered in bad faith?

[6.250] On this question paragraph 3.7 of the auDA auDRP Overview 1.0 states: The position is unknown. It appears that no auDRP case has yet addressed the issue of whether a renewal of a domain name amounts to a “registration” for the purposes of the Policy. Thus, it is not clear whether – and, if so, in what circumstances – renewal of a domain name registration in bad faith will be treated as a registration of the domain name in bad faith. In any event, paragraph 4(a)(iii) of the auDRP requires that the domain name “has been registered or subsequently used in bad faith” for the third requirement to be satisfied. Unlike the equivalent provision in the uDRP, the word “and” is not used; thus, the issue of whether a complainant must establish both bad faith registration and bad faith use does not arise. As a result, the third requirement of the Policy will be satisfied if it is established that the respondent subsequently used the domain name in bad faith, even though the respondent’s initial registration of the domain name was in good faith [see paragraph 3.1].193 189 190 191 192 193

LEADR Case No auDRP03/13 (16 April 2013). Cobb International Ltd v Cobb Australia & New Zealand (Pty) Ltd WIPO Case No DAU2013-0005 (23 April 2013). WIPO Case No DAU2012-0002 (23 May 2012). WIPO Case No DAU2009-0004 (14 July 2009). Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First

203

204

Australian Domain Name Law

[6.250]

The auDA auDRP Overview 1.0 does not cite any auDRP decisions on this point.

Automatically-generated Material Can third party or “automatically” generated material appearing on a website form a basis for finding bad faith?

[6.260] On this subject paragraph 3.8 of the auDA auDRP Overview 1.0 provides: The position is unknown. It appears that no auDRP case has yet addressed the issue of third party or automatically-generated material appearing on a website. Thus, it is not clear whether – and, if so, in what circumstances – third party or automaticallygenerated material appearing on a website to which the domain name resolves can form a basis for finding use of the domain name to be in bad faith.194

The auDA auDRP Overview 1.0 does not cite any decisions to support this view.

Privacy and Proxy Registration Services Can use of a privacy or proxy registration service form a basis for finding bad faith?

[6.270] On this issue paragraph 3.9 of the auDA auDRP Overview 1.0 states: The position is unknown. It appears that no auDRP case has yet addressed the issue of use of a privacy or proxy registration service. Thus, it is not clear whether – and, if so, in what circumstances – use of such a service by the respondent will be found to be evidence of bad faith. The reason for this is auDA’s policy prohibiting the use of privacy or proxy registration services (currently “2010-07 – Registrant Contact Information Policy”). Under paragraph 2.4(b) of that policy, a registrant must not “do anything which may have the effect of concealing the true identity of the registrant or the registrant contact (for example, by using a private or proxy registration service), unless specifically permitted otherwise by another auDA published policy” [see paragraph 4.9].195

The auDA auDRP Overview 1.0 does not cite any auDRP decisions on this subject.

“Robots.txt” and Similar Mechanisms Can the use of “robots.txt” or similar mechanisms to prevent website content being accessed in an on-line archive form a basis for finding bad faith?

[6.280] On this question paragraph 3.10 of the auDA auDRP Overview 1.0 states:

194

195

Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, pp 24-25, http:// www.auda.org.au/assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 25, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 25, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf.

[6.290]

6: Bad Faith Registrations or Subsequent Use of .au Domain Names

The position is unknown. It appears that no auDRP case has yet addressed the issue of use of “robots.txt” or similar mechanisms to prevent website content from being accessed in an on-line archive. Thus, it is not clear whether – and, if so, in what circumstances – use of such mechanisms by the respondent will be found to be evidence of bad faith.196

Again, there are no auDRP decisions cited in the auDA auDRP Overview 1.0 to support this point.

“Tarnishment” of a Trade Mark Can tarnishment of a trade mark form a basis for finding bad faith?

[6.290] On this issue paragraph 3.11 of the auDA auDRP Overview 1.0 provides: The position is unknown. It appears that no auDRP case has yet addressed the issue of “tarnishment” of a trademark. Thus, it is not clear whether – and, if so, in what circumstances – use of the domain name to resolve to a website containing wholly inappropriate material (for example, pornography) will be found to be evidence of bad faith.197

The auDA auDRP Overview 1.0 does not cite any decisions on this issue either, and as stated above this subject is yet to be addressed in auDRP proceedings.

196

197

Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 25, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf. Andrew Christie, auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) July 2014, auDA, p 25, http://www.auda.org.au/ assets/Policies/auDRP/auDRP-Overview/auDRP-Overview-2014b.pdf.

205

Appendix 1: .au Dispute Resolution Policy (auDRP) (auDA PUBLISHED POLICY – reproduced with permission from auDA) Policy No: 2016-01; Publication Date: 15/04/2016; Status: Current 1. BACKGROUND 1.1 This document sets out the .au Dispute Resolution Policy (auDRP), first adopted by the auDA Board on 13 August 2001, on the recommendation of auDA’s Dispute Resolution Working Group. The auDRP and auDRP Rules are at Schedules A and B of this document. 1.2 The purpose of the auDRP is to provide a cheaper, speedier alternative to litigation for the resolution of disputes between the registrant of a .au domain name and a party with competing rights in the domain name. 1.3 The auDRP is an adaptation of the Uniform Dispute Resolution Policy (UDRP) administered by the Internet Corporation for Assigned Names and Numbers (ICANN) with respect to the global Top Level Domains (gTLDs). The auDRP differs from the uDRP in two main respects: a) to take account of the policy rules that apply to .au domain names, that do not apply to gTLD domain names; and b) to improve the clarity of expression and address practical constraints that have become apparent since arbitrations under the uDRP began in 1999. 1.4 Please Note: Some parts of the auDRP are substantively different from the uDRP. Prospective complainants should not assume that principles derived from uDRP decisions will be applicable to auDRP disputes. For an explanation of the differences between the auDRP and the uDRP, see the report of the Dispute Resolution Working Group at http://www.auda.org.au/policy/audrp. 2. APPLICATION OF THE auDRP 2.1 All domain name licences issued or renewed in the open 2LDs from 1 August 2002 are subject to a mandatory administrative proceeding under the auDRP. At the time of publication, the open 2LDs are asn.au, com.au, id.au, net.au and org.au. 2.2 The auDRP does not apply to all types of domain name disputes. It only applies to disputes which meet the requirements set out in Paragraph 4(a) of the auDRP at Schedule A of this document. 2.3 The auDRP is an alternative dispute resolution mechanism. Complainants are not obliged to use the auDRP but may instead choose to pursue other means of resolving their dispute, such as litigation. Commencement of an administrative proceeding under the auDRP does not prevent either party from initiating legal proceedings at any time.

208

Australian Domain Name Law

3. auDA APPROVED PROVIDERS 3.1 Each auDRP proceeding is administered by an independent, auDAapproved Provider of dispute resolution services. A list of approved Providers is available on auDA’s website at http://www.auda.org.au/policy/ audrp. Each Provider must publish on its website a list of its Panellists and its Supplemental Rules. 3.2 Each Provider is wholly responsible for the appointment of its Panellists according to its own accreditation procedures. Individual Panellists are not approved or accredited by auDA, and auDA does not manage or supervise their activities in any way. Any queries or complaints about a Panellist should be directed to the relevant Provider in the first instance. 4. HOW TO FILE A COMPLAINT UNDER THE auDRP - SUMMARY OF REQUIREMENTS 4.1 To help determine whether a Complaint can be lodged in respect of a particular domain name, the Complainant may apply to auDA (using the form on the auDA website at http://www.auda.org.au/policy/audrp) to find out the creation date of the domain name. 4.2 The Complainant should ensure that they have read the entire auDRP and auDRP Rules at Schedules A and B of this document before filing their Complaint. The Complaint may be filed with any of the approved Providers listed on auDA’s website at http://www.auda.org.au/policy/ audrp. The Complaint must meet the requirements set out in Paragraph 3 of the auDRP Rules in Schedule B of this document, as well as any requirements detailed in the Provider’s Supplemental Rules (available from the Provider’s website). 4.3 The fee to be paid by the Complainant to the Provider under Paragraph 19 of the auDRP Rules in Schedule B of this document is: a) In the case of a single member Panel Number of Disputed Domain Names 1-5 6-10 More than 10

Fee (AUD) 2,000 2,700 To be decided in consultation with the Provider

b) In the case of a three member Panel Number of Disputed Domain Names 1-5 6-10 More than 10

Fee (AUD) 4,500 5,700 To be decided in consultation with the Provider

Appendix 1: .au Dispute Resolution Policy (auDRP)

5. HOW TO FILE A RESPONSE UNDER THE auDRP - SUMMARY OF REQUIREMENTS 5.1 The Respondent will receive notice of the Complaint from the Provider chosen by the Complainant. The Respondent may file a Response no later than 20 days after they are notified of the Complaint. 5.2 The Respondent should ensure that they have read the entire auDRP and Rules at Schedules A and B of this document before filing a response. The Response must meet the requirements set out in Paragraph 5 of the auDRP Rules in Schedule B of this document, as well as any requirements detailed in the Provider’s Supplemental Rules (available from the Provider’s website). 5.3 The Respondent is not obliged to file a Response. If no Response is received, unless there are exceptional circumstances, the Panel shall decide the dispute based on the information provided in the Complaint. 5.4 There are no fees payable by the Respondent unless they elect to have the dispute heard by a three member Panel, in which case they must pay half the costs. 6. REMEDIES AVAILABLE TO COMPLAINANT 6.1 A Complainant may seek to have the domain name licence: a) cancelled, in which case the domain name will become available for registration in the normal way; or b) transferred to themselves, but only if the registrar determines that they are eligible to hold the domain name under the relevant policy rules. 7. ENFORCEMENT OF auDRP DECISIONS 7.1 Panel decisions under the auDRP are binding on both parties. There is no appeals process. 7.2 If the unsuccessful party is not satisfied with the decision handed down by the panelist, they may decide to initiate legal proceedings against the other party. If the Panel decides that the domain name should be transferred or cancelled, the registrar is required to wait 10 business days before implementing the decision to allow for legal proceedings to be commenced. 7.3 If the unsuccessful party is not satisfied with the way in which the proceeding was administered by the Provider, they should raise their concerns directly with the Provider in the first instance. auDA may intervene in the administration of a proceeding in cases where there has been a clear and substantive procedural flaw. 8. PUBLICATION OF auDRP PROCEEDINGS AND DECISIONS 8.1 auDA will maintain a public index of all auDRP proceedings and Panel decisions on the auDA website at http://www.auda.org.au/policy/audrp. 9. REVIEW OF POLICY 9.1 From time to time, auDA may update this document for the purposes of clarification or correction.

