Anyone is able to register a domain name with little more involved than paying a yearly registration fee. This provides the opportunity for persons to easily register domain names that can be used for the purpose of infringing a brand owner’s intellectual property (IP) rights. While infringing behavior, including cybersquatting or operating fraudulent websites, is not new, the continuing transition of commercial activity to the internet has resulted in an increase in this behavior.
So what can be done in relation to infringing domain names? It is possible to get domain names cancelled where they infringe a trade mark owner’s rights. It may also be possible to have websites taken down where their content infringes other IP laws and the Australian Consumer Law. The available legal and practical options to deal with infringing domain names and websites are discussed below.
Contact the registrant
An immediate and cost effective way to have infringing website content removed or to get a domain name cancelled or transferred is to send a letter of demand to the registrant of the relevant domain name and ask them to remove the content or cancel the domain name registration.
This is usually the best approach where the registrant has inadvertently registered a domain name that is similar to a registered trade mark. However, unsurprisingly, asking the registrant to cancel their domain name registration or remove the fraudulent, or otherwise infringing content is unlikely to be successful where the domain name has been chosen to intentionally infringe a trade mark owner’s rights.
It can also often be difficult, or impossible, to find the contact details of registrants who register their domain names using a privacy service. When a privacy service is used the organisation providing the privacy services is listed as the registrant of the domain name and acts as a proxy for the underlying registrant. In circumstances where a privacy service is used and contact details for the registrant are not otherwise available, it will not be possible to send a letter of demand.
Contact the web host
A web host is an online service provider that allows you to publish your website onto the internet. It may be possible to ask the web host to take down a website if it infringes the web host’s terms of use. If the web host takes down the website, it will prevent it from being available to internet users. However, the registrant of the relevant domain name would still have control of the domain name and be able to reinstate the website with an alternative web host using the same domain name. Therefore, while it may be a fast and cheap way to get a web page taken down, it may not be a permanent solution.
Contact the registrar
Domain names are managed by domain registries, which delegate the reservation of domain names to registrars. Anyone is then able to register a domain name from the registrar. It is possible to contact the registrar of the domain name registration to have them suspend, cancel or transfer the domain name if the infringing conduct breaches the registration agreement and registrar’s terms of use. However, while such policies usually provide that the registrar may suspend, cancel or transfer a domain name if the registrar’s terms of use have been breached, experience has shown that even where breaches are blatant, registrars can be unwilling to take action.
Uniform Domain Name Dispute Resolution Policy (UDRP)
It is possible for trade mark owners to have domain names transferred or canceled by lodging a complaint under the UDRP. The UDRP is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) to resolve trade mark based domain name disputes for:
- domain names that end in a generic top-level domain (TLD) for example ‘.com’, ‘.net’ and ‘.org’; and
- certain country code TLDs including ‘.nu’, ‘.tv’ and ‘.ws’.
The UDRP (available on the ICANN website here) is incorporated into all domain name registration agreements, entered into between the registrar and registrant, and as a result, all parties who register relevant domain names are bound to resolve disputes through the UDRP arbitration process.
The UDRP process requires parties to lodge a complaint with a service provider, chosen by the complainant from the list on the ICANN website. The selected service provider will then administer the proceedings.
It is also useful that a single complaint can be lodged in respect of multiple domain names where the registrants of the relevant domain names are the same person or effectively controlled by the same person.
In order to successfully make out a claim under the UDRP, a complainant must demonstrate that the following three grounds have been established:
- the domain name is identical or confusingly similar to a trade mark in which the complainant has rights;
- the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
- the domain name has been registered and is being used in bad faith.
When a complainant holds a national or regional registered trade mark the ‘rights in a mark’ requirement in ground (1) will most likely be satisfied. It may also be possible, albeit more difficult, to prove that a complainant has rights in a common law trade mark, where no trade mark has been registered. For the purposes of ground (1) a domain name will be considered identical or confusingly similar to the trade mark if it incorporates the entirety of a trade mark, or a dominant feature of the trade mark is recognisable.
Ground (2) requires the complainant to show that the registrant has no rights or legitimate interest in respect of the domain name. A registrant may have legitimate rights or interest where they use the domain names in connection with a bona fide offering of goods or services, are commonly known by the domain name, or are using the domain name for a non-commercial or fair use purpose without intent to misleadingly divert customers of a trade mark owner or to tarnish the relevant trade mark.
Ground (3) requires the complainant to prove that the relevant domain name was registered in bad faith and that the domain name is being used in bad faith. A complaint will not be successful where the domain name is not registered in bad faith and then is subsequently used for a bad faith purpose. Some examples of bad faith include registering a domain name primarily for the purpose of selling or otherwise transferring the domain name to a trade mark owner for profit, disrupting a competitor’s business, or misleadingly suggesting affiliation with or endorsement of the complainant’s brand.
Once a complaint has been lodged the holder of the domain name has 20 days to respond to that complaint. After a response has been received, or after 20 days have passed and no response has been received, a panellist, or where relevant multiple panellists, will assess the complaint and make a determination in favour of or against the complainant.
If the complainant is successful, the domain name is either transferred to the complainant or cancelled depending on the remedy requested in the complaint. If the domain name is transferred to the complainant, then the possibility of the infringing party reinstating the website at the address subject to the complaint is removed. However, if the domain name is cancelled then the infringing party, or another party, could register the domain name in the future.
It should be noted that the UDRP process requires the complainant to have rights in a mark, which can be rights in a registered trade mark or common law trade mark. If no rights in a mark exist, then the options to have the domain name removed are more limited. This highlights the importance of ensuring that brands are protected by registering appropriate trade marks.
