Domain name disputes exist if you have a genuine dispute over the use of a domain name – for example, a competitor is using a domain name which is exactly the same, or very similar, to your business name or domain name to funnel traffic away from your business.
If this is happening to you then you may have a genuine domain name dispute, and we may be able to help you through the domain name disputes and resolution process.
In relation to trademark and domain name disputes, if you have a registered trademark then your best course of action may be pursuing trademark infringement. If you do not have a registered trademark, then the best course of action may be a domain name dispute resolution under the AuDRP (AuDRP Pdf here) which was set up to mediate all types of domain name disputes.
Domain Name Disputes
In Fast Enterprises Pty Ltd V Gifts For Girls Pty Ltd (Acn 098 896 372) the facts were:
- The Complainant owned the domain name “fastflowers.com.
- The Respondent registered the domain name “fastflower.com.
- The Respondent was forwarding the “fastflower.com.au” domain name to their website “Proflowers.com.au”.
The result of the AuDRP was that the Panel ordered that the disputed domain names be transferred to the Complainant.
The dispute resolution panellist considered the following before making his decision:
A person is entitled to complain about the registration or use of a domain name where:
The domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights; and
The respondent to the complaint has no rights or legitimate interests in respect of the domain name; and
The respondent’s domain name has been registered or subsequently used in bad faith.
It is to be noted that the three elements of a complaint are cumulative; they must all be proved if the complaint is to be upheld.
Domain Name Disputes
This was also the decision in Wendgold Pty Ltd V. Ozbizweb Pty Ltd As Trustee Of The Blue Sky Trust. The Panel ordered that the domain name “eastcoastparkcabins.com.au” be transferred from the Respondent to the Complainant.
This was also the case in David Harry Birch and Judith Alison Birch trading as Aussie Soap Supplies v Yvonne Tracey Cowell trading as Aussie Soap Supply where the Panel ordered that “aussiesoapsupply.com.au” be transferred to the Complainants.
As long as you can make out the elements of the complaint in accordance with what the cases have said about (1) (2) & (3) above, then you may be able to get ownership of the infringing domain name transferred to you, or at the very least, an order preventing the offender from using it.
If someone has registered a domain name (exactly the same, or very similar to your domain name) and is using it ‘in bad faith’ then the AUDA and their domain name dispute resolution process may be the best course of action for you. Contact us for the latest advice in relation to your domain name disputes.