Evicting cybersquatters: what to do when someone registers your brand as a domain name

"Cybersquatters" are the kidnappers of the Internet – faceless beings who register domain names for well known brands in the hope that one day, one of those brands will come knocking and pay big bucks to secure the domain name. But it doesn't have to be this way. Like the Liam Neeson character in Taken, brand owners have options available to them where someone has wrongfully registered their brand as a domain name, which could avoid the need to pay ransom for what is rightfully theirs.

For both domestic and international domain names, there are policies for the transfer or cancellation of domain names that have been wrongfully registered. While the tests differ slightly under the international and domestic policies, both regimes offer a fairly efficient and effective way for brand owners to secure domain names that have been wrongfully registered.

International domain names

International domain names (such as .com, .info and .org domain names) are subject to the Uniform Dispute Resolution Policy (UDRP). Brand owners who wish to have another party's international domain name cancelled or (preferably) transferred to them can submit complaints under the UDRP to various accredited international dispute resolution bodies. Most disputes are submitted to the World Intellectual Property Organisation (WIPO), a species of the United Nations. Other accredited dispute resolution providers include Forum (formerly the National Arbitration Forum, based in the United States) and the Asian Domain Name Dispute Resolution Centre (a joint initiative of the China International Economic and Trade Arbitration Commission and the Hong Kong International Arbitration Centre).

The party which institutes domain name dispute resolution proceedings is known as the Complainant. The registrant of a domain name which is subject to a complaint is known as the Respondent.

To succeed under the UDRP, the Complainant must establish that:

• the domain name is identical or confusingly similar to a trade mark in which it has rights (whether registered or unregistered); and
• the Respondent has no rights or legitimate interests in respect of the domain name; and
• the domain name was registered and is being used in bad faith.

The Complainant seeks to establish these matters by way of a written Complaint, to which the Respondent may (if it so wishes) submit a written Response.

The entity which determines the domain name disputes is known as the Panel, and consists of one or three members. In the vast majority of cases, the Panel decides the case based on the Complaint and the Response alone. In some cases the Panel, at its discretion, will consider parties' supplemental submissions. Cancellation or transfer of the domain name are the sole remedies provided to a successful Complainant under the UDRP.

In normal circumstances, an action under the UDRP will be resolved in about six to eight weeks.

Australian domain names

The Australian ".au" domain name system is administered by .au Domain Administration (auDA). auDA has a range of policies in relation to the registration and use of ".au" domain names.

File a complaint under the .au Dispute Resolution Policy

Australian domain names (such as .com.au, .info.au and .org.au) are subject to the .au Dispute Resolution Policy (auDRP). auDA has approved WIPO and the Resolution Institute to determine domain name disputes submitted under the auDRP.

As is to be expected, there are far fewer decisions concerning Australian domain names than international domain names. However, there are very subtle yet very important differences between the auDRP and the UDRP (addressed further below) and the decisions of panellists deciding cases under the auDRP can turn on these differences. Decisions under the auDRP are therefore unique and need to be considered separately from decisions under the UDRP when filing or defending a Complaint under the auDRP.

To succeed, the auDRP requires a Complainant to establish that (with the differences to the UDRP shown in "revision marks"):

• the domain name is identical or confusingly similar to a name or trade mark in which it has rights (whether registered or unregistered); and
• the Respondent has no rights or legitimate interests in respect of the domain name; and
• the domain name was registered and is being or subsequently used in bad faith.

As readers will appreciate, these differences – albeit subtle – can be very significant in determining whether a complaint is upheld or denied. The process is, however, broadly similar to that under the UDRP.

 

File a complaint in relation to eligibility

Unlike ".com" and many other international domain name systems, auDA has strict eligibility policies^[1]for those who wish to register and hold a ".com.au" domain name. These policies can be relevant if, for example, the domain name registrant no longer exists (eg. the company has been deregistered) or if they did not comply with the allocation criteria at the time that they registered the domain name. This may be so, in the case of a ".com.au" or ".net.au" domain name, if the domain name is not an exact match, abbreviation or acronym of the registrant’s name or trade mark or is not otherwise "closely and substantially connected" to the registrant.

Where a person does not comply with these policies, it is possible to file a complaint with auDA or the registrar of the domain name (depending on the nature of the complaint).    

This process is generally cheaper and quicker than filing a complaint under the auDRP. However, the only outcome available is generally the cancellation of the relevant domain name – it is not possible to have the domain name transferred to you. This means that the domain name will be available to any party for registration again.

One way brand owners can stop other third parties registering the domain name once it is cancelled following this process is by engaging the services of a drop catching service. This service allows people to lodge a pre-application for a domain name before it is due to drop (ie. become available), and then uses a special software program to attempt to catch the domain name at the registry as soon as it drops. However, there is always a risk that another party has engaged a similar service and registers the domain name before the brand owner.

How do you decide which option to use?

Deciding which option is best for you will depend on a number of factors, most notably the type of domain name, the nature and status of the party that has registered the domain name, the commercial value that the domain name would provide for your business and how the domain name is being used.  For example, if the website at the domain name is being used to criticise your business rather than for commercial gain, a different approach may be required. 

If you would like assistance is pursuing a domain name containing your brand that has been wrongfully registered, please get in touch.

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^[1] Click here to see the auDA Complaints Policy, click here to see the auDA Complaints (Registrant Eligibility) Policy and click here to see the auDA Domain Name Eligibility and Allocation Policy Rules. ^{Back to article}