It has now been almost two months since the Priority Allocation Window for .au direct domain names closed, with all unopposed applicants now the registered holders of their applied for domain names. In addition, all unclaimed .au domain names are now available to the public for registration.
For those who applied for their .au equivalent only to realise that another party had done the same (eg the Registrant of domainname.com.au and Registrant of domainname.net.au), the road to securing their ‘direct’ domain name is not as straightforward.
As noted in our previous .au direct articles (here, here and here), competing applicants to a .au direct domain name are required to negotiate amongst themselves to determine who will secure the domain name, with the Australian domain name authority (auDA) leaving the associated domain name essentially in ‘limbo’ until only one applicant remains listed against the domain name on its Priority Status Tool.
auDa’s most recently released statistics on contested .au direct domain names suggested that 6,460 names would need to be the subject of negotiation before they could be successfully registered. Of these, 85% would involve negotiations between two or more parties.
I am an applicant of one of these contested domain names, how should I go about negotiation
1. Identify the other party’s/parties’ contact details through auDA’s ‘WhoIs’ search
While the domain names of competing applicants are listed against auDA’s Priority Status Tool, this does not reveal who exactly you should be contacting. However, by using auDA’s ‘WhoIs’ search (linked above) you should be able to identify the following details:
- Registrant;
- Registrant Contact Name; and
- Registrant Contact Email,
which should assist you in reaching the most appropriate person or entity to negotiate with.
2. Research
We note that some entities may have engaged a trustee service or specialist IT provider to hold a domain name on their behalf, and accordingly, there may be inaccurate information listed against the Registrant details. In this respect, conducting a brief Google search of the other applicant/s helps in obtaining a clearer idea of the party/parties involved and their intentions in applying for the domain name in the first instance.
3. Prepare your approach
Once you have confirmed who exactly you will be negotiating with, it is pertinent to think about your approach and how you will communicate with your competing applicant/s. Do you have a business name or registered trade mark that suggests you are the true owner of the brand at issue? Do you otherwise hold multiple versions of the domain name? Is the other party even using the domain name that they were eligible to apply for the .au equivalent with?
Unlike other .au domains, auDA simply requires that the Registrant of a .au direct domain name have an ‘Australian presence’, being an ABN, ACN or Australian trade mark. Out of concern that this may result in bad actors or those without legitimate interests registering for their equivalent name, some individuals or entities may have applied for their .au direct domain name during the Priority Allocation Window purely as a defensive means of brand protection, and may be happy to withdraw their application upon communicating with another party who has a legitimate claim to the .au direct domain name.
Accordingly, in the first instance, we would recommend keeping any communication with competing applicants open and through a commercial (rather than legal) lens, setting out why you believe you/the entity you are representing is the most appropriate to hold the domain name, and including examples to support such a contention. In circumstances where more than one other applicant is involved, ensuring that you tailor your communication such it that does not appear to be generic or haphazard will also place you in good stead. Following this, if the situation necessitates, a more adversarial approach can be taken.
4. Be patient
.au direct domains name are new territory for all involved, and a competing applicant may need time to consider their options or wish to negotiate certain terms before they are comfortable with parting with their domain name reservation. As mentioned above, auDA will hold a .au direct domain name applied for during the Priority Allocation Window until only one applicant remains listed against the domain name. Although applicants need to renew their application on a yearly basis if they want to remain in contention for the domain name, this holding period is otherwise indefinite. Because withdrawing an active application is final and cannot be reversed, parties will want to be sure of their decision before taking any action.
5. Seek further assistance
Approaching an unfamiliar person or entity to negotiate can be a daunting experience, and some applicants may choose to respond to a request to withdraw a .au direct domain name application in an aggressive manner. Particular circumstances can require legal input to successfully navigate negotiations, and sometimes seeking support from a professional is the most effective way to achieve a resolution.
HWL Ebsworth has experience in successfully negotiating contested domain names and is able to provide advice or assist in securing your .au direct domain name. Are you an applicant for a contested .au direct domain name? If so, contact our Intellectual Property team today.
This article was written by Luke Dale, Partner and Annabel Bramley, Law Graduate.
