There are over 330 million registered domains on the internet, and over 20 million new ones are registered every year. This can lead to some intense competition for some of the most recognisable words.
Domain registrants will often clash when it comes to who owns the rights to a domain. While some domain names may be registered by accident, others are registered with the intention of extracting money and/or ruining the reputation of the trademark holder. This article will describe how to go about challenging such conduct. It is a very high level description. Appropriate advice will certainly be needed if you want to pursue any of these alternatives.
What are my Options?
Firstly, if you have a registered trademark that incorporates your domain name there are enforcement provisions that apply under the Trademark Act in Australia. Claims can be made that would prevent the user from using your trademark in the future, compelling them to transfer the domain name to you, and remedies that would entitle you to damages or an account of profits from income derived from misuse of your trademark.
Secondly, there are other ways you could go about resolving a domain name dispute.
- Starting an action in court - this could certainly include the trademark application referred to above, but may also include claims for misleading and deceptive conduct, breach of copyright, passing off and, subject to the factual circumstances surrounding the use of the domain, potentially a breach of licensing or other contractual arrangements.
- Filing a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) or auDRP
The UDRP and the auDRP can be done conveniently and easily online. They are both cost effective and can be finalised and completed in under three months. Going through the courts can be costly and very difficult. However, a court could give you other forms of reward besides getting the infringing domain name cancelled or given to you. This could include monetary compensation or an injunction against another person so they wouldn't be able to continually threaten or infringe on your rights in the future.
Identify Who Registered the Infringing Domain Name
Before undertaking any process in which the domain name is challenged, it would be smart to first identify who is using the domain name. In order for any action to be successful you need to identify and sue the responsible legal entity. A simple online search on WHOIS should lead you to the domain holder and give you the information on how to contact them.
If they are located outside of Australia then the UDRP is most likely your best option, since it is an online source. Going to the court against someone who is not from the same country can lead to high costs and uncertainty. If they are located inside Australia, then both the court and auDRP are options for resolving the issue.
If the offending company is an established business that has a reasonable amount of money to satisfy a judgment for damages and legal costs, then going to court may be a good option. However, a lot of the time you are dealing with people or groups who have very few assets. Therefore, you should not invest a significant amount of time and money into claiming damages that you will most likely not recover in court.
Determine What Rights the Domain Name Holder Has
In some cases, the person who is the domain name holder may have rights or legitimate interests in the domain name. In this case, the UDRP would not be helpful. Instead, taking action in court would be the better option. Going to court allows for a more comprehensive hearing and review of the evidence. For example, the person who holds the domain name may be infringing on trademarks that you own, which only a court can resolve.
The courts could also help you with better customer relations and profits. If the infringing domain name is causing, or is likely to cause, confusion to your customers and costing you significant profits or damages to your brand, then taking action in court is a good option.
Decide Your Ideal Outcome
The UDRP makes sense if you wish to have the infringing domain name cancelled or transferred. This is especially true if the current holder's use of the domain name is not causing your business immediate and significant losses. It is also a simple and low-cost process.
If you wish to have an outcome that goes beyond a transfer or cancellation, then going to court may be the better option for you. If you believe the infringing party will continue to threaten and infringe on your rights in the future, then court action is again the better option. The court would be able to grant you a form of injunction to stop any future action.
The courts could also grant you the ability to have financial compensation from any damages that may have occurred. This is a good option if you already have had significant financial loss due to the infringing domain name. This would mean you would pursue a financial/ damages claim in court.
Needless to say, every case will need to be considered on its own merits. The first thing in any proceeding is to determine whether you have the legal grounds upon which to base the application, and whether you have reasonable chances of success if you were to commence proceedings or instigate a challenge to another party’s conduct. That assessment, combined with consideration of the general issues referred to above, will enable you to determine if, and how, you take action against an offending party.
By Tal Williams