209

Schedule A – .au Dispute Resolution Policy (auDRP) (Reproduced with permission from auDA) NOTES: 1. This policy has been adapted from the Uniform Dispute Resolution Policy (uDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN). Some sections of this policy are substantively different from the uDRP. For an explanation of the differences, see the report of the auDA Dispute Resolution Working Group at http:// www.auda.org.au/policy/audrp 2. This policy is intended to operate between the registrar and its licensee (the domain name holder or registrant). Thus, the policy uses “we” and “our” to refer to the registrar and it uses “you” and “your” to refer to the domain name holder. 1. Purpose. The .au Dispute Resolution Policy (“auDRP”) is incorporated by reference into your Registrant Agreement, and sets forth the terms and conditions that govern a dispute between you and any party other than us (the registrar) over the registration and use of an Internet domain name registered by you in one of the open .au second level domains (2LDs). Proceedings under Paragraph 4 of this Policy will be conducted according to the Rules for the auDRP (the “auDRP Rules”), which are at Schedule B of this document, and the selected administrative dispute resolution service Provider’s Supplemental Rules. 2. Your Representations. By applying to register or renew a domain name, or by any communication with us (which includes any failure to respond to a request from us for information), you represent and warrant to us that (a) the statements that you made in your domain name application are complete and accurate, including those as to your eligibility for a domain name in the open 2LD; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights. 3. Cancellations, Transfers, and Changes. We will cancel, transfer or otherwise make changes to domain name registrations under the following circumstances: a. subject to the provisions of Paragraph 8, our receipt of written or appropriate electronic instructions from you or your authorised agent to take such action; b. our receipt of an order from a court or arbitral tribunal, in each case of competent jurisdiction, requiring such action; and/or

Schedule A – .au Dispute Resolution Policy (auDRP)

c. our receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which you were a party and which was conducted under this Policy or a later version of this Policy adopted by auDA, subject to Paragraph 4(i) and (k) below. We may also cancel, transfer or otherwise make changes to a domain name registration in accordance with the terms of your Registrant Agreement or other legal requirements. 4. Mandatory Administrative Proceeding. This Paragraph sets forth the type of disputes for which you are required to submit to a mandatory administrative proceeding. These proceedings will be conducted before one of the administrative dispute resolution service providers listed on the auDA website at http://www.auda.org.au/policy/audrp (each, a “Provider”). a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure that: (i) your domain name is identical or confusingly similar to a name1, trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name2; and (iii) your domain name has been registered or subsequently used in bad faith. In an administrative proceeding, the complainant bears the onus of proof. b. Evidence of Registration or Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or 1

2

For the purposes of this policy, auDA has determined that a “name … in which the complainant has rights” refers to: a) the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or b) the complainant’s personal name. For the purposes of this policy, auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.

211

212

Australian Domain Name Law

(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, 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 location or of a product or service on that website or location; or (v) if any of your representations or warranties as to eligibility or third party rights given on application or renewal are, or subsequently become, false or misleading in any manner. c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the auDRP Rules in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii): (i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations 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 that you have acquired for the purpose of selling, renting or otherwise transferring); or (ii) commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue. d. Selection of Provider. The complainant must select the Provider from among those approved by auDA by submitting the complaint to that Provider. The selected Provider will administer the proceeding, except in cases of consolidation as described in Paragraph 4(f). e. Initiation of Proceeding and Process and Appointment of Administrative Panel. The auDRP Rules state the process for initiating and conducting a proceeding and for appointing the panel that will decide the dispute (the “Administrative Panel”). f. Consolidation. In the event of multiple disputes between you and a complainant, either you or the complainant may petition to consolidate the disputes before a single Administrative Panel. This petition shall be made to the first Administrative Panel appointed to hear a pending dispute between the parties. This Administrative Panel may consolidate before it any or all such disputes in its sole discretion, provided that the disputes being consolidated are governed by this Policy or a later version of this Policy adopted by auDA.

Schedule A – .au Dispute Resolution Policy (auDRP)

g. Fees. All fees charged by a Provider in connection with any dispute before an Administrative Panel pursuant to this Policy shall be paid by the complainant, except in cases where you elect to expand the Administrative Panel from one to three panellists as provided in Paragraph 5(b)(iv) of the Rules of Procedure, in which case all fees will be borne evenly by you and the complainant. h. Our Involvement in Administrative Proceedings. We do not, and will not, participate in the administration or conduct of any proceeding before an Administrative Panel. In addition, we will not be liable as a result of any decisions rendered by the Administrative Panel. i. Remedies. The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant (provided that the complainant is otherwise eligible to hold that domain name). j. Notification and Publication. The Provider shall notify us of any decision made by an Administrative Panel with respect to a domain name you have registered with us. All decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision. k. Availability of Court Proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be cancelled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel’s decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, sealed by the registrar of the court) that you have commenced a lawsuit against the complainant. If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel’s decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed, withdrawn or abandoned; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name. 5. All Other Disputes and Litigation. All other disputes between you and any party other than us regarding your domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved between you and such other party through any court, arbitration or other proceeding that may be available.

213

214

Australian Domain Name Law

6. Our Involvement in Disputes. We will not participate in any way in any dispute between you and any party other than us regarding the registration and use of your domain name. You shall not name us as a party or otherwise include us in any such proceeding. In the event that we are named as a party in any such proceeding, we reserve the right to raise any and all defences deemed appropriate, and to take any other action necessary to defend ourselves. 7. Maintaining the Status Quo. We will not cancel, transfer, activate, deactivate, or otherwise change the status of any domain name registration under this Policy except as provided in Paragraph 3 above. 8. Transfers During a Dispute. a. Transfers of a Domain Name to a New Holder. You may not transfer your domain name registration to another holder (i) during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of our principal place of business) after such proceeding is concluded; or (ii) during a pending court proceeding or arbitration commenced regarding your domain name unless the party to whom the domain name registration is being transferred agrees, in writing, to be bound by the decision of the court or arbitrator. We reserve the right to cancel any transfer of a domain name registration to another holder that is made in violation of this subparagraph. b. Changing Registrars. You may not transfer your domain name registration to another registrar during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of our principal place of business) after such proceeding is concluded. You may transfer administration of your domain name registration to another registrar during a pending court action or arbitration, provided that the domain name you have registered with us shall continue to be subject to the proceedings commenced against you in accordance with the terms of this Policy. In the event that you transfer a domain name registration to us during the pendency of a court action or arbitration, such dispute shall remain subject to the domain name dispute policy of the registrar from which the domain name registration was transferred. 9. Policy Modifications. This Policy may only be modified by auDA. You agree to be bound by any changes made to this Policy from the time that the changed Policy is published by auDA.

Appendix 2: Schedule B – Rules for .au Dispute Resolution Policy (auDRP Rules) (Reproduced with permission from auDA) NOTE: This policy has been adapted from the Uniform Dispute Resolution Policy (UDRP) Rules of the Internet Corporation for Assigned Names and Numbers (ICANN). Administrative proceedings for the resolution of disputes under the auDRP are governed by the auDRP Rules and also the Supplemental Rules of the Provider administering the proceedings, as posted on its web site. 1. Definitions In these Rules: Complainant means the party initiating a complaint concerning a domain name registration. auDA refers to .au Domain Administration Limited. Mutual Jurisdiction means a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain name holder has submitted in its Registrant Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain name holder’s address as shown for the registration of the domain name in the registry database at the time the complaint is submitted to the Provider. Panel means an administrative panel appointed by a Provider to decide a complaint concerning a domain name registration. Panellist means an individual appointed by a Provider to be a member of a Panel. Party means a Complainant or a Respondent. Policy means the .au Dispute Resolution Policy (auDRP) set out in Schedule A as modified and published by auDA from time to time. Provider means a dispute resolution service provider approved by auDA. A list of such Providers appears on the auDA website at http:// www.auda.org.au/policy/audrp Registrar means the entity with which the Respondent has registered a domain name that is the subject of a complaint, whether directly or through any reseller. Registrant Agreement means the agreement between a Registrar and a domain name holder. Respondent means registered the holder of a domain name against which a complaint is initiated.

216

Australian Domain Name Law

Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name. Supplemental Rules means the rules adopted by the Provider administering a proceeding to supplement these Rules. Supplemental Rules must be approved by auDA and shall cover such topics as fees, word and page limits and guidelines, file size and formal modalities, the means for communicating with the Provider and the Panel, and the form of cover sheets. Written Notice means hardcopy notification by the Provider to the Respondent of the commencement of an administrative proceeding under the Policy which shall inform the respondent that a complaint has been filed against it, and which shall state that the Provider has electronically transmitted the complaint including annexes to the Respondent by means specified herein. Written notice does not include a hardcopy of the complaint itself or of any annexes.

2. Communications (a) When forwarding a complaint including any annexes, electronically to the Respondent, it shall be the Provider’s responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. Achieving actual notice, or employing the following measures to do so, shall discharge this responsibility: (i) sending Written Notice of the complaint to all postal mail and facsimile addresses supplied by Registrar to the Provider for the purposes of achieving actual notice to Respondent; and (ii) sending a copy of the complaint including any annexes in electronic form by email to: (A) the email addresses for the Respondent as recorded in the WHOIS record, including technical, administrative, and other notified contacts; (B) postmaster@; and (C) if the domain name (or “www.” followed by the domain name) resolves to an active web page (other than a generic page the Provider concludes is maintained by a registrar or ISP for parking domain names registered by multiple domain name holders), any email address shown or email links on that web page; and (iii) sending the complaint including any annexes to any email address the Respondent has notified the Provider it prefers and, to the extent practicable, to all other email addresses provided to the Provider by Complainant under Paragraph 3(b)(v). (b) Except as provided in Paragraph 2(a), any written communication to Complainant or Respondent provided for under these Rules shall be made electronically via the Internet (a record of its transmission being available), or by any requested means stated by the Complainant or Respondent, respectively (see Paragraphs 3(b)(iii) and 5(b)(iii)). (c) Any communication to the Provider or the Panel shall be made by the means and in the manner (including, where applicable, number of copies) stated in the Provider’s Supplemental Rules. (d) Communications shall be made in the language prescribed in Paragraph 11.

Appendix 2: Schedule B – Rules for .au Dispute Resolution Policy (auDRP Rules)

(e) Either Party may update its contact details by notifying the Provider and the Registrar. (f) Except as otherwise provided in these Rules, or decided by a Panel, all communications provided for under these Rules shall be deemed to have been made: (i) if via the Internet, on the date that the communication was transmitted, provided that the date of transmission is verifiable; or, where applicable (ii) if delivered by telecopy or facsimile transmission, on the date shown on the confirmation of transmission; or (iii) if by postal or courier service, on the date marked on the receipt. (g) Except as otherwise provided in these Rules, all time periods calculated under these Rules to begin when a communication is made shall begin to run on the earliest date that the communication is deemed to have been made in accordance with Paragraph 2(f). (h) Any communication by (i) a Panel to any Party shall be copied to the Provider and to the other Party; (ii) the Provider to any Party shall be copied to the other Party; and (iii) a Party shall be copied to the other Party, the Panel and the Provider, as the case may be. (i) It shall be the responsibility of the sender to retain records of the fact and circumstances of sending, which shall be available for inspection by affected parties and for reporting purposes. (j) In the event a Party sending a communication receives notification of nondelivery of the communication, the Party shall promptly notify the Panel (or, if no Panel is yet appointed, the Provider) of the circumstances of the notification. Further proceedings concerning the communication and any response shall be as directed by the Panel (or the Provider). 3. The Complaint (a) Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by auDA. (Due to capacity constraints or for other reasons, a Provider’s ability to accept complaints may be suspended at times. In that event, the Provider shall refuse the submission. The person or entity may submit the complaint to another Provider.) (b) The complaint including any annexes shall be submitted in electronic form and shall: (i) Request that the complaint be submitted for decision in accordance with the Policy and these Rules; (ii) Provide the name, postal and email addresses, and the telephone and fax numbers of the Complainant and of any representative authorised to act for the Complainant in the administrative proceeding;

217

218

Australian Domain Name Law

(iii) Specify a preferred method for communications directed to the Complainant in the administrative proceeding (including person to be contacted, medium, and address information) for each of (A) electronic-only material and (B) material including hard copy (where electronic communications via the Internet are unavailable); (iv) Designate whether Complainant elects to have the dispute decided by a single member or a three member Panel and, in the event Complainant elects a three member Panel, provide the names and contact details of three candidates to serve as one of the Panellists (these candidates may be drawn from any auDA approved Provider’s list of Panellists); (v) Provide the name of the Respondent (domain name holder) and all information (including any postal and email addresses and telephone and fax numbers) known to Complainant regarding how to contact Respondent or any representative of Respondent, including contact information based on pre-complaint dealings, in sufficient detail to allow the Provider to send the complaint as described in Paragraph 2(a); (vi) Specify the domain name(s) that is/are the subject of the complaint; (vii) Identify the Registrar(s) with whom the domain name(s) is/are registered at the time the complaint is filed; (viii) Specify the name(s), trademark(s) or service mark(s) on which the complaint is based and, for each mark, describe the goods or services, if any, with which the mark is used (Complainant may also separately describe other goods and services with which it intends, at the time the complaint is submitted, to use the mark in the future.); (ix) Describe, in accordance with the Policy, the grounds on which the complaint is made. (The description should discuss any aspects of the Policy that are applicable. The description shall comply with any word or page limit set forth in the Provider’s Supplemental Rules.); (x) Specify, in accordance with the Policy, the remedies sought; (xi) Identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the complaint; (xii) State whether a copy of the complaint, together with the cover sheet as prescribed by the Provider’s Supplemental Rules, has been sent or transmitted to the Respondent (domain name holder), in accordance with Paragraph 2(b); (xiii) State that Complainant will submit, with respect to any challenges to a decision in the administrative proceeding cancelling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction; (xiv) Conclude with the following statement followed by the signature of the Complainant or its authorised representative: Complainant agrees that its claims and remedies concerning the registration of the domain name, the dispute, or the dispute’s

Appendix 2: Schedule B – Rules for .au Dispute Resolution Policy (auDRP Rules)

resolution shall be solely against the domain name holder and waives all such claims and remedies against (a) the dispute resolution Provider and Panellists, except in the case of deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d) auDA, as well as their directors, officers, employees, and agents. Complainant certifies that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good faith and reasonable argument.

