If you go to buy a domain name matching your business or trade mark — and find someone else got there first — you have a problem. The other party might be a cyber squatter, trying to sell the domain back to you at an exorbitant price. Or they might be a competitor wanting to capitalise on your reputation. Either way, you’re now in a domain name dispute.
You can resolve the issue in two ways:
- start an action in court; or
- file a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) or auDRP.
All ‘.com’ domain name holders are bound by the UDRP, a set of rules that sets out how disputes over domain name ownership should be resolved. The auDRP is a similar policy for ‘.au’ domain names.
The UDRP and the auDRP complaint process is done entirely online. They are both simple and cost effective processes that can be finalised in under three months. Conversely, going to court is complex and expensive. However, a court can grant other remedies beyond getting the infringing domain name transferred or cancelled. For example, you may win monetary damages, or be awarded an injunction — an order preventing the person from infringing your rights in the future.
There is no one size fits all solution for resolving a domain name dispute. This article outlines key issues to consider before you choose the best approach for you.
Identify Who Registered the Infringing Domain Name
As a first step, find out who has registered the domain name. A simple online WHOIS search will tell you who the domain holder is and how to contact them.
Are they located outside of Australia? If so, the UDRP, being an online process, is most suitable. Court proceedings against a foreign entity are costly and uncertain. Inside Australia, both court and the auDRP are options for resolving a domain name dispute.
Are they an established corporate entity that has the means to satisfy a judgment for damages or legal costs? If not, going to court may not be the best option. Professional cybersquatters are often just ‘shells’ without any attachable assets. It makes little sense to invest a significant amount of time and money claiming damages that you’re unlikely to recover in court.
Are you unable to establish the true identity of the infringing party? For example, they may have used a privacy service or a fake identity. This will make it harder to take the case to court, as you would need to establish the defendant’s identity and location. In this case, UDRP proceedings will then be more appropriate.
Determine What Rights the Domain Name Holders Has
In certain instances, the domain name holder may have rights or legitimate interests in the domain name. For example, where it is owned by a business with the same name as the disputed domain name. In this case, the UDRP will generally not resolve the dispute. Instead, the dispute may require a comprehensive hearing and analysis of evidence. Court proceedings are more appropriate in these circumstances. In particular, the domain name holder may be nonetheless infringing your trade marks, which only a court can resolve.
Is the infringing domain name likely to cause confusion amongst your customers, cost you significant profits or otherwise damage your brand? An example is a domain name that is deceptively similar to your trade mark. If this diverts custom away from your business or is used to advance criminal activity, applying to the court to urgently stop the activity may be a sound investment.
Decide Your Ideal Outcome
Using the UDRP makes sense if you just want to obtain transfer or cancellation of the infringing domain name. This is especially if the current holder’s use of the domain name is not causing your business immediate and significant harm.
However, if you want an outcome that goes beyond a simple transfer or cancellation, you need to go to court to obtain this. For example, where you believe the other party will continue to buy similar domain names that infringe your rights. In this case, only a court can grant an injunction to stop the behaviour from being repeated in the future.
A court can also award financial damages. This is most suitable if you have suffered financial losses as a result of the way in which the infringing domain name was used. In this case you may wish to pursue a damages claim in Court.
Both the UDRP and going to court are viable options if another person registers a domain name that damages or unfairly takes advantage of your business’ valuable brand or registered trade mark. However, each offer different advantages for resolving a domain name dispute. The UDRP offers a low-cost process, while a court judgment offers more tailored outcomes, such as an injunction or award of damages.
If someone has registered a domain that infringes on your rights, LegalVision’s IT lawyers can help. Call us on 1300 544 755 or fill out the form on this page.
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