Domain name disputes (in respect of either ccTLDs or gTLDs) being litigated in the courts are uncommon in Australia, given the expense and time required for an outcome that can usually be achieved more efficiently by ADR. However, if the offender is engaging in a suite of intellectual property infringements or other fraudulent behaviour, launching court proceedings in respect of all such behaviour may be the most appropriate course of action.
Such proceedings are typically commenced in the Federal Court of Australia, the Federal Circuit Court or another court exercising federal jurisdiction on the basis of:
- trademark infringement (where the complainant has a registered trademark); or
- misleading or deceptive conduct under the Australian Consumer Law in Schedule 2 of the Competition and Consumer Act 2010 (Cth) (ACL), or the common law tort of passing off (where the trademark in question is not registered).
Under section 120 of the Trade Marks Act 1995 (Cth), a person infringes a registered trademark if they use a trademark as a sign that is substantially identical with, or deceptively similar to, the registered mark, either:
- in relation to the goods or services in respect of which the trademark is registered, goods or services of the same description, or closely related goods or services; or
- in relation to unrelated goods or services, but in circumstances where the registered mark is well known in Australia, such that the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the owner of the mark, and such use would be likely to adversely affect the owner’s rights.
Use of words in domain names can be used as a sign and can therefore fall within the ambit of section 120. Previous court decisions have established the following principles in relation to trademark infringement in the context of domain names:
- the mere registration of a domain name will not constitute trademark infringement;
- where a registrant registers a domain name solely for the purpose of treating with the owner of the trademark, this is unlikely to constitute infringement, because there are no goods or services being offered to consumers in connection with the trademark;
- where a domain name is being used to conduct a website which sells goods or services directly, this is likely to constitute trademark infringement; and
- where a domain name is used to attract customers to a website offering goods or services, this can constitute infringement (even if the registrant of the domain name in question does not themselves sell the goods or services).
Under section 18 of the ACL (Schedule 2 of the Competition and Consumer Act 2010 (Cth)), a person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive consumers. Section 29 of the ACL provides a similar prohibition against misleading or deceptive conduct specifically in relation to the supply or use of goods and services, including, for example, against making a false or misleading representation that the person has a sponsorship, approval or affiliation.
These are intentionally broad provisions that have been held to apply in a wide variety of circumstances, including use of misleading domain names (even if the domain name is not actively used, or is used for goods or services unrelated to those of the complainant). The common law tort of passing off operates in a similar manner.
The benefit of the misleading and deceptive conduct provisions and passing off claims is that the complainant need not have a trademark registration: instead, they can rely on their common law rights and reputation. The difficulty in establishing these actions is that the complainant must first establish that their own reputation is significant enough to lead to some form of consumer deception or confusion.
The procedural rules governing court proceedings and the specific nature of the proceedings will depend upon the court in which the proceedings are brought, the type of proceedings and the way in which the judge and the parties agree to conduct the matter.
The auDRP is the .au equivalent of the Uniform Dispute Resolution Policy (UDRP) and provides a cheap, quick and straightforward form of ADR for simple domain name disputes, which is usually preferable to court proceedings.
auDRP proceedings operate in a very similar manner to those conducted under the UDRP, and are administered by a number of independent providers approved by the auDA (the list is available on the auDA website: www.auda.org.au/policy/audrp) who appoint their own panellists.
The complainant initiates proceedings by filing a complaint with any one of the approved providers, specifying details such as:
- the domain name(s) that is (are) the subject of the complaint;
- details of the registrant and registrar;
- the trademark or service mark upon which the complainant relies and the goods or services, if any, on which the mark is used;
- the grounds on which the complaint is made;
- the remedies sought; and
- any other legal proceedings in connection with the same domain name(s).
Once the provider has reviewed the complaint, unless it is not compliant, it will notify the respondent and provide an opportunity for the respondent to respond within 20 days of notification of the complaint. There is no obligation on the respondent to file a response, but if they do not, the panellist(s) will typically decide the complaint on the basis of the information provided by the complainant. The panel may request or permit the parties to provide additional statements or documents and may, in exceptional circumstances, request an in-person hearing (www.auda.org.au/policies/index-of-published-policies/2016/2016-01/).
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