; and (xv) Annex any documentary or other evidence, including a copy of the Policy applicable to the domain name(s) in dispute and any name, trademark or service mark registration upon which the complaint relies, together with a schedule indexing such evidence. (c) The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. 4. Notification of Complaint (a) The Provider shall review the complaint for administrative compliance with the Policy and these Rules and, if in compliance, shall send Written Notice of the complaint (together with the explanatory cover sheet prescribed by the Provider’s Supplemental Rules) to the Respondent, in the manner prescribed by Paragraph 2(a), within three (3) calendar days following receipt of the fees to be paid by the Complainant in accordance with Paragraph 19. (b) If the Provider finds the complaint to be administratively deficient, it shall promptly notify the Complainant and Respondent of the nature of the deficiencies identified. The Complainant shall have five (5) calendar days within which to correct any such deficiencies by sending a revised Complaint to the Provider. If this is not done the administrative proceeding will be deemed withdrawn without prejudice to submission of a different complaint by Complainant. (c) The date of commencement of the administrative proceeding shall be the date on which the Provider sends a copy of the complaint and all annexures to the Respondent in accordance with Paragraph 2(a)(ii). (d) The Provider shall immediately notify the Complainant, the Respondent, the concerned Registrar(s), and auDA of the date of commencement of the administrative proceeding. 5. The Response (a) No later than twenty (20) days after the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider. (b) The response including any annexes shall be submitted in electronic form and shall:

219

220

Australian Domain Name Law

(i) Respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name (This portion of the response shall comply with any word or page limit set forth in the Provider’s Supplemental Rules.); (ii) Provide the name, postal and email addresses, and the telephone and fax numbers of the Respondent (domain name holder) and of any representative authorised to act for the Respondent in the administrative proceeding; (iii) Specify a preferred method for communications directed to the Respondent in the administrative proceeding (including person to be contacted, medium, and address information) for each of (A) electronic-only material and (B) material including hard copy (where electronic communications via the Internet are unavailable); (iv) If Complainant has elected a single member panel in the Complaint (see Paragraph 3(b)(iv)), state whether Respondent elects instead to have the dispute decided by a three member panel; (v) If either Complainant or Respondent elects a three member Panel, provide the names and contact details of three candidates to serve as one of the Panellists (these candidates may be drawn from any auDA approved Provider’s list of Panellists); (vi) Identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the complaint; (vii) State that a copy of the response has been sent or transmitted to the Complainant, in accordance with Paragraph 2(b); and (viii) Conclude with the following statement followed by the signature of the Respondent or its authorised representative: Respondent agrees that its claims and remedies concerning the registration of the domain name, the dispute, or the dispute’s resolution shall be solely against the complainant and waives all such claims and remedies against (a) the dispute resolution Provider and Panellists, except in the case of deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d) auDA, as well as their directors, officers, employees, and agents. Respondent certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good faith and reasonable argument.

; and (ix) Annex any documentary or other evidence upon which the Respondent relies, together with a schedule indexing such documents.

Appendix 2: Schedule B – Rules for .au Dispute Resolution Policy (auDRP Rules)

(c) If Complainant has elected to have the dispute decided by a single member Panel and Respondent elects a three member Panel, Respondent shall be required to pay one-half of the applicable fee for a three member Panel as set forth in the Provider’s Supplemental Rules. This payment shall be made together with the submission of the response to the Provider. In the event that the required payment is not made, the dispute shall be decided by a single member Panel. (d) At the request of the Respondent, the Provider may, in exceptional cases, extend the period of time for the filing of the response. The period may also be extended by written stipulation between the Parties, provided the stipulation is approved by the Provider. (e) If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint. 6. Appointment of the Panel and Timing of Decision (a) Each Provider shall maintain and publish a publicly available list of Panellists and their qualifications. (b) If neither the Complainant nor the Respondent has elected a three member Panel (Paragraphs 3(b)(iv) and 5(b)(iv)), the Provider shall appoint, within five (5) calendar days following receipt of the response by the Provider, or the lapse of the time period for the submission thereof, a single Panellist from its list of Panellists. The fees for a single member Panel shall be paid entirely by the Complainant. (c) If either the Complainant or the Respondent elects to have the dispute decided by a three member Panel, the Provider shall appoint three Panellists in accordance with the procedures identified in Paragraph 6(e). The fees for a three member Panel shall be paid in their entirety by the Complainant, except where the election for a three member Panel was made by the Respondent, in which case the applicable fees shall be shared equally between the Parties. (d) Unless it has already elected a three member Panel, the Complainant shall submit to the Provider, within five (5) calendar days of communication of a response in which the Respondent elects a three member Panel, the names and contact details of three candidates to serve as one of the Panellists. These candidates may be drawn from any auDA approved Provider’s list of Panellists. (e) In the event that either the Complainant or the Respondent elects a three member Panel, the Provider shall endeavour to appoint one Panellist from the list of candidates provided by each of the Complainant and the Respondent. In the event the Provider is unable within five (5) calendar days to secure the appointment of a Panellist on its customary terms from either Party’s list of candidates, the Provider shall make that appointment from its list of Panellists. The third Panellist shall be appointed by the Provider from its list of Panellists.

221

222

Australian Domain Name Law

(f) Once the entire Panel is appointed, the Provider shall notify the Parties of the Panellists appointed and the date by which, absent exceptional circumstances, the Panel shall forward its decision on the complaint to the Provider. 7. Impartiality and Independence A Panellist shall be impartial and independent and shall have, before accepting appointment, disclosed to the Provider any circumstances giving rise to justifiable doubt as to the Panellist’s impartiality or independence. If, at any stage during the administrative proceeding, new circumstances arise that could give rise to justifiable doubt as to the impartiality or independence of the Panellist, that Panellist shall promptly disclose such circumstances to the Provider. In such event, the Provider shall have the discretion to appoint a substitute Panellist. 8. Communication Between Parties and the Panel No Party or anyone acting on its behalf may have any unilateral communication with the Panel. All communications between a Party and the Panel or the Provider shall be made to a case administrator appointed by the Provider in the manner prescribed in the Provider’s Supplemental Rules. 9. Transmission of the File to the Panel The Provider shall make the file available to the Panel as soon as the Panellist is appointed in the case of a Panel consisting of a single member, or as soon as the last Panellist is appointed in the case of a three member Panel. 10. General Powers of the Panel (a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules. (b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. (c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel. (d) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence. (e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules. 11. Language of Proceedings (a) Unless otherwise agreed by the Parties, or specified otherwise in the Registrant Agreement, the language of the administrative proceeding shall be the language of the Registrant Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Appendix 2: Schedule B – Rules for .au Dispute Resolution Policy (auDRP Rules)

(b) The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding. 12. Further Statements In addition to the complaint and the response, the Panel may request or permit, in its sole discretion, further statements or documents from either of the Parties. 13. In-Person Hearings There shall be no in-person hearings (including hearings by teleconference, videoconference, and web conference), unless the Panel determines, in its sole discretion and as an exceptional matter, that such a hearing is necessary for deciding the complaint. 14. Default (a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint. (b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. 15. Panel Decisions (a) A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. (b) In the absence of exceptional circumstances, the Panel shall forward its decision on the complaint to the Provider within fourteen (14) days of its appointment pursuant to Paragraph 6. (c) In the case of a three member Panel, the Panel’s decision shall be made by a majority. (d) The Panel’s decision shall be in writing, provide the reasons on which it is based, indicate the date on which it was rendered and identify the name(s) of the Panellist(s). (e) Panel decisions and dissenting opinions shall normally comply with the guidelines as to length set forth in the Provider’s Supplemental Rules. Any dissenting opinion shall accompany the majority decision. If the Panel concludes that the dispute is not within the scope of Paragraph 4(a) of the Policy, it shall so state. If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

223

224

Australian Domain Name Law

16. Communication of Decision to Parties (a) Within five calendar days after receiving the decision from the Panel, the Provider shall communicate the full text of the decision to each Party, the concerned Registrar(s), and auDA. The concerned Registrar(s) shall immediately communicate to each Party, the Provider, and auDA the date for the implementation of the decision in accordance with the Policy. (b) Except if the Panel determines otherwise (see Paragraph 4(j) of the Policy), the Provider shall publish the full decision and the date of its implementation on a publicly accessible website. In any event, the portion of any decision determining a complaint to have been brought in bad faith (see Paragraph 15(e) of these Rules) shall be published. 17. Settlement or Other Grounds for Termination (a) If, before the Panel’s decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding. (b) If, before the Panel’s decision is made, it becomes unnecessary or impossible to continue the administrative proceeding for any reason, the Panel shall terminate the administrative proceeding, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel. 18. Effect of Court Proceedings (a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision. (b) In the event that a Party initiates any legal proceedings during the pendency of an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, it shall promptly notify the Panel and the Provider. See Paragraph 8 above. 19. Fees (a) The Complainant shall pay to the Provider an initial fixed fee, in accordance with the Provider’s Supplemental Rules, within the time and in the amount required. A Respondent electing under Paragraph 5(b)(iv) to have the dispute decided by a three member Panel, rather than the single member Panel elected by the Complainant, shall pay the Provider one-half the fixed fee for a three member Panel. See Paragraph 5(c). In all other cases, the Complainant shall bear all of the Provider’s fees, except as prescribed under Paragraph 19(d). Upon appointment of the Panel, the Provider shall refund the appropriate portion, if any, of the initial fee to the Complainant, as specified in the Provider’s Supplemental Rules. (b) No action shall be taken by the Provider on a complaint until it has received from Complainant the initial fee in accordance with Paragraph 19(a).

Appendix 2: Schedule B – Rules for .au Dispute Resolution Policy (auDRP Rules)

(c) If the Provider has not received the fee within ten (10) calendar days of receiving the complaint, the complaint shall be deemed withdrawn and the administrative proceeding terminated. (d) In exceptional circumstances, for example in the event an in-person hearing is held, the Provider shall request the Parties for the payment of additional fees, which shall be established in agreement with the Parties and the Panel. 20. Exclusion of Liability Except in the case of deliberate wrongdoing, neither the Provider nor a Panellist shall be liable to a Party for any act or omission in connection with any administrative proceeding under these Rules. 21. Amendments The version of these Rules in effect at the time of the submission of the complaint to the Provider shall apply to the administrative proceeding commenced thereby. These Rules may not be amended without the express written approval of auDA.

