Sanmay Ved made global news headlines in September 2015 after the software developer stumbled across the opportunity to purchase the domain Google.com. Ved purchased the domain for a mere $US12, becoming the proud owner of Google.com before he notified Google of what had occurred. Ved’s experience highlights how even one of the most highly valued corporations in the world can lose track of their domain name registration and the importance of keeping track of your own. Below, we’ll explore what happens if someone purchases your domain name after the registration expires, your options and interesting examples of where this has previously occurred.
Purchasing a Domain Name After Expiry and Cybersquatting
We can draw several comparisons between someone buying your domain name after it’s expired and cybersquatting. Cybersquatting involves a company or individual mass purchasing domain names and hoping to profit from people wanting to use those business names for a legitimate business purpose. If you let your domain registration lapse, a cybersquatter may exploit this opportunity and purchase your domain name, making a profit if you are forced to buy the domain name back.
What are my Options?
If you accidentally allowed the registration of your domain name to lapse and a person has pounced on the opportunity, you have some options.
1. Submit a Complaint to auDRP
auDRP (au Dispute Resolution Policy) is a way for parties to a dispute about a domain name to achieve a resolution, without recourse to litigation. auDRP is an adoption of the Uniform Dispute Resolution Policy (UDRP) administered by the Internet Corporation for Assigned Names and Numbers (ICANN), a body responsible for administering domain names worldwide.
Any person can submit a complaint under the auDRP to resolve their dispute. A person needs to submit a complaint to a relevant auDRP provider. A panel then hears the disputes, and decisions are binding on the parties.
2. Passing Off
One alternative is to make a claim that a person who buys your domain name is ‘passing off’ your brand. But what does passing off mean?
Passing off protects the business’ goodwill. There are three elements that you must demonstrate when making a claim for passing off (ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302; 106 ALR 465; 23 IPR 193;  AIPC 90-892 (FC), Gummow J at 355–356 (FCR); TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc):
- The business’ goodwill is affected;
- The defendant has misrepresented a businesses’ goods or services; and
- There is damage or threat of damage to the business’ goodwill.
Examples of Successful Passing Off Actions
Marks & Spencer has made passing off claims in the past. In Marks & Spencer plc v One in a Million, cybersquatters tried to sell Marks & Spencer domain names, such as marksandspencer.com for thousands. The judge considered the registration of marksandspencer.com domain names amounted to passing off, as consumers were directed to a page with One in a Million branding, rather than a Marks & Spencer website.
Qantas was also successful in an action against a cybersquatter in Qantas Airways Ltd v Domain Name Co Ltd, where the cybersquatter attempted to sell the domain name ‘qantas.co.nz’ to Qantas for several thousand dollars. Even though the cybersquatter was not using the name, the court found that the cybersquatter prevented Qantas lawfully exploiting its goodwill on the Internet.
3. Purchase the Domain Name
Litigation is expensive and time-consuming, and sometimes, your auDRP application may be unsuccessful. You then may have to swallow the bitter pill and purchase back the domain name from the person who has bought it.
A domain name is your identity online. If you accidentally let your registration lapse, you may have to purchase the domain name from the poacher, or pursue another avenue such as an auDRP complaint or make a claim that a cybersquatter is ‘passing off’ your brand.
Questions about cybersquatting or registering your domain name online? Let our IT lawyers know on 1300 544 755.
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