Resolution under the UDRP process may not be available where a domain name has been registered and is inadvertently similar to a trade mark as it may be difficult to establish registration in bad faith and/or the lack of legitimate rights or interests.
Uniform Rapid Suspension (URS)
The URS is a domain name dispute policy that was designed to complement the UDRP by offering a lower-cost and faster process for relief for trade mark owners who are experiencing the most clear-cut cases of infringement. The URS has been incorporated into all registration agreements for domain names with new generic TLD’s (which are generic TLD’s introduced since 2012) as well as some older generic TLD’s, such as ‘.org’ TLD. It does not currently apply to ‘.com’ or ‘.net’ TLD’s.
The process of lodging a complaint under the URS is similar to the process under the UDRP and requires the same three grounds that are listed above to be established with some minor differences. These differences being that ground (1) of the URS provides that the URS is only applicable to registered word marks (unless a court has previously determined that there is a common law word mark or the word mark is otherwise protected by law) rather than covering trade marks or service marks generally.
Grounds (2) and (3) are identical to the grounds in the UDRP, however complainants must establish the grounds to a higher standard and show that the lack of legitimate rights or interests and the registration and use in bad faith are blatant and there are no material issues of fact to be determined.
The URS does not appear to be the preferred option for domain name dispute resolution as more complaints are filed under the UDRP than under URS. This may be because the standard of proof is higher under the URS than the UDRP and it is only available when trade mark infringement is blatant. Additionally, while the URS process is faster and cheaper it may not provide an appropriate remedy in all cases. This is because the only remedy available under the URS is suspension of the domain name for the remainder of the registration period of the domain name (with an option to extend the period by one year). This may be appropriate where the complainant does not want the domain name transferred to their control, however it would mean that the domain name could be re-registered once the suspension period has lapsed.
AU Dispute Resolution Policy (auDRP)
The auDRP sets out a similar process to the UDRP for having domain names transferred or cancelled that applies to all domain names with the .au TLD. The remedies available under the auDRP are the same as the remedies available under the UDRP.
To be successful under the auDRP the following three grounds must be established:
- the domain name is identical or confusingly similar to a trade mark in which the complainant has rights;
- the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
- the domain name has been registered or is being used in bad faith.
The first two are identical to the grounds under the UDRP. The third ground differs in that it requires registration or use in bad faith as opposed to registration and use in bad faith as required by the UDRP. This means that the third ground may be easier to establish under the auDRP as where the domain name is being used in bad faith there is no need to prove that it was registered in bad faith.
Other country equivalents
Various other countries also have similar dispute resolution policies for domain names with the relevant country’s code. For example:
- the United States Dispute Resolution Policy for ‘.us’ domain names;
- the Dispute Resolution Service Policy in the United Kingdom for ‘.uk’ domain names; and
- CIRA Domain Name Dispute Resolution Policy in Canada for ‘.ca’ domain names.
Court
It is also possible to seek an injunction from the Court restraining a domain name from being used or a website from operating where the domain name or website content breaches the Australian Consumer Law and/or Australian IP laws. Examples of such conduct include misleading or deceptive conduct and copyright infringement. However, going to court may not be the most desirable option as it is likely to be expensive and time-consuming.
In addition to being slow and expensive, it is also possible that an injunction may not be an effective remedy due to difficulties enforcing court orders. Particularly if the identity of the infringing party is not known, for example if domain privacy services are used, there may be no means of compelling the operator of the website to follow the Court’s orders. We recently discussed an example where the Federal Court granted an injunction restraining the operation of a website engaged in misleading and deceptive conduct, however the website remained operational for at least a month following the court order due to issues tracking down the operators of the infringing website.
Even so, it may be the most appropriate option where no registered or common law trade marks exist but there has been infringement of other intellectual property rights, such as copyright infringement. It may also be appropriate where the grounds under the UDRP or other alternative dispute resolution policies cannot be made out.
Another possible step that can be taken to minimise the impact of infringing websites is to have the relevant webpage removed from Google’s search results.
Google is a search engine that can be used to search for an infringing website. While Google is not the web host or domain name registrar (and therefore cannot remove infringing websites or cancel domain names) it can remove the website from its search results which limits the chance of individuals discovering and accessing the websites.
Google has a process for users to report websites that are infringing one of its policies, such as spam or phishing websites, as well as websites that infringe legislation, including Australian IP legislation and Australian Consumer Law as discussed above.
While the fraudulent websites will remain operational after being removed from Google’s search results this is a useful step that can be taken alongside the other methods discussed to limit access while other methods are being pursued.
Key Takeaways
If you discover a domain name that is similar to your own domain name or brand, there are a number of steps that can be taken to have the domain name cancelled or transferred. It will be important to consider what remedy will be most appropriate, for example transferring a domain name as opposed to cancelling it or suspending it, as this may be one factor when considering what take down method to pursue.
The above matters also highlight the importance of registering relevant trade marks to protect a brand, as some dispute resolution processes including the UDRP, URS and auDRP are not available where there has been no trade mark infringement. While the UDRP and auDRP are available for common law trade marks, it is easier to prove the existence of rights in a trade mark where the mark has been registered.
In light of the above issues it can be useful to register various domain names that are similar or associated with a brand, in order to avoid other parties being able to register and use them — whether inadvertently for a legitimate purpose or to set up a fraudulent website.
Our intellectual property law team has experience in advising clients on how to register trade marks and domain names as well as experience in applying to have domain names cancelled or transferred under the methods discussed above. Please contact us if you need assistance with registering trade marks or dealing with infringing domain names.
This article was written by Luke Dale, Partner, Daniel Kiley, Partner and Gemma Kerin, Law Clerk.