225

Appendix 3: Domain Name Eligibility and Allocation Policy Rules for Open 2LDs (auDA PUBLISHED POLICY – reproduced with permission from .au Domain Administration (auDA)) (Policy No: 2012-04; Publication Date: 17/12/2012; Status: Current) 1. BACKGROUND 1.1 This document sets out the policy rules that govern the granting of domain name licences in the open second level domains (2LDs) in the .au domain. 1.2 The policy rules are based on the Domain Name Eligibility and Allocation Policy Rules for Open Second Level Domains (2LDs) (2008-05) and include the final recommendations of auDA’s 2010 Names Policy Panel. 1.3 The policy rules set out in this document do not have retrospective effect. Domain name licences that were granted before implementation of this policy will be “grandfathered” and the registrant will be entitled to renew the licence provided that there has been no change in the registrant’s circumstances that affects their eligibility to hold the domain name licence. For example, if the registrant of a com.au domain name no longer holds the registered business name that they used as a basis for licensing the domain name in the first place. 2. DOMAIN NAME LICENCES 2.1 There are no proprietary rights in the domain name system (DNS). A registrant does not “own” a domain name. Instead, the registrant holds a licence to use a domain name, for a specified period of time and under certain terms and conditions. 2.2 The terms and conditions of a domain name licence are set out in: a) this document; b) the Mandatory Terms and Conditions Applying to .au Domain Name Licences; c) the registration application and subsequent agreement between a registrant and registrar; and d) any other of auDA’s Published Policies that are applicable. 2.3 There is no hierarchy of rights in the DNS. For example, a registered trade mark does not confer any better entitlement to a domain name than a registered company or business name. Domain name licences are allocated on a “first come, first served” basis. Provided the relevant eligibility and allocation rules are satisfied, the first registrant whose application for a particular domain name is submitted to the registry will be permitted to license it.

228

Australian Domain Name Law

3. STRUCTURE OF .AU DOMAIN 3.1 The .au domain is sub-divided into a number of 2LDs (for example, com.au, edu.au, id.au). All .au domain names are registered as third level domains (3LDs). It is not possible to register domain names as 2LDs directly under .au. 3.2 Each 2LD has a purpose. For example, com.au is for commercial entities, gov.au is for government bodies and org.au is for non-commercial organisations. The purpose of each 2LD dictates the eligibility and allocation rules applicable in that 2LD. 3.3 The 2LDs are divided into 2 categories: a) “open 2LDs” – those 2LDs that are basically open to all users, subject to some eligibility criteria; and b) “closed 2LDs” – those 2LDs with a defined community of interest that are closed to the general public. 3.4 Schedule A of this document sets out the eligibility and allocation rules that apply to all open 2LDs. Schedules B-F of this document set out the eligibility and allocation rules that apply to each open 2LD. 3.5 The eligibility and allocation rules that apply to closed 2LDs are determined by the relevant 2LD Manager and approved by auDA. 4. APPLICATION OF POLICY RULES 4.1 It is the responsibility of auDA to preserve the integrity of the .au domain by ensuring that the policy rules are applied correctly and enforced as necessary. auDA reserves the right to revoke any domain name licence that has been granted, or subsequently held, in breach of the relevant policy rules. 4.2 It is the responsibility of all auDA accredited registrars, in accordance with the Registrar Agreement, to apply the policy rules set out in this document. Each domain name application must be checked for compliance with the relevant policy rules by the registrar before it is submitted to the registry for inclusion in the registry database. 4.3 It is the responsibility of all registrants, in accordance with their registration application and subsequent agreement, to ensure that they comply with the policy rules set out in this document when submitting an application to register or renew a domain name in any of the open 2LDs. To that end, a registrant is required to warrant to the registrar that they comply with the rules. 4.4 auDA has published Guidelines on the Interpretation of Policy Rules for the Open 2LDs, to assist registrars, registrants and other interested parties in interpreting the policy rules outlined in this document. The guidelines contain more detail and examples of how the policy rules are applied and enforced.

Appendix 3: Domain Name Eligibility and Allocation Policy Rules for Open 2LDs

5. BREACHES OF POLICY 5.1 Where auDA considers on reasonable grounds that a registrant has made a false warranty to the registrar regarding their compliance with the policy rules, or otherwise acted in bad faith in order to obtain the domain name licence, auDA reserves the right to revoke the domain name licence. 5.2 Where auDA becomes aware that a registrar has approved a domain name application through misinterpretation of the relevant policy rules, auDA may issue a policy clarification to assist registrars in the interpretation of the policy rules. Under the terms and conditions of the Registrar Agreement, auDA reserves the right to take action against a registrar where it has reasonable grounds to believe that the registrar has acted negligently or recklessly in approving a domain name application in breach of the relevant policy rules. 6. REVIEW OF POLICY 6.1 From time to time, auDA may update this document for the purposes of clarification or correction (for example, if governments introduce a new type of business or other official identifier). 6.2 auDA will not make any major changes to this document without conducting an Advisory Panel process, as described in auDA’s Constitution. SCHEDULE A – ELIGIBILITY AND ALLOCATION RULES FOR ALL OPEN 2LDS First come, first served 1. Domain name licences are allocated on a “first come, first served” basis. It is not possible to pre-register or otherwise reserve a domain name. Registrants must be Australian 2. Domain name licences may only be allocated to a registrant who is Australian, as defined under the eligibility and allocation rules for each 2LD. Composition of domain names 3. Domain names must: a) be at least two characters long; b) contain only letters (a-z), numbers (0-9) and hyphens (-), or a combination of these; c) start and end with a number or a letter, not a hyphen; and d) not contain hyphens in the third and fourth position (eg. ab--cd.com.au). Domain name licence period 4. The domain name licence period is fixed at two years. It is not possible to license a domain name for a shorter or longer period.

229

230

Australian Domain Name Law

5. Renewal of a domain name licence at the end of the two year period is dependent on the registrant continuing to meet the eligibility and allocation rules for the relevant 2LD. Number of domain names 6. There is no restriction on the number of domain names that may be licensed by a registrant. auDA’s Reserved List 7. auDA’s Reserved List contains names that may not be licensed. The list is available on auDA’s website. Prohibition on registering domain names for sole purpose of resale 8. A registrant may not register a domain name for the sole purpose of resale or transfer to another entity. SCHEDULE B – ELIGIBILITY AND ALLOCATION RULES FOR ASN.AU The asn.au 2LD is for non-commercial organisations. The following rules are to be read in conjunction with the Eligibility and Allocation Rules for All Open 2LDs, contained in Schedule A of this document. 1. To be eligible for a domain name in the asn.au 2LD, registrants must be non- commercial organisations as follows: a) an association incorporated in any Australian State or Territory; or b) a political party registered with the Australian Electoral Commission; or c) a trade union or other organisation registered under the Fair Work (Registered Organisations) Act 2009; or d) a sporting or special interest club operating in Australia; or e) a charity operating in Australia, as defined in the registrant’s constitution or other documents of incorporation; or f) a non-profit organisation operating in Australia, as defined in the registrant’s constitution or other documents of incorporation. 2. Domain names in the asn.au 2LD must be: a) an exact match, abbreviation or acronym of the registrant’s name; or b) otherwise closely and substantially connected to the registrant, in accordance with the categories of “close and substantial connection” set out in the Guidelines on the Interpretation of Policy Rules for the Open 2LDs. SCHEDULE C – ELIGIBILITY AND ALLOCATION RULES FOR COM.AU The com.au 2LD is for commercial purposes. The following rules are to be read in conjunction with the Eligibility and Allocation Rules for All Open 2LDs, contained in Schedule A of this document. 1. To be eligible for a domain name in the com.au 2LD, registrants must be:

Appendix 3: Domain Name Eligibility and Allocation Policy Rules for Open 2LDs

a) an Australian registered company; or b) trading under a registered business name in any Australian State or Territory; or c) an Australian partnership or sole trader; or d) a foreign company licensed to trade in Australia; or e) an owner of an Australian Registered Trade Mark; or f) an applicant for an Australian Registered Trade Mark; or g) an association incorporated in any Australian State or Territory; or h) an Australian commercial statutory body. 2. Domain names in the com.au 2LD must be: a) an exact match, abbreviation or acronym of the registrant’s name or trademark; or b) otherwise closely and substantially connected to the registrant, in accordance with the categories of “close and substantial connection” set out in the Guidelines on the Interpretation of Policy Rules for the Open 2LDs. 3. A domain name may also be registered in the com.au 2LD under paragraph 2(b) for the purpose of domain monetisation, in accordance with the explanation of “domain monetisation” set out in the Guidelines on the Interpretation of Policy Rules for the Open 2LDs, provided that the following conditions are met: a) the content on the website to which the domain name resolves must be related specifically and predominantly to subject matter denoted by the domain name; and b) the domain name must not be, or incorporate, an entity name, personal name or brand name in existence at the time the domain name was registered*. * Definitions: • “entity name” means the name of an Australian registered company or incorporated association as listed with the Australian Securities and Investment Commission (ASIC), or the name of an Australian government body. It does not include a registered business name; • “personal name” means the given name(s) and/or last name of a person; and • “brand name” means the name of an identifiable and distinctive product or service, whether commercial or non-commercial. ELIGIBILITY AND ALLOCATION RULES FOR ID.AU The id.au 2LD is for individuals. The following rules are to be read in conjunction with the Eligibility and Allocation Rules for All Open 2LDs, contained in Schedule A of this document. 1. To be eligible for a domain name in the id.au 2LD, registrants must be: a) an Australian citizen; or b) an Australian resident. 2. Domain names in the id.au 2LD must be: a) an exact match, abbreviation or acronym of the registrant’s personal name; or

231

232

Australian Domain Name Law

b) otherwise closely and substantially connected to the registrant, in accordance with the categories of “close and substantial connection” set out in the Guidelines on the Interpretation of Policy Rules for the Open 2LDs. 3. A domain name may also be registered in the id.au 2LD under paragraph 2(b) if it refers to a personal interest or hobby of the registrant, but the domain name must not be, or incorporate, an entity name, personal name or brand name in existence at the time the domain name was registered*. * Definitions: • “entity name” means the name of an Australian registered company or incorporated association as listed with the Australian Securities and Investment Commission (ASIC), or the name of an Australian government body. It does not include a registered business name; • “personal name” means the given name(s) and/or last name of a person; and • “brand name” means the name of an identifiable and distinctive product or service, whether commercial or non-commercial. SCHEDULE E – ELIGIBILITY AND ALLOCATION RULES FOR NET.AU The net.au 2LD is for commercial purposes. The following rules are to be read in conjunction with the Eligibility and Allocation Rules for All Open 2LDs, contained in Schedule A of this document. 1. To be eligible for a domain name in the net.au 2LD, registrants must be: a) an Australian registered company; or b) trading under a registered business name in any Australian State or Territory; or c) an Australian partnership or sole trader; or d) a foreign company licensed to trade in Australia; or e) an owner of an Australian Registered Trade Mark; or f) an applicant for an Australian Registered Trade Mark; or g) an association incorporated in any Australian State or Territory; or h) an Australian commercial statutory body. 2. Domain names in the net.au 2LD must be: a) an exact match, abbreviation or acronym of the registrant’s name or trademark; or b) be otherwise closely and substantially connected to the registrant, in accordance with the categories of “close and substantial connection” set out in the Guidelines on the Interpretation of Policy Rules for the Open 2LDs; or 3. A domain name may also be registered in the net.au 2LD under paragraph 2(b) for the purpose of domain monetisation, in accordance with the explanation of “domain monetisation” set out in the Guidelines on the Interpretation of Policy Rules for the Open 2LDs, provided that the following conditions are met:

Appendix 3: Domain Name Eligibility and Allocation Policy Rules for Open 2LDs

a) the content on the website to which the domain name resolves must be related specifically and predominantly to subject matter denoted by the domain name; and b) the domain name must not be, or incorporate, an entity name, personal name or brand name in existence at the time the domain name was registered. * Definitions: • “entity name” means the name of an Australian registered company or incorporated association as listed with the Australian Securities and Investment Commission (ASIC), or the name of an Australian government body. It does not include a registered business name; • “personal name” means the given name(s) and/or last name of a person; and • “brand name” means the name of an identifiable and distinctive product or service, whether commercial or non-commercial. SCHEDULE F – ELIGIBILITY AND ALLOCATION RULES FOR ORG.AU The org.au 2LD is for non-commercial organisations. The following rules are to be read in conjunction with the Eligibility and Allocation Rules for All Open 2LDs, contained in Schedule A of this document. 1. To be eligible in the org.au 2LD, registrants must be non-commercial organisations as follows: a) an association incorporated in any Australian State or Territory; or b) a political party registered with the Australian Electoral Commission; or c) a trade union or other organisation registered under the Fair Work (Registered Organisations) Act 2009; or d) a sporting or special interest club operating in Australia; or e) a charity operating in Australia, as defined in the registrant’s constitution or other documents of incorporation; or f) a non-profit organisation operating in Australia, as defined in the registrant’s constitution or other documents of incorporation. 2. Domain names in the org.au 2LD must be: a) an exact match, abbreviation or acronym of the registrant’s name; or b) otherwise closely and substantially connected to the registrant, in accordance with the categories of “close and substantial connection” set out in the Guidelines on the Interpretation of Policy Rules for the Open 2LDs.

