The domain name of your business is one of your most valuable IP assets. It defines your business presence online. Protecting that online space, marketing tool and reputation is important.

The value in domain names has increased significantly with the growth of e-commerce and consumer behaviours. Potential customers research or make transactions online with your business. As a consequence, instances of domain name cybersquatting have also increased. Cybersquatting is when an unauthorised party with no legitimate interest in a domain registers a domain name identical or similar to another business’s trade mark or trading name for commercial gain. Common instances of cybersquatting occur when a person registers (in bad faith), (a) An identical domain name but different extension (for example, where the trade mark owner has the .com.au domain name and the cybersquatter registers .net.au) or (b) A slightly misspelled version of your domain name (used to generate income from internet users who type a website address incorrectly). Often cybersquatters will monetise their 'cybersquatted' domain registration by posting paid links or advertising related to the trade mark to attract users seeking information related to that trade mark. In many instances the owner of the ‘squatted’ domain name will offer to sell it to the aggrieved trade mark owner for an inflated price.

There are generally three avenues for resolving a domain name dispute. (a) initially send a letter of demand (b) filing a domain name dispute complaint under the relevant Domain Name Policy or (b) in some instances commencing legal proceedings for trade mark infringement. How this undertaken and the timing of these actions requires careful consideration.

There are two types of domain name policy complaints that can be filed. They are (a) Uniform Dispute Resolution Policy (UDRP) for the transfer of top level domain names such as ".com" domains or (b) .au Dispute Resolution Policy (auDRP) for second level domains for Australian domain names such as ".com.au". The process for both complaints are similar and requires the domain name complainant to met the following criteria (1) the domain name is identical or confusingly similar to a service mark or trade mark in which the complainant has rights (2) the domain name registrant does not have any rights or legitimate interests in the domain name and (3) the domain name has been registered and/or is being used in bad faith.

How we can help you

Our legal team have strong technical expertise in domain name recovery actions and complaints. This also includes legal proceedings where a domain name is infringing trade mark rights as well. Our approach is to understand your business objectives and provide you with a relevant outcome based strategy that fits with those objectives. With an agreed strategy in place our team we take a strong, efficient and effective approach to resolving your domain name dispute.