How do I resolve a domain name dispute with the auDRP?

Author: Ian Aldridge, Progressive Legal

The .au Dispute Resolution Procedure (auDRP) offers a streamlined solution for resolving domain name disputes outside of court. Designed for cases where a domain name has been registered in bad faith, potentially infringing on your rights, the auDRP process, supervised by auDA and facilitated by WIPO, allows for a cost-effective and quicker resolution.

In this article, we’ll simplify the essentials of lodging a complaint under the auDRP, including eligibility, proving bad faith, and the procedural steps involved, helping you navigate the complexities of reclaiming or defending a .au domain name.

What is the auDRP?

If you’ve found out that your competitor has registered a domain name in bad faith and really it should be owned by you, then the auDRP (aka the .au Dispute Resolution Procedure) can be a cheaper, speedier alternative to Court litigation.  

In its development, the auDRP considered the global policy for the resolution of domain name disputes.  

In short, the auDRP allows a domain registrant to bring a complaint against another party who appears to have registered an identical or confusingly similar domain name in bad faith. The process is facilitated by third party providers under the supervision of auDA (the .au Domain Administration). 

The Complainant can elect to have its complaint heard by a 1 or 3 member panel for a significantly lower cost than through Australian Courts. At the time of writing, it costs AUD$2000 to have the complaint heard by 1 panel member. The process is managed through the Word Intellectual Property Organisation (WIPO), based in Geneva Switzerland.

A successful applicant will be able to have the confusing domain name either cancelled or transferred to them.

With around 50,000 – 60,000 new .au domain names being registered every month, there’s bound to be a significant amount of toes being trodden on. More often than not, WIPO will hear these matters where there is straight out cyber-squatting or competitors deliberately registering business names, that is, in bad faith. We can assist with a range of domain name disputes.

What domain names does the auDRP apply to?

Generally, the auDRP process applies to disputes raised by registrants of .au domain names including those ending in com.au, net.au, org.au, id.au, and asn.au.

On what grounds can I lodge a complaint?

The essence of any complaint lodged through auDRP is that the identical or similar domain name was lodged in bad faith. 

There are 3 grounds which the complainant needs to prove: 

1. The complainant has rights to a domain name which is identical or confusingly similar to a domain which has been registered by someone else; 
2. The other party has no rights or legitimate interests in their domain name; and
3. The other party registered or subsequently used the domain name in bad faith.  

Keep in mind that lodgement fees are payable by the complainant. 

How can I show evidence of bad faith?

The appointed panel will consider any of the following circumstances to be evidence that a domain is being used in bad faith: 

1. The domain was registered or acquired for the primary purpose of selling, renting or transferring to someone else for an amount which was more than the cost of the domain; 
2. The domain was obtained to stop the owner of a brand or trade mark from reflecting that name in their domain name; 
3. The domain was registered for disrupting the activities or business of another person; 
4. There appears to be an intentional attempt to attract online visitors by creating confusion as to the source, sponsorship or affiliation of that website, for the purpose of commercial gain; 
5. The representations made in an application for the domain name are false or inaccurate; 
6. The domain applicant had knowledge that using that domain name would infringe upon or violate the rights of another person or business; 
7. The domain name was registered for an unlawful purpose; 
8. The registrant is knowingly using the domain name in violation of the law. 

What should be included in the complaint?

You will first need to read the auDRP Policy and Rules accessible here.  

You may also wish to read the WIPO Supplemental rules for .au Domain Name Dispute Resolution . 

We recommend that you engage a lawyer and/or specialist barrister to help you prepare a coherent complaint. 

Some of the details which will need to be included are: 

1. Personal and contact details;
2. Election of a one or three member panel to determine the dispute; 
3. Name and details of the respondent;
4. The domain name which is in dispute;
5. The names or trade marks on which the complaint is based and the goods and services provided under that brand;
6. The grounds for making the complaint;
7. Remedies sought;
8. Whether there have been legal proceedings about the complaint. 

If I receive a complaint, what defences do I have?

If you’re on the receiving end of an auDRP complaint, you will only have 20 days to prepare a response addressing the allegations brought against you.

The response should be geared towards convincing the panel that you have legitimate rights and interests to the domain name in question. 

It would be helpful to provide evidence showing that:

1. You had bona fide use of the domain name (or a name similar to the domain name), or intention to use the domain name prior to being put on notice about the complaint; 
2. You or your business has been commonly known by the domain name (even if you never registered a trade mark); 
3. You are legitimately trying to use the domain name without the intention of commercially benefitting from customer confusion or by ruining the reputation of the complainant.

Can I issue court proceedings together with auDRP proceedings?

Although Court proceedings can’t be run at the same time, you are welcome to commence Court proceedings after the auDRP complaint is determined if you are unsatisfied with the outcome.

Key takeaways

Understanding the auDRP is crucial for effectively managing domain name disputes within the .au domain space. By familiarising yourself with the eligibility criteria, grounds for a complaint, and evidence required to demonstrate bad faith, you can navigate this process with confidence.

Whether seeking to reclaim a domain or defending your registration, the auDRP provides a cost-effective alternative to court litigation. Remember, the success of a complaint hinges on clear, compelling evidence of bad faith registration and use.

Ready to protect your online brand identity? Get in contact with our experienced dispute resolution team today to ensure your auDRP complaint is robust and well-prepared.

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