What’s in a Domain Name?

There is no getting around the fact that a strong internet presence is critical to the viability of almost every business, organisation or other enterprise.  To build that presence, it is natural that proprietors will incorporate their branding into their online profile.  The starting point for doing this is securing a domain name that is aligned to its company’s name, or trading reputation.

Because of this, the domain name system which operates to translate internet protocol addresses (IP address) into easily recognisable names has effectively created one of the most valuable (albeit virtual) ‘real estate’ markets in the world.  Domain names, like logos or slogans, form part of an entity’s ‘get up’, and can become extremely valuable intellectual property.

In theory it is quite straight forward: if a company has a business name (or some other name), it will register that name as a domain in the relevant national registry (in Australia it is the auDA registry).  However, the system can be complicated or even abused when other parties opportunistically register domain names which are identical or deceptively similar to reputed business names.

Set out below is a snapshot of the dispute resolution procedures which can be followed when this type of activity (commonly referred to as cyber-squatting) occurs.

‘Cyber-squatting’ – what to do?

If you are the proprietor of a business which owns a website, or seeks to start a website, and another party is the owner of the desired domain name, how you proceed is going to depend on:

  • The degree of similarity between the offending domain name and your branding;
  • The strength of your brand recognition and protection;
  • The reasons for which the offending domain name has been registered; and
  • The flexibility of the registered owner of the offending domain name.

In some cases, particularly when a business name features a common element (for example: a common last name or a widely provided service), the registration of problematic domain names is likely to be innocent and the resolution of disputes may need to occur commercially.

If, however, your business has a strong reputation in a particular market (for example, you might have a business called ‘Mark’s Mowing’), a registered business name, a trade mark and the registered domain name www.marksmowing.com.au, then the registration of www.marksmowers.com.au, is unlikely to be innocent.  The owner is probably expecting a reasonable percentage of would-be patrons to mistype the domain name, and grow their business off the back of the prominent brand (ausregistry.com.au reports 64% of website traffic comes from people searching for specific domain names).  This behaviour can potentially be very destructive.

Often these sorts of cases can be dealt with by:

  • Tracking down the owner of the domain name through a WHOIS search;
  • Sending the owner and the IP provider a cease and desist letter alleging, amongst other things, trade mark infringement and passing off; and
  • Putting the owner on notice that unless they either deregister the offending domain name, or transfer it to you, they are liable to sued for damages or an account of profits.

This approach will often be successful.  If not, proceedings can be commenced against them under the .au Dispute Resolution Policy (auDRP).  The auDRP incorporates the Uniform Dispute Resolution Policy, which is administered by the Internet Corporation for Assigned Names and Numbers. The auDRP sets out the bases on which domain name disputes can be commenced, conducted and adjudicated and the remedies available to aggrieved parties.  

In Australia the fastest way to resolve domain name disputes is to refer them to LEADR.  This will involve compiling a very detailed complaint, in which aggrieved party sets out the grounds on which the offending domain name infringes their rights and the remedies they seek (which will generally be the deregistration or assignment of the domain name). The other party will have an opportunity to defend themselves, and the panel’s decision may be subject to review by the Federal Court.

By and large, because cyber-squatting cases concern one party acting opportunistically without justification, they are difficult to defend.  If a panellist finds in favour of the legitimate owner, the decision must be implemented by the IP provider.

Lavan Legal comment

A domain name forms an integral part of an organisation’s ‘get up’ and its branding.  Unfortunately, the ease of registering domain names enables other parties to cash in on well recognised brands and organisations by simply clicking a few buttons and paying a small fee.

This can become hugely problematic for an organisation, and can seriously detract from its business and trade.  Therefore companies or organisations which are reliant on their websites operate and generate business should be extremely vigilant.  Resolving these disputes is often straightforward and relatively inexpensive, especially in comparison to the financial damage that cyber-squatting can do.

Disclaimer – the information contained in this publication does not constitute legal advice and should not be relied upon as such. You should seek legal advice in relation to any particular matter you may have before relying or acting on this information. The Lavan team are here to assist.