With only so many domain names to go around, it can be challenging to find a domain name that is available. It is common to find a domain name already in use that lines up with your business or brand name. In most of these situations do not amount to cybersquatting and will generally not be reasonable grounds for lodging a complaint or taking action in court.
If someone has registered a domain name that your business desires it is advised you conduct a domain lookup at the registrar to find the registered owner. Contact them and try to negotiate for the domain name by offering a price. If you are unable to successfully negotiate you will need to get creative and think of a new domain name that is close enough to your ideal domain.
However, if you feel that the domain name is being reserved by the other party in bad faith then there are other avenues to resolve the dispute. These will be explained and explored below.
Cybersquatting
Cybersquatting is when an unauthorised party with no legitimate interest in a domain registers, in bad faith, a domain name identical or similar to another business’ trading name for a commercial gain. Another common scenario where a dispute may arise is when a competitor is attempting to capitalise on another business’s reputation.
Generally, domain name disputes can be resolved in three ways:
- Sending a letter of demand to the party infringing your domain name to enter negotiations to settle a transfer or cancellation
- Lodging a complaint under the relevant domain name policy (the Uniform Domain Name Dispute Resolution Policy (UDRP) or auDRP)
- Start an action in court
Identifying
The initial step is to identify the party holding the registered infringing domain name. Given you are the party in the dispute wishing to have a domain name that someone else already holds rights in. This can be accomplished through a simple online search via WHOIS.
It is important to identify who has registered the infringed domain name because it will influence how you may resolve the dispute. Particularly, regarding if they are located in or outside Australia. Or whether the party holding rights in the domain name is operating in bad faith.
Weighing Your Options
Due to the increasing commercial growth of the internet, it may be likely that your preferred domain name has already been taken. Thus, it is helpful when starting your business and choosing your business name and trademark that you also consider domain names and their availability.
If your preferred domain name is not being held in bad faith but rather by an innocent party with a similar business name, searching for another domain name will usually be more worthwhile than initiating a complex dispute in court.
However, if you sense that your preferred domain name is being withheld by a cybersquatter or competitor in bad faith then there are established avenues that will assist in resolving such disputes.
UDRP (International Domain Names)
The UDRP is an established and well-recognised international dispute resolution procedure. Providing an avenue for trademark holders to seek arbitration over the control of a domain name. Primarily dealing with top tier domain names such as .com and .net.
Where a dispute arises, submitting complaints under the UDRP will be of assistance if you are a company owner wishing to have another party’s domain name cancelled or transferred to you. The complaint process is carried out entirely online.
Where a dispute arises under the UDRP, you may either be the complainant or the respondent. The party initiating the domain name dispute resolution is known as the complainant with the respondent being the registrant of a domain name which is subject to a complaint.
To raise a successful complaint under the UDRP, the complainant must establish the following in written complaint:
- The domain name is identical or similar to a trademark in which they have rights in (regardless of being registered or unregistered); and
- The respondent has not rights or legitimate interest in respect of the domain name; and
- The domain name is being registered in bad faith (cybersquatting)
The respondent is entitled to submit a written response.
WIPO usually acting as the panel will determine the case based on the written submissions. If the complaint is successful ICANN will transfer the license for the relevant domain to the complainant. Generally, the process will only take up to 50 days from when the action is commenced by the complainant.
AUDRP (Australian Domain Names)
Where the domain name is .au, the complaint is administered by .au Dispute Resolution Policy.
There are very few but important differences between the auDRP and UDROP system. However, decisions under the auDRP are considered unique and need to be dealt with separately.
A complainant will need to establish the same as required by UDRP but the scope is wider and less strict. Firstly the domain name must not need to be identical/similar to your trademark as it is sufficient if it is merely your business name that is being infringed.
Secondly, it does not have to strictly be proven that the domain name was registered in bad faith. Alternatively, it can be shown that the domain name was subsequently used in bad faith by the respondent.
Taking It To Court
Another avenue to resolve a dispute concerning a domain name is taking action through the courts. Even though courts have jurisdiction to hear disputes regarding domain names, commencing legal proceedings is rarely the favorable avenue.
Going to court is generally complex and expensive. Also extremely difficult when the respondent is an overseas entity. Domain name proceedings carried out under UDRP and auDRP are considered the cheaper and speedier alternative.
A potential benefit is that the court is able to grant other remedies beyond getting the infringing domain name transferred or cancelled; such as monetary damages or an injunction. In most cases, the complaint will merely want legal rights in the domain name. However, where you believe the other party, potentially a competitor, will continue to buy similar domain names that infringe on your right then an injunction ordered by the court will be the ideal outcome. Or where you have suffered financial losses due to the infringing domain name, you may want to be compensated with monetary damages. Thus, the court can produce more tailored outcomes despite its higher-cost process.
While the circumstances might be limited there are cases where commencing legal proceedings will be the only viable option. For example, where the current domain name holder has legitimate interests in the domain name then the UDPR will generally not resolve the dispute due to the requirements that must be established by a complainant.
If you would like to speak with our intellectual property lawyers, just contact us via 1300 337 997 or by filling out the contact form.
Phil is a director at OpenLegal. He has over 16 years experience working in private practice and in-house counsel in Sydney and London, giving him expertise in employment law, IP, finance, leases, dispute resolution, insurance and contracts.
Raymond is a legal intern at OpenLegal, working with our legal content team. He is currently a penultimate student at the University of Technology Sydney, studying a Juris Doctor degree with an undergraduate Bachelor of Global Studies. He is particularly interested in Intellectual Property law and the increasing internationalisation of that area of business.
