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.com.au – WHAT’S IN A NAME?

Having a website is recognised and adopted by many businesses as a gateway for potential customers. Adequate attention to the domain name registration process and maintenance however, is often overlooked or not understood. As lawyers, we often assist businesses with legal issues regarding cyber squatting or disputes in relation to the ownership of .com.au domain names.

Some of these issues were raised in relation to the 2006 Melbourne Commonwealth Games.  In case number D2005-0366, the World Intellectual Property Organisation ("WIPO") heard a dispute between the Melbourne 2006 Commonwealth Games Corporation ("M2006") and the Victorian based B&M Group of Companies Pty Ltd ("B&M") over the registration of five domain names by B&M. The domain names were Melbourne-2006.com, melbourne2006.com, melbourne2006.info, melb2006.com and melb2006.info.

M2006 first wrote to B&M to outline its concerns and to request the transfer of the melbourne2006.com domain name.  B&M subsequently offered to lease the domain names to the Honourable Steve Bracks, Premier of Victoria, for $49,000 until after the completion of the Games.  M2006 responded by filing a submission to WIPO alleging the following:

The WIPO panel in its decision of June 2005, ordered the five domain name registrations to be transferred to M2006. The panel held that M2006 had established the above allegations and were entitled to the transfer of domain names.

Unlike .com domain name disputes which are administered by WIPO, .com.au domain names are administered by auDA (au. Domain Administration Ltd). The above allegations submitted by M2006 however, outline the same principles which must be established in all .com.au domain name disputes. The procedure for dispute resolution involves both parties forwarding evidence and arguments which are then assessed and processed by a panel. The process is relatively inexpensive, effective and timely in comparison to litigation. The remedies available are however, limited to the cancelling and transferring of domain names. Where the complainant has suffered financial loss and seeks damages, the matter must still be heard by a court.

When registering domain names therefore, it is advisable to research the proposed name to ensure that it is not identical or confusingly similar to another name, trademark or service.  auDA will permit the registration of any domain name not currently registered, even if the registration inadvertently infringes another's rights to that name. Proper research which includes a search of the trademarks register will therefore ensure that the proposed name will not infringe another's name. If you find that a domain name already exists which is identically or confusingly similar to your name, trade mark or service, you may wish to seek legal advice on the prospects of success in making an application to auDA to transfer or cancel the name.

After the successful registration of your name, focus should be shifted to the renewal process of the name.  Renewal is conducted every 2 years and an application for renewal may not be lodged earlier than 60 days prior to expiration of the 2 years. There are numerous cases where applications for renewal have not been completed properly within the required time which has resulted in the business losing its name, it having been taken up by another business.  Note that names are given out on a strict first come first served basis and a name will be given to an eligible candidate when available. If renewals are a concern, auDA has a contact list of approved services which renew the registration on your behalf.

On a final note, cancellation or transfer of your domain name to a competitor is undesirable and may result in a potential loss of customers. Contrary to what many still believe, a successful legal challenge can be mounted against cyber squatters who purchase domain names with the intention to profit from their purchase.  Businesses should therefore give due consideration to the registration and renewal of their names and seek legal advice in the event of a dispute.

If you have any specific or general questions in relation to this article, please do not hesitate to contact us.