Having an online presence is now crucial for any business’ success, whether existing or new. Every website requires the registration of a domain name, whether it is a top-level domain name such as a .com, or a country code top-level domain, such as .com.au. But what happens when someone registers your .com.au domain name before you? There are some options available. However, you must take into account that you may not be fully entitled to a domain you consider rightfully yours.

Rights of a Domain Name

The registration of a domain name grants the registrant an online identity. A domain name is simply a string of characters that assists Internet browsers identify and locate servers on the Internet that point towards the location of your website. A domain name is not a trade mark nor a business name. It only grants the registrant with the sole right to direct visitors to your website. So, if you do not have the proper trade marks in place, it will be difficult to establish that you are the rightful owner of the domain name, even if you have been physically trading under the same name.

But I’ve Registered the Business Name!

Simply registering a company or business name and trading under the same name does not confer rights to using the name. An Australian Business Number (ABN) does not suffice to establish ownership. To establish exclusive ownership of the domain, you must register a trade mark in its respective class(es). For example, LegalVision is registered in Class 45, which is “Information services relating to legal matters”. This classification means LegalVision is protected in this class and services related to the provision of legal services. However, if someone trade marked LegalVision Optometry, this would be a separate class and would not conflict with our rights.

First Come, First Served

The .au Domain Administration (auDA) manages the .au domain registration and administration in Australia. The policy that sets out .au registration states that domains are provided on a first come, first-served basis. The eligibility criteria requires the registrant to either have an exact match for an ABN/ACN/RBN business name or be closely and substantially related to the domain. When determining “closely and substantially related”, this is a rather broad test and open to interpretation. It can cover products or services you offer or even anything that reasonably associates the domain with its use.

Disputing Ownership of .com.au Domains

The auDA has a complaint policy that handles eligibility for .au domains. This policy requires a formal complaint be lodged asking the registrant to explain their connection to the domain within seven days. The auDA then makes a final determination as to eligibility. If a domain is shown not to meet the eligibility requirements after a complaint is lodged, the domain registrar will delete the domain. This process means that the domain will be policy deleted from the .au registry, and be available once again to the first eligible applicant, not the party that lodged the complaint.

If a complaint does not obtain the outcome you want, you can initiate the .au Dispute Resolution Process (auDRP). Regardless of the outcome, the process costs $2,000 to commence and will involve an auDA mediator. The mediator evaluates your application to prove the domain is confusingly similar to your name or trade mark, that the domain was registered in bad faith, and that there are no legitimate rights to the name by the current registrant. If you are successful in establishing ownership, the domain will be transferred to you, rather than be policy deleted as set out above.

Key Takeaways

If someone has registered your .com.au domain, check your trade marks and research your options before contacting the registrant. The most common (and surest) way to secure a domain name that is already registered is to buy it for a reasonable price from the current registrant. If you have any questions about domain name ownership or trade mark registration, let our IT lawyers know on 1300 544 755.

Anthony Lieu

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