233

Appendix 4: Uniform Domain Name Dispute Resolution Policy (Reproduced with permission from Internet Corporation of Assigned Names and Numbers (ICANN)) (Policy Adopted: August 26, 1999; Implementation Documents Approved: October 24, 1999) Notes: 1. This policy is now in effect. See http://www.icann.org/udrp/udrpschedule.htm for the implementation schedule. 2. This policy has been adopted by all ICANN-accredited registrars. It has also been adopted by certain managers of country-code top-level domains (e.g., .nu, .tv, .ws). 3. The policy is between the registrar (or other registration authority in the case of a country-code top-level domain) and its customer (the domainname holder or registrant). Thus, the policy uses “we” and “our” to refer to the registrar and it uses “you” and “your” to refer to the domain-name holder. 1. Purpose. This Uniform Domain Name Dispute Resolution Policy (the “Policy”) has been adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”), is incorporated by reference into your Registration Agreement, and sets forth the terms and conditions in connection with a dispute between you and any party other than us (the registrar) over the registration and use of an Internet domain name registered by you. Proceedings under Paragraph 4 of this Policy will be conducted according to the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules of Procedure”), which are available at https://www.icann.org/resources/pages/udrp-rules-201503-11-en, and the selected administrative-dispute-resolution service provider’s supplemental rules. 2. Your Representations. By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights. 3. Cancellations, Transfers, and Changes. We will cancel, transfer or otherwise make changes to domain name registrations under the following circumstances:

236

Australian Domain Name Law

a. subject to the provisions of Paragraph 8, our receipt of written or appropriate electronic instructions from you or your authorized agent to take such action; b. our receipt of an order from a court or arbitral tribunal, in each case of competent jurisdiction, requiring such action; and/or c. our receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which you were a party and which was conducted under this Policy or a later version of this Policy adopted by ICANN. (See Paragraph 4(i) and (k) below.) We may also cancel, transfer or otherwise make changes to a domain name registration in accordance with the terms of your Registration Agreement or other legal requirements. 4. Mandatory Administrative Proceeding. This Paragraph sets forth the type of disputes for which you are required to submit to a mandatory administrative proceeding. These proceedings will be conducted before one of the administrative-dispute-resolution service providers listed at http://www.icann.org/en/dndr/udrp/approved-providers.htm (each, a “Provider”). a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith. In the administrative proceeding, the complainant must prove that each of these three elements are present. b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

Appendix 4: Uniform Domain Name Dispute Resolution Policy

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. d. Selection of Provider. The complainant shall select the Provider from among those approved by ICANN by submitting the complaint to that Provider. The selected Provider will administer the proceeding, except in cases of consolidation as described in Paragraph 4(f). e. Initiation of Proceeding and Process and Appointment of Administrative Panel. The Rules of Procedure state the process for initiating and conducting a proceeding and for appointing the panel that will decide the dispute (the “Administrative Panel”). f. Consolidation. In the event of multiple disputes between you and a complainant, either you or the complainant may petition to consolidate the disputes before a single Administrative Panel. This petition shall be made to the first Administrative Panel appointed to hear a pending dispute between the parties. This Administrative Panel may consolidate before it any or all such disputes in its sole discretion, provided that the disputes being consolidated are governed by this Policy or a later version of this Policy adopted by ICANN. g. Fees. All fees charged by a Provider in connection with any dispute before an Administrative Panel pursuant to this Policy shall be paid by the complainant, except in cases where you elect to expand the Administrative

237

238

Australian Domain Name Law

Panel from one to three panelists as provided in Paragraph 5(b)(iv) of the Rules of Procedure, in which case all fees will be split evenly by you and the complainant. h. Our Involvement in Administrative Proceedings. We do not, and will not, participate in the administration or conduct of any proceeding before an Administrative Panel. In addition, we will not be liable as a result of any decisions rendered by the Administrative Panel. i. Remedies. The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant. j. Notification and Publication. The Provider shall notify us of any decision made by an Administrative Panel with respect to a domain name you have registered with us. All decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision. k. Availability of Court Proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel’s decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel’s decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name. 5. All Other Disputes and Litigation. All other disputes between you and any party other than us regarding your domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved between you and such other party through any court, arbitration or other proceeding that may be available.

Appendix 4: Uniform Domain Name Dispute Resolution Policy

6. Our Involvement in Disputes. We will not participate in any way in any dispute between you and any party other than us regarding the registration and use of your domain name. You shall not name us as a party or otherwise include us in any such proceeding. In the event that we are named as a party in any such proceeding, we reserve the right to raise any and all defenses deemed appropriate, and to take any other action necessary to defend ourselves. 7. Maintaining the Status Quo. We will not cancel, transfer, activate, deactivate, or otherwise change the status of any domain name registration under this Policy except as provided in Paragraph 3 above. 8. Transfers During a Dispute. a. Transfers of a Domain Name to a New Holder. You may not transfer your domain name registration to another holder (i) during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of our principal place of business) after such proceeding is concluded; or (ii) during a pending court proceeding or arbitration commenced regarding your domain name unless the party to whom the domain name registration is being transferred agrees, in writing, to be bound by the decision of the court or arbitrator. We reserve the right to cancel any transfer of a domain name registration to another holder that is made in violation of this subparagraph. b. Changing Registrars. You may not transfer your domain name registration to another registrar during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of our principal place of business) after such proceeding is concluded. You may transfer administration of your domain name registration to another registrar during a pending court action or arbitration, provided that the domain name you have registered with us shall continue to be subject to the proceedings commenced against you in accordance with the terms of this Policy. In the event that you transfer a domain name registration to us during the pendency of a court action or arbitration, such dispute shall remain subject to the domain name dispute policy of the registrar from which the domain name registration was transferred. 9. Policy Modifications. We reserve the right to modify this Policy at any time with the permission of ICANN. We will post our revised Policy at at least thirty (30) calendar days before it becomes effective. Unless this Policy has already been invoked by the submission of a complaint to a Provider, in which event the version of the Policy in effect at the time it was invoked will apply to you until the dispute is over, all such changes will be binding upon you with respect to any domain name registration dispute, whether the dispute arose before, on or after the effective date of our change. In the event that you object to a change in this Policy, your sole remedy is to cancel your domain name registration with us, provided that you will not be entitled to a refund of any fees you paid to us. The revised Policy will apply to you until you cancel your domain name registration.

239

Appendix 5: Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) (Reproduced with permission from Internet Corporation of Assigned Names and Numbers (ICANN)) (As approved by the ICANN Board of Directors on 28 September 2013.) These Rules are in effect for all uDRP proceedings in which a complaint is submitted to a provider on or after 31 July 2015. The prior version of the Rules, applicable to all proceedings in which a complaint was submitted to a Provider on or before 30 July 2015, is at https://www.icann.org/resources/pages/rules-be-201202-25-en. uDRP Providers may elect to adopt the notice procedures set forth in these Rules prior to 31 July 2015. Administrative proceedings for the resolution of disputes under the Uniform Dispute Resolution Policy adopted by ICANN shall be governed by these Rules and also the Supplemental Rules of the Provider administering the proceedings, as posted on its web site. To the extent that the Supplemental Rules of any Provider conflict with these Rules, these Rules supersede. 1. Definitions In these Rules: Complainant means the party initiating a complaint concerning a domain-name registration. ICANN refers to the Internet Corporation for Assigned Names and Numbers. Lock means a set of measures that a registrar applies to a domain name, which prevents at a minimum any modification to the registrant and registrar information by the Respondent, but does not affect the resolution of the domain name or the renewal of the domain name. Mutual Jurisdiction means a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder’s address as shown for the registration of the domain name in Registrar’s Whois database at the time the complaint is submitted to the Provider. Panel means an administrative panel appointed by a Provider to decide a complaint concerning a domain-name registration. Panelist means an individual appointed by a Provider to be a member of a Panel. Party means a Complainant or a Respondent.

242

Australian Domain Name Law

Pendency means the time period from the moment a uDRP complaint has been submitted by the Complainant to the uDRP Provider to the time the uDRP decision has been implemented or the uDRP complaint has been terminated. Policy means the Uniform Domain Name Dispute Resolution Policy that is incorporated by reference and made a part of the Registration Agreement. Provider means a dispute-resolution service provider approved by ICANN. A list of such Providers appears at http://www.icann.org/en/dndr/ udrp/approved-providers.htm. Registrar means the entity with which the Respondent has registered a domain name that is the subject of a complaint. Registration Agreement means the agreement between a Registrar and a domain-name holder. Respondent means the holder of a domain-name registration against which a complaint is initiated. Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. Supplemental Rules means the rules adopted by the Provider administering a proceeding to supplement these Rules. Supplemental Rules shall not be inconsistent with the Policy or these Rules and shall cover such topics as fees, word and page limits and guidelines, file size and format modalities, the means for communicating with the Provider and the Panel, and the form of cover sheets. Written Notice means hardcopy notification by the Provider to the Respondent of the commencement of an administrative proceeding under the Policy which shall inform the respondent that a complaint has been filed against it, and which shall state that the Provider has electronically transmitted the complaint including any annexes to the Respondent by the means specified herein. Written notice does not include a hardcopy of the complaint itself or of any annexes. 2. Communications (a) When forwarding a complaint, including any annexes, electronically to the Respondent, it shall be the Provider’s responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. Achieving actual notice, or employing the following measures to do so, shall discharge this responsibility: (i) sending Written Notice of the complaint to all postal-mail and facsimile addresses (A) shown in the domain name’s registration data in Registrar’s Whois database for the registered domain-name holder, the technical contact, and the administrative contact and (B) supplied by Registrar to the Provider for the registration’s billing contact; and (ii) sending the complaint, including any annexes, in electronic form by e-mail to: (A) the e-mail addresses for those technical, administrative, and billing contacts; (B) postmaster@; and

Appendix 5: Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”)

(C) if the domain name (or “www.” followed by the domain name) resolves to an active web page (other than a generic page the Provider concludes is maintained by a registrar or ISP for parking domain-names registered by multiple domain-name holders), any e- mail address shown or e-mail links on that web page; and (iii) sending the complaint, including any annexes, to any e-mail address the Respondent has notified the Provider it prefers and, to the extent practicable, to all other e-mail addresses provided to the Provider by Complainant under Paragraph 3(b)(v). (b) Except as provided in Paragraph 2(a), any written communication to Complainant or Respondent provided for under these Rules shall be made electronically via the Internet (a record of its transmission being available), or by any reasonably requested preferred means stated by the Complainant or Respondent, respectively (see Paragraphs 3(b)(iii) and 5(b)(iii)). (c) Any communication to the Provider or the Panel shall be made by the means and in the manner (including, where applicable, the number of copies) stated in the Provider’s Supplemental Rules. (d) Communications shall be made in the language prescribed in Paragraph 11. (e) Either Party may update its contact details by notifying the Provider and the Registrar. (f) Except as otherwise provided in these Rules, or decided by a Panel, all communications provided for under these Rules shall be deemed to have been made: (i) if via the Internet, on the date that the communication was transmitted, provided that the date of transmission is verifiable; or, where applicable (ii) if delivered by telecopy or facsimile transmission, on the date shown on the confirmation of transmission; or: (iii) if by postal or courier service, on the date marked on the receipt. (g) Except as otherwise provided in these Rules, all time periods calculated under these Rules to begin when a communication is made shall begin to run on the earliest date that the communication is deemed to have been made in accordance with Paragraph 2(f). (h) Any communication by (i) a Panel to any Party shall be copied to the Provider and to the other Party; (ii) the Provider to any Party shall be copied to the other Party; and (iii) a Party shall be copied to the other Party, the Panel and the Provider, as the case may be. (i) It shall be the responsibility of the sender to retain records of the fact and circumstances of sending, which shall be available for inspection by affected parties and for reporting purposes. This includes the Provider in sending Written Notice to the Respondent by post and/or facsimile under Paragraph 2(a)(i).

