The Law Handbook 2024

Chapter 7.5: The internet and the law 741 6. implements clear, predictable and reliable complaint processes; and 7. preserves the fundamental principles of no proprietary rights in a domain name, first come, first served, and no hierarchy of rights. Section 2.4.4 of the policy states as follows: A Person applying for a licence in the com.au and net.au namespaces must be 1. a commercial entity; and 2. the domain name applied for must be: (a) a match of the Person’s company, business, statutory or Personal name; or (b) an acronym of the Person’s company, business, statutory or Personal name; or (c) a match of the Person’s Australian Trade Mark; or (d) a match to or an acronym of a name of a related body corporate or (e) a match or an acronym of a name of: (i) a partnership of which the Person is a partner; (ii) a trust of which the Person is a trustee; or (f) a match or synonym of the name of: (i) a service that the Person provides; (ii) goods that the Person sells (whether retail or wholesale); (iii) an event that the Person registers or sponsors; (iv) an activity that the Person facilitates, teaches or trains; (v) premises which the Person operates and which that Person is providing at the time of the application. For more information about registering domain names, visit auDA’s website (www.auda.org.au) . Under common law, holding the registration of a domain name may not constitute having control over the website’s content. This is relevant, for example, when determining whether a party has power to publish corrective notices on a website. (See Australian Competition and Consumer Commission v Dynacast (Int) Pty Ltd (formerly Phoneflasher.com Pty Ltd) ACN 061 234 642 [2007] FCA 429.) Domain name disputes are commonly dealt with through dispute resolution, which is cheaper and simpler than court litigation. Australian domain name disputes are dealt with according to auDA’s dispute resolution policy. Disputes are dealt with by independent arbitration services that have been accredited by ICANN (the World Intellectual Property Organisation (WIPO) and the Resolution Institute). The dispute resolution process for situations in which the company challenging the domain name owns a business name or trade mark identical to the domain name is if the challenger owned the name prior to the domain name owner registering the name, the domain name is taken and disabled until the dispute is settled. This prevents the domain name owner from using their possession of the name to bargain with the challenger. Case examples: Domain names Melbourne 2006 Commonwealth Games Co v B & M Group of Co Pty Ltd (2005) WIPO WIPO’s administrative panel heard and ruled on a complaint brought by the Melbourne 2006 Commonwealth Games Corporation about an attempted sale to the state of Victoria of a collection of registered domain names. These domain names included melbourne-2006. com, melbourne2006.com , melbourne2006.info, melb2006.com and melb2006.info , which were identical or confusingly similar to at least one of the trade marks in which the complainant had rights. WIPO found that the respondent had no rights and no legitimate interest in the domain names. The respondent’s offer to ‘rent’ the various domain names to the complainant for a fee of $50000 per month was found to be sufficient evidence that the respondent registered and used the disputed domain names in bad faith. WIPO ordered the domain names be transferred to the complainant. Sheather v Staples Waste Removals Pty Ltd (No 2) [2014] FCA 84 The domain name ‘staples.com.au ’ was registered by an IT services company that paid the registration and renewal fees for that domain name without seeking reimbursement. The business for which the domain name was registered, Staples, never used the domain name. A US company – also called Staples – sought to purchase the domain name. A representative of the IT services company transferred the domain name to himself, then sold the domain name for $82500, and retained the proceeds. The judge characterised the transfer and sale as a dishonest and fraudulent design to defeat Staples’ right to the domain name.