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If a person registers your business name or trade mark as their domain name, then the auDRP might be of use to you. The auDRP (au Dispute Resolution Policy) outlines how disputes regarding domain names can be heard and resolved by a panel after parties present their arguments.

Background

ICANN (Internet Corporation for Assigned Names and Numbers) is an organisation responsible for organising the maintenance of domain name databases. Most of its work concerns the Internet’s global Domain Name System. ICANN developed the Uniform Dispute Resolution Policy to manage disputes regarding domain names.

The auDRP is an adaptation of ICANN’s Uniform Dispute Resolution Policy as a way for parties to manage domain name disputes in Australia.

What Situations Does The auDRP Cover?

The auDRP covers disputes between the holders of domain names that end in:

  • .com.au
  • .net.au
  • .id.au
  • .org.au
  • .asn.au.

The auDRP does not cover disputes relating to domain names which end in ‘.edu.au’ or ‘.gov.au’ and also does not include top level domains such as those ending in ‘.com’, ‘.org’ or ‘.net’ for example. It only covers domain names with an attachment to Australia.

How Can I Make a Complaint Using The auDRP?

If you want to make a complaint about a domain name using the auDRP, you should submit your complaint to an approved auDRP provider, either:

  1. The Resolution Institute; or
  2. The World Intellectual Property Organisation.

The Resolution Institute Process

  1. Complete an application and submit it to the Resolution Institute (RI). RI assesses the application to ensure it meets the requirements of the auDRP and RI supplemental rules. Within three days, RI will notify the respondent (the person being complained about) of the complaint.
  2. If RI determines the application does not meet standards outlined in the auDRP or supplemental rules, RI notifies you. You have five days to amend the application so that it meets requirements.
  3. The respondent has 20 calendar days to respond to the complaint. RI appoints a single member panel or if a three-member panel is required, you need to call RI on (02) 9251 3366 to make arrangements.
  4. The panellist receives the materials and he or she will forward their decision to RI within 14 calendar days.
  5. RI releases the decision to both parties within three calendar days of receiving the decision.

The panel hears complaints. If you wish to have your complaint heard by a one member panel, a fee of $2,000 applies and $4,500 if a three-member panel hears the complaint.

What Do You Have to Demonstrate?

AuDRP assesses several factors in considering whether a complaint should be successful. For a successful complaint, the below factors must be satisfied: 

  1. The domain name must be identical or confusingly similar to a name, trade mark or service mark over which you have rights; and
  2. The Respondent has no rights or legitimate interests in respect of the name; and
  3. The domain name was registered or subsequently used by the Respondent in bad faith.

The Case of Jaguar Land Rover Limited v Downshire Motors Service (Pty Ltd) – WIPO Arbitration and Mediation Centre

Jaguar disputed the registration of the domain name jaguarservice.net.au by Downshire Motors (Service) Pty Ltd, an Australian company. Jaguar submitted a complaint to WIPO, per the Uniform Dispute Resolution Policy.

Jaguar’s Arguments

Jaguar argued that it had registered the trade mark JAGUAR in a number of classes, that the brand was well known and that it has an extensive web presence. Jaguar contended that the respondent’s registration of jaguarservice.net.au was not bona fide.

Identical or Confusingly Similar

The respondent’s domain was not identical to the trade mark JAGUAR. However, the addition of the generic term ‘service’ did not sufficiently distinguish it to be confusing.

Rights or Legitimate Interests

Downshire Motors did not use the domain name to run a business and did not submit evidence that it intended to do so in the future so as to indicate that it legitimate interests in the domain.

Registered or Subsequently Used in Bad Faith

Downshire Motors registered the domain name fully aware of Jaguar’s established business in manufacturing and servicing cars. The respondent never developed a website about the jaguarservice.net.au domain name, and the domain name exceeded the business reputation the respondent had promoted for itself as a business servicing Jaguar cars.

The single member panel determined that the respondent should transfer the domain name to Jaguar. The case demonstrates how a complainant must show that a domain name is identical or confusingly similar, that the Respondent has no rights or legitimate interests in the domain name and that they registered the domain name in bad faith. 

What Outcomes Can I Get?

A successful auDRP results in only one of two outcomes:

  1. The domain name is cancelled; or
  2. The domain name is transferred to the complainant.

Key takeaways

The purpose of auDRP is to provide a cheaper, quicker alternative to litigation for disputes between the registrant of a .au domain name and a party with competing rights. A complainant must demonstrate that a domain name is identical or deceptively similar to a trade mark, that the respondent had no rights or legitimate interests in the domain name and that the domain name was registered in bad faith. If the complaint is successful, a domain name can be cancelled or transferred to the complainant. 

Questions about auDRP or lodging a complaint? Let our disputes and litigation lawyers know. 

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