243

244

Australian Domain Name Law

(j) In the event a Party sending a communication receives notification of non-delivery of the communication, the Party shall promptly notify the Panel (or, if no Panel is yet appointed, the Provider) of the circumstances of the notification. Further proceedings concerning the communication and any response shall be as directed by the Panel (or the Provider). 3. The Complaint (a) Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN. (Due to capacity constraints or for other reasons, a Provider’s ability to accept complaints may be suspended at times. In that event, the Provider shall refuse the submission. The person or entity may submit the complaint to another Provider.) (b) The complaint including any annexes shall be submitted in electronic form and shall: (i) Request that the complaint be submitted for decision in accordance with the Policy and these Rules; (ii) Provide the name, postal and e-mail addresses, and the telephone and telefax numbers of the Complainant and of any representative authorized to act for the Complainant in the administrative proceeding; (iii) Specify a preferred method for communications directed to the Complainant in the administrative proceeding (including person to be contacted, medium, and address information) for each of (A) electronic-only material and (B) material including hard copy (where applicable); (iv) Designate whether Complainant elects to have the dispute decided by a single-member or a three-member Panel and, in the event Complainant elects a three-member Panel, provide the names and contact details of three candidates to serve as one of the Panelists (these candidates may be drawn from any ICANN-approved Provider’s list of panelists); (v) Provide the name of the Respondent (domain-name holder) and all information (including any postal and e-mail addresses and telephone and telefax numbers) known to Complainant regarding how to contact Respondent or any representative of Respondent, including contact information based on pre-complaint dealings, in sufficient detail to allow the Provider to send the complaint as described in Paragraph 2(a); (vi) Specify the domain name(s) that is/are the subject of the complaint; (vii) Identify the Registrar(s) with whom the domain name(s) is/are registered at the time the complaint is filed; (viii) Specify the trademark(s) or service mark(s) on which the complaint is based and, for each mark, describe the goods or services, if any, with which the mark is used (Complainant may also separately describe other goods and services with which it intends, at the time the complaint is submitted, to use the mark in the future.);

Appendix 5: Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”)

(ix) Describe, in accordance with the Policy, the grounds on which the complaint is made including, in particular, (1) the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint; and (3) why the domain name(s) should be considered as having been registered and being used in bad faith (The description should, for elements (2) and (3), discuss any aspects of Paragraphs 4(b) and 4(c) of the Policy that are applicable. The description shall comply with any word or page limit set forth in the Provider’s Supplemental Rules.); (x) Specify, in accordance with the Policy, the remedies sought; (xi) Identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the complaint; (xii) State that Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction; (xiii) Conclude with the following statement followed by the signature (in any electronic format) of the Complainant or its authorized representative: “Complainant agrees that its claims and remedies concerning the registration of the domain name, the dispute, or the dispute’s resolution shall be solely against the domain-name holder and waives all such claims and remedies against (a) the disputeresolution provider and panelists, except in the case of deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents.” “Complainant certifies that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”; and

(xiv) Annex any documentary or other evidence, including a copy of the Policy applicable to the domain name(s) in dispute and any trademark or service mark registration upon which the complaint relies, together with a schedule indexing such evidence. (c) The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.

245

246

Australian Domain Name Law

4. Notification of Complaint (a) The Provider shall submit a verification request to the Registrar. The verification request will include a request to Lock the domain name. (b) Within two (2) business days of receiving the Provider’s verification request, the Registrar shall provide the information requested in the verification request and confirm that a Lock of the domain name has been applied. The Registrar shall not notify the Respondent of the proceeding until the Lock status has been applied. The Lock shall remain in place through the remaining Pendency of the uDRP proceeding. Any updates to the Respondent’s data, such as through the result of a request by a privacy or proxy provider to reveal the underlying customer data, must be made before the two (2) business day period concludes or before the Registrar verifies the information requested and confirms the Lock to the uDRP Provider, whichever occurs first. Any modification(s) of the Respondent’s data following the two (2) business day period may be addressed by the Panel in its decision. (c) The Provider shall review the complaint for administrative compliance with the Policy and these Rules and, if in compliance, shall forward the complaint, including any annexes, electronically to the Respondent and Registrar and shall send Written Notice of the complaint (together with the explanatory cover sheet prescribed by the Provider’s Supplemental Rules) to the Respondent, in the manner prescribed by Paragraph 2(a), within three (3) calendar days following receipt of the fees to be paid by the Complainant in accordance with Paragraph 19. (d) If the Provider finds the complaint to be administratively deficient, it shall promptly notify the Complainant and the Respondent of the nature of the deficiencies identified. The Complainant shall have five (5) calendar days within which to correct any such deficiencies, after which the administrative proceeding will be deemed withdrawn without prejudice to submission of a different complaint by Complainant. (e) If the Provider dismisses the complaint due to an administrative deficiency, or the Complainant voluntarily withdraws its complaint, the Provider shall inform the Registrar that the proceedings have been withdrawn, and the Registrar shall release the Lock within one (1) business day of receiving the dismissal or withdrawal notice from the Provider. (f) The date of commencement of the administrative proceeding shall be the date on which the Provider completes its responsibilities under Paragraph 2(a) in connection with sending the complaint to the Respondent. (g) The Provider shall immediately notify the Complainant, the Respondent, the concerned Registrar(s), and ICANN of the date of commencement of the administrative proceeding. The Provider shall inform the Respondent that any corrections to the Respondent’s contact information during the remaining Pendency of the uDRP proceedings shall be communicated to the Provider further to Rule 5(c)(ii) and 5(c)(iii).

Appendix 5: Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”)

5. The Response (a) Within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider. (b) The Respondent may expressly request an additional four (4) calendar days in which to respond to the complaint, and the Provider shall automatically grant the extension and notify the Parties thereof. This extension does not preclude any additional extensions that may be given further to 5(d) of the Rules. (c) The response, including any annexes, shall be submitted in electronic form and shall: (i) Respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (This portion of the response shall comply with any word or page limit set forth in the Provider’s Supplemental Rules.); (ii) Provide the name, postal and e-mail addresses, and the telephone and telefax numbers of the Respondent (domain-name holder) and of any representative authorized to act for the Respondent in the administrative proceeding; (iii) Specify a preferred method for communications directed to the Respondent in the administrative proceeding (including person to be contacted, medium, and address information) for each of (A) electronic-only material and (B) material including hard copy (where applicable); (iv) If Complainant has elected a single-member panel in the complaint (see Paragraph 3(b)(iv)), state whether Respondent elects instead to have the dispute decided by a three-member panel; (v) If either Complainant or Respondent elects a three-member Panel, provide the names and contact details of three candidates to serve as one of the Panelists (these candidates may be drawn from any ICANN-approved Provider’s list of panelists); (vi) Identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the complaint; (vii) State that a copy of the response including any annexes has been sent or transmitted to the Complainant, in accordance with Paragraph 2(b); and (viii) Conclude with the following statement followed by the signature (in any electronic format) of the Respondent or its authorized representative: “Respondent certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”; and

247

248

Australian Domain Name Law

(ix) Annex any documentary or other evidence upon which the Respondent relies, together with a schedule indexing such documents. (d) If Complainant has elected to have the dispute decided by a single-member Panel and Respondent elects a three-member Panel, Respondent shall be required to pay one-half of the applicable fee for a three-member Panel as set forth in the Provider’s Supplemental Rules. This payment shall be made together with the submission of the response to the Provider. In the event that the required payment is not made, the dispute shall be decided by a single-member Panel. (e) At the request of the Respondent, the Provider may, in exceptional cases, extend the period of time for the filing of the response. The period may also be extended by written stipulation between the Parties, provided the stipulation is approved by the Provider. (f) If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint. 6. Appointment of the Panel and Timing of Decision (a) Each Provider shall maintain and publish a publicly available list of panelists and their qualifications. (b) If neither the Complainant nor the Respondent has elected a three-member Panel (Paragraphs 3(b)(iv) and 5(b)(iv)), the Provider shall appoint, within five (5) calendar days following receipt of the response by the Provider, or the lapse of the time period for the submission thereof, a single Panelist from its list of panelists. The fees for a single-member Panel shall be paid entirely by the Complainant. (c) If either the Complainant or the Respondent elects to have the dispute decided by a three-member Panel, the Provider shall appoint three Panelists in accordance with the procedures identified in Paragraph 6(e). The fees for a three-member Panel shall be paid in their entirety by the Complainant, except where the election for a three-member Panel was made by the Respondent, in which case the applicable fees shall be shared equally between the Parties. (d) Unless it has already elected a three-member Panel, the Complainant shall submit to the Provider, within five (5) calendar days of communication of a response in which the Respondent elects a three-member Panel, the names and contact details of three candidates to serve as one of the Panelists. These candidates may be drawn from any ICANN-approved Provider’s list of panelists. (e) In the event that either the Complainant or the Respondent elects a three-member Panel, the Provider shall endeavor to appoint one Panelist from the list of candidates provided by each of the Complainant and the Respondent. In the event the Provider is unable within five (5) calendar days to secure the appointment of a Panelist on its customary terms from either Party’s list of candidates, the Provider shall make that appointment from its list of panelists. The third Panelist shall be appointed by the Provider from a list of five candidates submitted by the Provider to the Parties, the Provider’s selection from among the five being made in a

Appendix 5: Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”)

manner that reasonably balances the preferences of both Parties, as they may specify to the Provider within five (5) calendar days of the Provider’s submission of the five-candidate list to the Parties. (f) Once the entire Panel is appointed, the Provider shall notify the Parties of the Panelists appointed and the date by which, absent exceptional circumstances, the Panel shall forward its decision on the complaint to the Provider. 7. Impartiality and Independence A Panelist shall be impartial and independent and shall have, before accepting appointment, disclosed to the Provider any circumstances giving rise to justifiable doubt as to the Panelist’s impartiality or independence. If, at any stage during the administrative proceeding, new circumstances arise that could give rise to justifiable doubt as to the impartiality or independence of the Panelist, that Panelist shall promptly disclose such circumstances to the Provider. In such event, the Provider shall have the discretion to appoint a substitute Panelist. 8. Communication Between Parties and the Panel No Party or anyone acting on its behalf may have any unilateral communication with the Panel. All communications between a Party and the Panel or the Provider shall be made to a case administrator appointed by the Provider in the manner prescribed in the Provider’s Supplemental Rules. 9. Transmission of the File to the Panel The Provider shall forward the file to the Panel as soon as the Panelist is appointed in the case of a Panel consisting of a single member, or as soon as the last Panelist is appointed in the case of a three-member Panel. 10. General Powers of the Panel (a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules. (b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. (c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel. (d) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence. (e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules. 11. Language of Proceedings (a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

