In this context, cybersquatting involves the registration of a domain by someone when they are ineligible to do so. More specifically, it is the “deliberate and abusive” registration of a domain name related to “marketable and trademark” terms. The registrant often uses the domain in bad faith and attempts to profit from this practice by: licensing or selling the domain to the trademark holder (usually, with a ridiculous mark-up); using  the incumbent’s name to promote their own business and compete against them; or by generating click-through revenue that has come from misdirected traffic.

Over the years, an abundance of cases have been brought to the attention of relevant authorities, both locally and abroad. From a global perspective, ICANN developed and administer the Uniform Domain Name Resolution Policy (UDRP). Locally however, the .au Dispute Resolution Policy (auDRP) governs proceedings.

Where companies or business owners feel that their trademark rights have been infringed by the use of another party that is not connected to the business, they should first initiate contact with the other party and clarify their respective position and legal coverage. As some cases may be attributed to a genuine mistake or lack of knowledge, this will assist in understanding the context of the registration. More commonly, the registrant may make it clear that they are unwilling to cooperate, or try to sell the domain to the party with trademark rights for an exorbitant sum.

In this case, the trademark holder may initiate proceedings per the auDRP guidelines. This approach will require the applicant of the dispute to pay for the exercise, where costs are dependent upon the number of arbitrators appointed to oversee the case. It’s also worth pointing out that cybersquatting is not restricted to names that specifically match that of the trademark holder. In fact, they may also relate to similar names, or those with a misspelling, as defined by the au Domain Administration – something we covered in one of our previous articles.

The lessons from this topic apply to both sides of the spectrum – on the one hand, if you’re a buyer, make sure you check that you’re not infringing on the rights of any other parties when you register a domain name. As a trademark holder, not only does it pay to lock away your domain name as soon as possible so you don’t have to incur expenses to acquire it, but you should regularly monitor the web to ensure your trademarks or intellectual property are not being used without your knowledge.

That’s it for this occasion, stay tuned for our next educational article. If you have any questions, don’t hesitate to contact us.

Best wishes,
The Netfleet Team

http://www.netfleet.com.au

While the policy’s intent has been met with favour from large businesses who already own their primary domain name, many smaller businesses and individuals are often left surprised when the auDA questions their entitlement to the misspelt name. In most cases, said domains are revoked on the basis that a party has no ‘legitimate’ right(s) to use the name.

However, as a registrant, it’s important one familiarises themselves with the respective proceedings surrounding a prohibited misspelling. First and foremost, always check the most recent list of prohibited misspellings published on the auDA’s policy page (link above). The list is populated by domains which are spelled incorrectly, including:

a) the singular version of a plural name, or the plural version of a singular name (eg. woolworth.com.au, safeways.com.au);

b) a name with missing letters (eg. yhoo.com.au);

c) a name with additional letters (eg. quantas.com.au);

d) a name with transposed letters (eg. goolge.com.au, wetspac.com.au);

e) a name with letters replaced by numbers, or numbers replaced by letters (eg. 9msn.com.au);

f) a hyphenated version of a name (eg. e-bay.com.au, micro-soft.com.au);

g) a name prefixed by “www” (eg. wwwseek.com.au); or

h) any other name that auDA determines is a deliberate misspelling, having regard to the surrounding circumstances.

However, said prohibitions are applicable where the domain misspells an entity, brand or personal name, and the registrant has done so to trade upon the reputation of the other party. Therefore, the auDA make provision for the specific context of the domain name, including similarly named parties.

Following routine audits by the auDA, the governing body may ask the relevant registrar to delete the domain name after 14 days of being held in suspense. During said time, the onus will be placed on the registrant to prove their right(s) to maintain the misspelled domain name, which if successful, will result in the name being reinstated and removed from the misspelling list. However, it should be made clear that this does not absolve DRP or trade mark rights.

Similarly, if another party believes a name should be deemed a prohibited misspelling, or the registrant believes the name should not be on the misspelling list to begin with, they may make a complaint to the auDA. In both cases, again, the onus will be on the registrant to prove their cause within the specific timelines as requested by the auDA.

That’s it for this occasion, stay tuned for our next educational article. If you have any questions, don’t hesitate to contact us.

Best wishes,
The Netfleet Team

http://www.netfleet.com.au