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    Domain name disputes

    Thursday, January 06, 2011

    Someone once told me that domain names will one day be as valuable as land and how right they were. Everyone now knows that domain names are strongly associated with organisations' identities and a good domain name can in certain circumstances be akin to a home with a view. However, like real property, the rights of ownership over the use of domain names are subject to dispute and can involve legal proceedings ad nauseam.

    In the tomcruise.com domain case, Tom Cruise's lawyers lodged a complaint with the World Intellectual Property Organisation (WIPO) for determination of whether he should be able to have the domain transferred to him from the current registrant. WIPO is just one dispute resolution provider who provides resolution of domain names complaints. WIPO resolved the matter in accordance with the Uniform Dispute Resolution Policy (UDRP) in favour of Mr Cruise. However it is still unclear why Mr Cruise was able to succeed. Although one's first instinct is that Mr Cruise should have been able to take possession of the domain name tomcruise.com as he is the person that would likely be the most closely affiliated with the domain name in the eye of the public, the domain name system works, as it always has, on a first come first serve basis. This means that only under certain exceptional circumstances can a domain name complaint be successfully lodged, even if the complainant's name is identical to the domain name in question. In other words, if Tom Cruise forgot to register the domain name, the then domain name holder should have been able to tell him to take a hike. However in the tomcruise.com case, the opposition was Jeff Burgar, who has been involved in a number of judgements with WIPO. He runs the Celebrity1000.com website which has been subject to considerable debate and which he had tomcruise.com automatically redirected to. The explanation that was given by the panel who determined the case claimed that Celebrity1000.com was "almost wholly devoted to third-party advertisement links" and as a result, it was "difficult to see how this would better qualify as fair use of Complainant's mark". So what? Third party linking is not illegal under the relevant rules and almost all websites contain third party links.

    In Australia, domain names are regulated by .au Domain Administration Australia (auDA) and domain name complaints are subject to review by a dispute resolution organisation of the complainant's limited discretion in accordance with the Australian version of the UDRP. A list of the decisions made in respect of .au domains is available on the auDA website.

    To be able to lodge a successful complaint, a complainant needs to prove that the respondent registered the domain name in bad faith, including for the purpose of selling, renting or otherwise transferring the domain name registration to another person for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name or for using the domain name to create confusion with the complainant's name or mark so far as the confusion concerns the source, sponsorship, affiliation or endorsement of the relevant web site or location or of a product or service on the relevant web site or location. In addition there are a whole swag of other complex rules that will impact on a determination.

    The success of complaints lodged under the UDRP and the Australian equivalent are subject to a number of factors and parties not satisfied with determinations made thereunder are able to appeal the decisions to a court of competent jurisdiction.

    Please contact me if you require legal advice in relation to a domain name dispute.

    Disclaimer: This column is for general informational purposes only. It is not legal advice nor is it a substitute for legal advice. Readers should seek legal advice on their own particular circumstances. Alan Arnott is a technology & telecommunications lawyer with qualifications in computer science and law with Arnotts Lawyers Jones Bay Wharf in Sydney. For more information, please visit www.arnotts.net.au.

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