You’ve checked that your trade mark is clear to register and secured a business or company name. But the matching .com.au or .au domain name has already been taken! In this article, we look at possible ways to wrest domain names from their current owners.
Domain names are available to register for fixed time periods on a first-come, first-served basis. The holder of a .com.au/.au domain name (the “registrant”) needs to be “eligible” to hold it and must also use it in good faith. If the registrant doesn’t meet these requirements, you might be able to snatch the domain from them.
What are the options?
Option A – Eligibility criteria complaint
Domain name registrars (the companies that hold the keys to .au domain names) are responsible for checking that a domain name application meets applicable eligibility criteria.
Each time a domain name is registered or later renewed (which occurs every 1 to 5 years depending on the licensing period), the registrant provides a warranty that they meet the eligibility requirements. If the warranty is given along with all other details required to register the domain name, the registration is granted: the registrar won’t typically perform any further manual checks. But – and here’s the important bit – if it’s later shown that the warranty has been breached, the registrar is required to cancel the domain name registration.
The complaints process can be used to inform domain name registrars that the eligibility warranty has been breached by the registrant of a domain name, and so their registration should be cancelled.
If the registrant meets the .com.au/.au eligibility criteria, skip to Option B.
What are the eligibility criteria?
To validly hold a .com.au/.au domain name, the registrant needs to have an Australian presence (usually by being an Australian citizen, business or company, or owning an Australian trade mark). In addition. for .com.au domain names:
- the registrant must own a trade mark, business name or company name which is a “match” for the domain name, or the domain name is an acronym for that mark or name;
- the domain name must be a “match” or synonym for the name of a product or service that the registrant provides.
A “match” doesn’t mean an exact match. The domain name just needs to match some or all of the words in the brand. The domain name must include all matching words in the same order as the brand, and cannot include any additional words.
For example, if someone owned a business name registration for “Brunswick Legal Collective”, the owner can apply to register:
They cannot register legalbrunswick.com.au, because the order of those words is not the same as with the business name.
Foreign citizens or companies without an Australian trading entity are held to higher eligibility requirements. They can only register a .com.au/.au domain if they own a trade mark which is an exact match for the domain name. So that would rule out brunswicklegal.com.au and blc.com.au in the above example.
How does the complaints process work?
An eligibility criteria complaint must be submitted in writing, and must outline why the domain name registrant doesn’t satisfy the eligibility criteria. No fee is payable to the domain name registrar for filing the complaint.
The registrar has 30 calendar days to decide whether to cancel the domain name. If the registrar decides to cancel it, the complainant (that’s you!) gets the first opportunity to snap it up once it’s available to register again. You can purchase a “backorder” service to automatically register a specified domain name to you as soon as it becomes available.
If the eligibility complaint is unsuccessful, you can still go ahead with Option B.
Option B – .au Dispute Resolution Policy complaint
The .au Dispute Resolution Policy or “auDRP” is an arbitration process available for resolving domain name disputes. It is the Australian equivalent of the “UDRP” which resolves disputes in the .com namespace.
All registrants of .com.au/.au domain names agree to be bound by the auDRP process when they first register their domain name. Under the auDRP, a party can apply to have a domain name transferred from the current holder to it if it has a legitimate right to the domain name and the current registrant does not.
In order to get a domain name transferred to you under this process, you’d need to establish the following:
- the domain name is identical or confusingly similar to a name (such a company or business name), trade mark or service mark to which you have rights;
- the current registrant has no rights or legitimate interest in respect of the domain name; and
- the domain name was registered or subsequently used by the current registrant in bad faith.
If a domain name is parked or resolving to a website with pay-per-click advertising or other deceptive content referencing your registered trade mark, this will typically put you in good stead to satisfy factors #2 and #3.
To start the auDRP process, you need to prepare a detailed complaint document and pay a filing fee. The registrant is given an opportunity to respond to the complaint, after which a panel decides the complaint. Decisions are usually released within around 7 weeks, so it is a fairly quick process but not as quick as the eligibility complaint process.
Which option is better?
Where both domain recovery options are available, which is best?
In our experience, it depends on the domain name.
The current eligibility criteria complaints process has only been around for a short period of time. We’ve found that with more “descriptive” domain names (our brunswicklegalcollective.com.au example above being a good example), these are harder to get cancelled via the eligibility criteria process. This is because the registrant can more credibly claim that they are offering a product or service matching the descriptive domain name. There’s no specific requirement for domain name registrars to verify such a claim as part of assessing eligibility complaints. It’d be harder for the registrant to claim they have a matching product or service name if the domain matches your distinctive brand.
For more distinctive brands being used in domain names, the eligibility criteria complaint process is likely best to use. The main benefit is that it’s significantly cheaper and quicker than filing an auDRP proceeding.
If you need advice on how to recover .au domain names, feel free to contact us.