249

250

Australian Domain Name Law

(b) The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding. 12. Further Statements In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties. 13. In-Person Hearings There shall be no in-person hearings (including hearings by teleconference, videoconference, and web conference), unless the Panel determines, in its sole discretion and as an exceptional matter, that such a hearing is necessary for deciding the complaint. 14. Default (a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint. (b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. 15. Panel Decisions (a) A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. (b) In the absence of exceptional circumstances, the Panel shall forward its decision on the complaint to the Provider within fourteen (14) days of its appointment pursuant to Paragraph 6. (c) In the case of a three-member Panel, the Panel’s decision shall be made by a majority. (d) The Panel’s decision shall be in writing, provide the reasons on which it is based, indicate the date on which it was rendered and identify the name(s) of the Panelist(s). (e) Panel decisions and dissenting opinions shall normally comply with the guidelines as to length set forth in the Provider’s Supplemental Rules. Any dissenting opinion shall accompany the majority decision. If the Panel concludes that the dispute is not within the scope of Paragraph 4(a) of the Policy, it shall so state. If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Appendix 5: Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”)

16. Communication of Decision to Parties (a) Within three (3) business days after receiving the decision from the Panel, the Provider shall communicate the full text of the decision to each Party, the concerned Registrar(s), and ICANN. The concerned Registrar(s) shall within three (3) business days of receiving the decision from the Provider communicate to each Party, the Provider, and ICANN the date for the implementation of the decision in accordance with the Policy. (b) Except if the Panel determines otherwise (see Paragraph 4(j) of the Policy), the Provider shall publish the full decision and the date of its implementation on a publicly accessible web site. In any event, the portion of any decision determining a complaint to have been brought in bad faith (see Paragraph 15(e) of these Rules) shall be published. 17. Settlement or Other Grounds for Termination (a) If, before the Panel’s decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding. A settlement shall follow steps 17(a)(i) – 17(a)(vii): (i) The Parties provide written notice of a request to suspend the proceedings because the parties are discussing settlement to the Provider. (ii) The Provider acknowledges receipt of the request for suspension and informs the Registrar of the suspension request and the expected duration of the suspension. (iii) The Parties reach a settlement and provide a standard settlement form to the Provider further to the Provider’s supplemental rules and settlement form. The standard settlement form is not intended to be an agreement itself, but only to summarize the essential terms of the Parties’ separate settlement agreement. The Provider shall not disclose the completed standard settlement form to any third party. (iv) The Provider shall confirm to the Registrar, copying the Parties, the outcome of the settlement as it relates to actions that need to be taken by the Registrar. (v) Upon receiving notice from the Provider further to 17(a)(iv), the Registrar shall remove the Lock within two (2) business days. (vi) The Complainant shall confirm to the Provider that the settlement as it relates to the domain name(s) has been implemented further to the Provider’s supplemental rules. (vii) The Provider will dismiss the proceedings without prejudice unless otherwise stipulated in the settlement. (b) If, before the Panel’s decision is made, it becomes unnecessary or impossible to continue the administrative proceeding for any reason, the Panel shall terminate the administrative proceeding, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel.

251

252

Australian Domain Name Law

18. Effect of Court Proceedings (a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision. (b) In the event that a Party initiates any legal proceedings during the Pendency of an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, it shall promptly notify the Panel and the Provider. See Paragraph 8 above. 19. Fees (a) The Complainant shall pay to the Provider an initial fixed fee, in accordance with the Provider’s Supplemental Rules, within the time and in the amount required. A Respondent electing under Paragraph 5(b)(iv) to have the dispute decided by a three-member Panel, rather than the single-member Panel elected by the Complainant, shall pay the Provider one-half the fixed fee for a three-member Panel. See Paragraph 5(c). In all other cases, the Complainant shall bear all of the Provider’s fees, except as prescribed under Paragraph 19(d). Upon appointment of the Panel, the Provider shall refund the appropriate portion, if any, of the initial fee to the Complainant, as specified in the Provider’s Supplemental Rules. (b) No action shall be taken by the Provider on a complaint until it has received from Complainant the initial fee in accordance with Paragraph 19(a). (c) If the Provider has not received the fee within ten (10) calendar days of receiving the complaint, the complaint shall be deemed withdrawn and the administrative proceeding terminated. (d) In exceptional circumstances, for example in the event an in-person hearing is held, the Provider shall request the Parties for the payment of additional fees, which shall be established in agreement with the Parties and the Panel. 20. Exclusion of Liability Except in the case of deliberate wrongdoing, neither the Provider nor a Panelist shall be liable to a Party for any act or omission in connection with any administrative proceeding under these Rules. 21. Amendments The version of these Rules in effect at the time of the submission of the complaint to the Provider shall apply to the administrative proceeding commenced thereby. These Rules may not be amended without the express written approval of ICANN.

Index A .auDispute Resolution Policy (auDRP) 2LDs, and, ...................................... [2.30] aim, ..................................... [1.10], [2.10] alternative dispute resolution, as, ................................ [2.30], [2.120] application, ..................................... [2.30] approved dispute resolution service providers, ............................. [2.40] auDA auDRP Overview 1.0, ........... [1.50] background, .................................... [2.20] commencement, ....... [1.10], [1.40], [2.10] definition, ....................................... [2.30] Dispute Resolution Working Group, role of, ........................................ [2.20] footnotes, purpose of, ..................... [4.10] implementation, .............................. [1.40] mandatory administrative proceeding, as — see Mandatory administrative proceedings modification, .................................. [2.60] overview, .... [1.10], [1.40], [2.10], [App 1] purpose, .............................. [2.10], [2.60] Rules — see auDRP Rules UDRP, differences between, ........... [1.10], [2.10], [2.80], [4.10], [6.10] .auDomain Administration Ltd (auDA) 2LDs, and, ...................................... [2.30] appeals of decisions Registrant Review Panel, ........... [1.40] Registrar Review Panel, ............. [1.40] authority, ........................................ [1.40] ccTLDs, administration of, ............ [1.10], [1.20] complaint handling framework, ...... [1.40] dispute resolution — see also .auDispute Resolution Policy (auDRP) auDRP Overview 1.0, ................ [1.50] service providers approved by, ............................................. [2.40] Dispute Resolution Working Group, ............................................. [2.20] establishment, ................................. [1.40] functions, ............................ [1.40], [2.30] object, ............................................. [1.40] overview, ............................. [1.10], [1.40] auDA auDRP Overview 1.0 overview, ........................................ [1.50] publication, ..................................... [1.50] auDRP Rules background, .................................... [2.20]

overview, .......................... [3.10], [App 2] purpose, .......................................... [2.10] relevant provisions, ......................... [3.20]

B

Bad faith registration or subsequent use awareness actual knowledge, .................... [6.200] complainant’s name or mark, of, .............................. [6.190], [6.200] constructive notice, .... [6.190], [6.200] distinctive marks or names, ..... [6.210] knew or should have known, ........................................... [6.190] overall conduct relevant, ......... [6.200] reputation, of, ......................... [6.200] well-known marks and names, ........................................... [6.220] wilful blindness, ...................... [6.190] cancellation of domain name, ......... [6.10] commercial benefit requirement, ........................................... [6.150] conduct, types of — see types of conduct below disclaimers, role of, ....................... [6.230] distinctive marks and names, ........ [6.210] inference of, ..................... [6.170], [6.220] overview, ............................. [2.90], [6.10] passive holding, ............................ [6.160] inference of bad faith, .............. [6.170] passive use, ................................... [6.170] inference of bad faith, .............. [6.170] privacy registration service, ........... [6.270] proxy registration service, ............. [6.270] register and use, .............................. [6.10] register or subsequent use, .............. [6.10] registration of domain name, ......... [2.90], [6.10] domain name allocation criteria, ............................................. [6.50] prior rights, ............................... [6.60] timing, ....................................... [6.30] first registrant, ..................... [6.30] trade mark or name registration, before, ............................................. [6.40] transferees, ........................... [6.30] unregistered rights acquired, before, ........................................ [6.40] relevant factors, .............................. [6.10] renewal of domain name, .............. [6.250] rights or legitimate interests, ........... [6.20] roborts.txt, ................................... [6.280] settlement discussions, statements, ........................................... [6.240]

254

Australian Domain Name Law Bad faith registration or subsequent use — cont third party material, ...................... [6.260] trade mark, tarnishment of, .......... [6.290] transfer of domain name, ................ [6.10] types of conduct, ............................. [6.90] attraction of internet users, ...... [6.140] confusingly similar product labels, ........................................... [6.150] confusion, creating likelihood of, ........................................... [6.140] cybersquatting, ........................ [6.120] disruption of another person, ........................................... [6.130] legitimate business relationship, existence of, .................. [6.130] preventing owner from use, ..... [6.120] evidence of intention, ......... [6.120] pattern of conduct, consideration of, ......................... [6.120], [6.180] subsequent registrations, .... [6.120] rent, offer to, ........................... [6.100] sell, offer to, ............................ [6.100] solicited offers, ........................ [6.100] transfer, offer to, ..................... [6.100] unsolicited offers, .................... [6.100] use of domain name, subsequent, ....................... [2.90], [6.10], [6.80] automatically-generated material, ........................................... [6.260] genuine products of complainant, dealing with, .................................. [6.170] identical domain name, ........... [6.170] passive holding, .......... [6.160], [6.170] passive use, .............................. [6.170] redirection to complainant’s competitor, ......................... [6.170] use, meaning of, ........................ [6.70] well-known marks and names, ...... [6.220] Breach bad faith registration or subsequent use — see Bad faith registration or subsequent use establishment, ................................. [2.80] identical or confusingly similar domain name — see Identical or confusingly similar legitimate interests, evidence of — see Rights or legitimate interests remedies, ............... [2.70], [2.130], [4.10], [5.10], [6.10] rights, evidence of — see Rights or legitimate interests Burden of proof identical or confusingly similar domain names, ................................ [4.260] rights or legitimate interests in domain names, .................................. [5.20] insufficient evidence, ....................... [5.60] negative, proving, ...................... [5.30] prima facie case making, .................... [5.40], [5.50] rebutting, ............................. [5.60]

Business names registration of, .............................. [5.260] rights in, ....................................... [4.120]

C

Complaints approved dispute resolution provider notification of complaint, .......... [3.50] response to, ............................... [3.60] role, ........................................... [2.40] submission to, ........................... [3.30] consolidated, ................................. [2.110] delay in bringing, ............................ [3.40] initiating, ........................... [2.110], [3.30] multiple complainants, .... [2.110], [2.120] multiple domain names, in relation to, .................................. [3.30], [3.40] notification, .................................... [3.50] refiled, ............................................ [3.40] resolution — see Dispute resolution respondent, requirements of, ........... [3.60] Confusingly similar domain names — see Identical or confusingly similar Corporate names rights in, ....................................... [4.120] country code Top-Level Domains (ccTLDs) examples, ............................ [1.10], [1.20] overview, ........................................ [1.10] Cybersquatters bad faith, evidence of, ....... [2.90], [6.120] disputes, types, ................................ [1.20]

