The Launch of .au Dispute Resolution Policy
by Philippe Rodhain
The .au Domain Names Dispute Resolution Policy (auDRP) commenced on 1 August 2002. The auDRP is intended to provide a cheaper and quicker alternative to litigation for resolution of disputes between .au domain name registrants and parties with competing rights in the domain name.
Domain names that were issued before 1 August 2002 are not subject to a mandatory administrative proceeding under the auDRP, unless the registrant voluntarily elects to be bound by the auDRP or they are renewed after this date.
The auDRP is a version of the Uniform Dispute Resolution Policy (UDRP) administered by the Internet Corporation for Assigned Names and Numbers (ICANN) with respect to global Top Level Domains (gTLDs). In order to obtain cancellation or transfer of the conflicting domain name, the complainant has to meet the following criteria:
The domain name is identical with or confusingly similar to a name, trademark or service mark in which the complainant has rights;
The domain name holder has no rights or legitimate interests in respect of the domain name; and
The domain name has been registered or subsequently used in bad faith.
As with UDRP requirements, the complainant must prove that each of these three elements is present. The auDRP nevertheless differs from the UDRP in two main respects. Firstly, it takes into consideration the policy rules that apply to .au domain names. Secondly, it addresses practical constraints that have become apparent since arbitrations under the UDRP began in 1999.
Even though the spirit of the UDRP has been preserved in the auDRP, a few amendments have been included. In the light of this some future decisions that will be given under the auDRP might differ from those given under the UDRP.
It can be seen that the scope of the rights which the complainant can rely on, has been expanded. Under the auDRP the complainant can actually base his/her complaint not only on a trademark but also on a name in which he/she has rights.
As a result, the auDRP will not have exactly the same purpose as the UDRP, which is to provide holders of trademark rights with an administrative mechanism for efficient resolution of disputes arising out of bad faith registration and use by third parties of domain names corresponding to those trademarks.
Further, the auDRP will be available not only for the owners of trademarks, but also for anyone who has rights relating to a registered name (the complainant's company, business, other legal or trading name, as registered with the relevant Australian government authority or the complainant's personal name).
In addition, the auDRP has an important difference from the UDRP relating to bad faith. Under the UDRP, the complainant must not only prove that the domain name has been registered in bad faith but also that it is being used in bad faith. It is usually very difficult for the complainant to bring such proof.
Indeed, bad faith registration alone is an insufficient ground for obtaining a remedy under UDRP. (WIPO administrative panel decision of 18 February 2000 No D2000, Telstra Corporation Limited v. Nuclear Marshmallows).
It is often the case that a bad faith registrant registers domain names in bulk, but does not use them. Consequently, the majority of refusals to cancel or to transfer the domain name in issue were based on the failure to adduce evidence that the domain name had been registered and was being used in bad faith. (WIPO administrative panel decisions: Ingram Micro. V. Ingredients Among Modern Microwaves No. D2002-0301 of 15 May 2002; Formway Furniture Limited v. Microfish Pty Limited Case No. D2001-1476).
This principle was applied in a WIPO administrative panel decision forming the now famous precedent thus: "It is clear from the legislative history that ICANN intended that the complainant must establish not only bad faith registration, but also bad faith use. These comments point out that cybersquatters often register names in bulk, but do not use them, yet without use the streamlined dispute-resolution procedure is not available" (WIPO administrative panel decision of 14 January 2000, Case No. D99-0001, World Wrestling Federation Entertainment Inc. v. Michael Bosman).
Under the auDRP, the complainant has only to prove either that the domain name has been registered in bad faith or that after registration it has been used in bad faith.
By this approach, the simple fact that the registrant would have been aware of the existence of the complainant's rights at the time of the registration could be sufficient to comply with the auDRP's requirement relating to bad faith.
Thus it can reasonably be predicted that this new provision in the auDRP concerning bad faith will have an important bearing on the outcome of proceedings and will be to the benefit of complainants.
Although the auDRP is an adaptation from the UDRP, it can be concluded that the above distinctions are likely to generate some substantial differences between decisions given under the two policies. However, what will happen remains to be seen; the panels will have a great deal to do and, as the famous quotation says "a journey of a thousand miles must begin with a single step (Lao-tze)".
JurisNotes.Com - The Law in Brief
Copyright © JurisNotes.Com