02/05/2011

Apart from court proceedings for misleading or deceptive conduct or "passing off" the owner of a domain name may also be able to use an administrative process to complain to the au Domain Administration Limited ("auDA").

If the Registrar of the offending domain name is subject to the auDA policies then the first registered party may submit a complaint about the offending name.

The au Dispute Resolution Policy ("auDRP") generally provides that a complaint may be made where:

1. the disputed domain name is identical to or confusingly similar to a name, trademark or service mark in which the complainant has rights; and
2. the respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the disputed domain name has been registered or subsequently used in bad faith.

The complainant bears the onus of proving each element outlined above.

In regard to point 1, the “name in which the complainant has rights” the auDRP states that it includes the complainant’s company, business, trading name or personal name.

In regard to point 2, the term "no rights or legitimate interest" may include no bona fide use or connection with goods or services being offered.

In regard to point 3, "bad faith" may include registering the domain name to prevent the owner of a name from registering the domain name or for the primary purpose of disrupting the business of another person or the primary purpose of selling the domain to another person for more than the out of pocket expenses.

The complaint is conducted under the auDRP by way of a written complaint followed by a written response.  A determination is then made by a panel appointed by the service provider.  Each complaint is decided on the individual facts and the names in dispute however previous determinations will provide some guidance in the evidence the complainant needs to prove.

If the panel determines the complaint has been proven then it can order the disputed domain name be cancelled or transferred to the complainant.

If either party is dissatisfied with the outcome of the complaint either party may still pursue formal legal proceedings including claims of misleading or deceptive conduct or passing off.

If you have any questions in regard to this article, please contact TOWNSENDS BUSINESS & CORPORATE LAWYERS on (02) 8296 6222.