D

Dispute resolution approved provider, role, .................. [2.40] Australian framework — see .auDispute Resolution Policy (auDRP) — see .auDomain Administration Ltd (auDA) complainants, multiple, ................ [2.110], [2.120] court proceedings, ......................... [2.120] cybersquatters, ....... [1.20], [2.90], [6.120] international framework — see Uniform Domain Name Dispute Resolution Policy (UDRP) multiple disputes, ............. [2.110], [2.120] parasites, ......................................... [1.20] proceedings — see Mandatory administrative proceedings squatters, ........................................ [1.20] “sucks”-type, ................................ [4.230] twins, .............................................. [1.20] typosquatting, ................... [1.20], [4.240]

255

Index Domain name .au domain names, structure of, ...... [2.30] 2LDs, .............................................. [2.30] application for, ............................... [1.20] bad faith, used in — see Bad faith registration or subsequent use cancellation, .......... [2.70], [2.120], [4.10], [5.10], [6.10] ccTLDs, ............................... [1.10], [1.20] definition, ............................ [1.10], [1.20] description, ..................................... [1.20] dictionary words, .......................... [5.150] gTLDs, ............................................ [1.10] identical or confusingly similar — see Identical or confusingly similar licences, rights attaching to, ............ [2.30] overview, ........................................ [1.20] proprietary rights in, ....................... [2.30] evidence of, ............................. [2.100] multiple, ..................... [2.110], [2.120] registration — see Registration regulation — see .auDispute Resolution Policy (auDRP) — see .auDomain Administration Ltd (auDA) — see Uniform Domain Name Dispute Resolution Policy (UDRP) renewal bad faith registration, .............. [6.250] failure to, ................................. [5.320] TLD, ............................................. [4.170] transfer, ..... [2.70], [2.120], [4.10], [5.10], [6.10] Domain parking bona fide use, .................. [5.200], [5.210] relevant considerations, ........... [5.210] definition, ..................................... [5.210] domain monetisation, legitimate, ........................................... [5.210] rights or legitimate interests, overview, .............................. [5.200], [5.210] relevant considerations, ........... [5.210]

G

exact matches, .............................. [4.180] generic terms, .................. [4.190], [4.200] geographic terms or identifiers, .... [4.190], [4.220] identical matches, ......................... [4.180] identity or confusing similarity meaning, .................................. [4.170] test for, overview, .................... [4.160] misspellings, .................................. [4.240] names, ............................................ [4.10] overview, ........................................ [4.10] part of a name or mark, ............... [4.210], [4.240] phone words, ................................ [4.140] prefix, relevance of, ...................... [4.170] same meaning, words with, ........... [4.210] service marks, with respect to, ........ [4.20] rights in, proof of, ..................... [4.60] smart numbers, ............................. [4.140] “sucks”-type domain names, ........ [4.230] suffix, relevance of, ....................... [4.170] threshold of proof required, .......... [4.260] timing of rights, ............................ [4.150] TLD, relevance of, ........................ [4.170] trade marks, with respect to — see Trade marks – identical or confusingly similar transfer of domain name, ................ [4.10] typosquatting, ............................... [4.240] Internet Corporation for Assigned Names and Numbers (ICANN) dispute resolution service providers approved by, ........................ [2.40] establishment, ................................. [1.30] mission, .......................................... [1.30] overview, ........................................ [1.30]

L

Legitimate interests — see Rights or legitimate interests

M generic Top-Level Domains (gTLDs) examples, ........................................ [1.10] overview, ........................................ [1.10]

I

Identical or confusingly similar acronym, rights in, .......................... [4.90] burden of proof, ........................... [4.260] cancellation of domain name, ......... [4.10] complainant’s rights establishment, ............................ [4.60] timing, ..................................... [4.150] deceptive similarity, test for, .......... [4.180] descriptive terms, ............. [4.190], [4.200] evidence required, .............. [4.60], [4.260]

Mandatory administrative proceedings appeal process, .............................. [2.120] applicable disputes, ......................... [2.80] binding decision, ........................... [2.120] commencement date, ...................... [3.50] court proceedings availability, .............................. [2.120] relationship between, ............... [2.120] initiating, ...................................... [2.110] language of, .................................. [3.120] Panel — see Panel precedents, .................................... [3.100] procedural rules — see auDRP Rules — see Supplemental rules — see UDRP Rules registrars, role, .............................. [2.120]

256

Australian Domain Name Law Mandatory administrative proceedings — cont standard of proof, ......................... [3.130] suspension, ................................... [2.120]

N

Names business names, rights in, .............. [4.120] corporate names, rights in, ............ [4.120] identical or confusingly similar, overview, ............................................. [4.10] personal names, rights in, .............. [4.110] phone words, ................................ [4.140] rights in, proof, ............................... [4.60] smart numbers, ............................. [4.140]

P

Panel appointment, .................................. [3.80] decisions, ........................................ [3.90] approach, ................................ [3.100] national laws, relevance of, ....... [3.90] duties, ............................................. [3.80] fees, ................................................ [3.80] impartiality, .................................... [3.80] independence, ................................. [3.80] independent research, ..................... [3.80] obligations, ..................................... [3.80] powers, ................................ [3.80], [3.90] reverse domain name hijacking, .... [3.110] three member, ................................. [3.90] unsolicited supplemental filing, acceptance of, ........................................ [3.90] Parasites disputes, types, ................................ [1.20] Pay-per-click links rights or legitimate interests in, .... [5.200], [5.210] Personal names rights in, ........................................ [4.110] Proceedings — see Mandatory administrative proceedings

R

Registration bad faith, in — see Bad faith registration or subsequent use cancellation, .......... [2.70], [2.120], [4.10], [5.10], [6.10] changes to, ...................................... [2.70] remedies for breach, ......... [2.70], [2.130], [4.10], [5.10], [6.10]

system, ............................................ [1.20] transfer, ..... [2.70], [2.120], [4.10], [5.10], [6.10] Respondent consent to transfer, ......................... [3.70] multiple, .......................... [2.110], [2.120] proper, ............................................ [3.70] response to complaint, .................... [3.60] failure with respect to, ............... [3.60] formal requirements, ................. [3.60] Rights or legitimate interests abbreviations, ............................... [5.130] acquisition of business, ................. [5.270] acronyms, ..................................... [5.130] awareness, .................................... [5.310] bad faith, relationship with, ............ [6.20] bona fide use, ...................... [5.70], [5.80] before any notice, meaning, ....... [5.90] confusion, potential for, ............ [5.80] corresponding to the domain name, meaning, ............................ [5.100] demonstrable preparations to use, ............................................. [5.80] evidence required, ...................... [5.80] mere assertions, ......................... [5.80] relevant facts, ............................ [5.70] renting, .......................... [5.70], [5.80] selling, ............................ [5.70], [5.80] supply of goods and services, ..... [5.80] transferring, ................... [5.70], [5.80] burden of proof — see Burden of proof business name, registration of, ...... [5.260] cancellation of domain name, ......... [5.10] cessation, ...................................... [5.170] cessation of business, .................... [5.270] commonly known by domain name, ............................................ [5.110] abbreviations, .......................... [5.130] acronyms, ................................ [5.130] degree of similarity, ................. [5.120] evidence required, .................... [5.110] identical names, ....................... [5.120] company name, registration of, ..... [5.260] conduct of prior registrant, ........... [5.330] criticism sites, .................. [5.140], [5.180] delays in proceedings, ................... [5.300] dictionary words, domain name comprised of, ...................................... [5.150] distinctive names or marks, ............. [5.40] distributor, of, ............................... [5.160] domain name registration, satisfaction of requirements, ..................... [5.280] influence of, ............................. [5.290] domain parking — see Domain parking evidence of, ....................... [2.100], [5.10] insufficient, ................................ [5.60] fan sites, ........................................ [5.190] identical names, ............................ [5.120] laches in proceedings, ................... [5.300] lack of authorisation with respect to, ........................................... [5.170] landing pages, ............................... [5.200]

257

Index Rights or legitimate interests — cont legitimate non-commercial or fair use, ........................................... [5.140] genuine criticism site, ............. [5.140], [5.180] offer to transfer domain name, ........................................... [5.140] overview, ........................... [2.100], [5.10] parking pages — see Domain parking pay-per-click links, .......... [5.200], [5.210] prior registrant, conduct of, .......... [5.330] prior rights, ..................................... [5.50] renew domain name, failure to, .... [5.320] reseller, of, .................................... [5.160] standard of proof, ........................... [5.10] trade marks, with respect to — see Trade marks – rights or legitimate interests transfer of domain name, ................ [5.10] use of words comprising the domain name, ............................................. [5.10]

S

Second level domains (2LDs) application of auDRP, ..................... [2.30] categories, ....................................... [2.30] closed, ............................................. [2.30] allocation rules, ......................... [2.30] eligibility criteria, ...................... [2.30] open, ............................................... [2.30] allocation rules, ......................... [2.30] eligibility criteria, ...................... [2.30] policy rules, ............................ [App 3] Similar domain names — see Identical or confusingly similar Squatters disputes, types, ................................ [1.20] Subsequent use bad faith, in — see Bad faith registration or subsequent use Supplemental rules auDRP proceedings, governing of, ............................................. [3.10] definition, ....................................... [3.20] overview, ........................................ [2.40]

common law trade mark — see unregistered below design elements, relevance of, ....... [4.250] disclaimed elements, relevance of, ........................................... [4.250] identical or confusingly similar domain name, ................................... [4.20] licensees, rights, ............................ [4.130] meaning, ......................................... [4.20] outside Australia, ............... [4.40], [4.100] registered applications for registration, ...... [4.50] outside Australia, ....................... [4.40] ownership of, ............................ [4.30] related entities, rights of, ............... [4.130] rights in, proof of, ............... [4.60], [4.90] trade mark principles, use of, ........ [4.190] unregistered outside Australia, ..................... [4.100] rights in, proof of, .......... [4.70], [4.90] distinctiveness, ..................... [4.80] reputation, ........................... [4.80] secondary meaning, acquiring, ............................. [4.70], [4.80] well-known marks, .............. [4.80] Trade marks – rights and legitimate interests applications, ................................. [5.250] descriptive fair use, ....................... [5.240] descriptive names and marks, ....... [5.230] presumptions, .......................... [5.230] generic words, ............................... [5.230] overview, ...................................... [5.220] trade marked goods or services cessation of, ............................. [5.170] criteria to fulfil, ....................... [5.160] distributor, rights of, ............... [5.160] lack of authorisation, .............. [5.170] no contractual relationship, .... [5.160], [5.170] reseller, rights of, ..................... [5.160] unwritten agreements, where, ........................................... [5.160] Twins disputes, types, ................................ [1.20] Typosquatting disputes, types, .................. [1.20], [4.240]

U T

Top-level domain (TLD) identical or confusingly similar, meaning of, ...................................... [4.170] Trade marks – identical or confusingly similar acronym, rights in, .......................... [4.90] Australian business presence, requirement of, ........................................ [4.90]

UDRP Rules implementation, .............................. [1.30] overview, .......................... [2.10], [App 5] purpose, .......................................... [2.10] relevant provisions, ......................... [3.20] Uniform Domain Name Dispute Resolution Policy (UDRP) aim, ..................................... [1.10], [2.10]

258

Australian Domain Name Law Uniform Domain Name Dispute Resolution Policy (UDRP) — cont alternative dispute resolution system, as, ........................................... [2.120] approved dispute resolution service providers, ............................. [2.40] auDRP, differences between, .......... [1.10], [2.10], [2.80], [4.10], [6.10] criticisms, ........................................ [1.10] gTLDs, application to, .................... [1.10] ICANN and, ........................ [1.30], [2.40] implementation, .............................. [1.30]

mandatory administrative proceeding — see Mandatory administrative proceedings modification, .................................. [2.60] overview, .... [1.10], [1.30], [2.10], [App 4] reform suggestions, ......................... [1.10] Rules — see UDRP Rules Use bad faith, in — see Bad faith registration or subsequent use