What is cybersquatting?
With the commercial growth of the internet, the value in domain names has increased significantly. 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):
1. 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)
2. 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 domain registration by posting paid links or advertising related to the trade mark to attract users seeking information related to that trade mark. In some instances the owner of the ‘squatted’ domain name will offer to sell it to the aggrieved trade mark owner for an inflated price.
How can I resolve a domain name dispute?
There are generally three avenues for resolving a domain name dispute:
- send a letter of demand and enter into subsequent negotiations;
- commencing legal proceedings for trade mark infringement; or
- lodging a complaint under the relevant Domain Name Policy.
Trade Mark Infringement
In Australia, the use of a trade mark in a domain name may infringe a registered trade mark or breach a trade mark owner’s common law rights. Actuate IP’s trade mark lawyers can advise whether a trade mark dispute is your most appropriate course of action.
Domain Name Policy Complaints
There are two types of domain name policy complaints that can be filed:
1. Uniform Dispute Resolution Policy
The Uniform Dispute Resolution Policy (UDRP) created by the Internet Corporation for Assigned Names and Numbers (ICANN) enables trade mark owners to seek to transfer the registration of a domain name registered by someone else if the following criteria are met:
- The domain name is identical or confusingly similar to a service mark or trade mark in which the complainant has rights;
- The owner does not have any rights or legitimate interests in the domain name; and
- The domain name has been registered and is being used in ‘bad faith’.
The UDRP primarily deals with top level domain names such as .com and .net.
2. .au Dispute Resolution Policy
Australia has a similar scheme in place for secondary level domain names such as .com.au and .net.au. The .au Dispute Resolution Policy (auDRP) is modelled closely on the UDRP and provides a useful alternative method to seek the transfer of illegitimate Australian domain name registrations. The criteria for domain name transfer under the auDRP is similar to that of the UDRP but with a few differences. The auDRP gives protection against domain names that are registered legitimately but then subsequently used in bad faith. Also, the auDRP uses the term ‘name’ instead of ‘service mark’ which is wider in definition to include a person, company, business or other legal or trading name. The auDRP describes various circumstances in which domain name registration or use is in bad faith:
Australia has a similar scheme in place for secondary level domain names such as .com.au and .net.au. The .au Dispute Resolution Policy (auDRP) is modelled closely on the UDRP and provides a useful alternative method to seek the transfer of illegitimate Australian domain name registrations. The criteria for domain name transfer under the auDRP is similar to that of the UDRP but with a few differences. The auDRP gives protection against domain names that are registered legitimately but then subsequently used in bad faith. Also, the auDRP uses the term ‘name’ instead of ‘service mark’ which is wider in definition to include a person, company, business or other legal or trading name. The auDRP describes various circumstances in which domain name registration or use is in bad faith:
- Domain name was registered for the purpose of selling, renting or otherwise transferring the domain name registration to another for a cost in excess of what was initially paid to register it; or
- Domain name was registered in order to prevent the owner of a name or trade mark from registering that mark in a corresponding domain name; or
- Domain name was registered for the purpose of disrupting the business or activities of another person; or
- Intentionally using the domain name to attract or confuse consumers into believing the domain name is affiliated with another name or trade mark, for commercial gain.
Domain Name proceedings of this kind provide a cheaper, speedier alternative to litigation for the resolution of disputes between the registrant of a domain name and a party with legal rights in the domain name.
HOW CAN ACTUATE IP ASSIST?
It is vital that you obtain accurate, specialist advice on how best to deal with domain name disputes tailored for your particular circumstances. Actuate IP will work with you to manage the domain dispute process. As a starting point we will invest time at the outset to understand the nature of your dispute and how it relates to your business and what your business wants to achieve from the dispute – whether you are enforcing your trade mark rights or defending a domain name dispute claim. With this understanding we will provide you with a detailed and considered Fixed Fee Proposal that provides you with initial recommendations and fixed fee options on how to approach the dispute in a way that will achieve the right outcome for you. You can then decide whether our firm will be the right fit for your business.