A Critical and Comparative Review of auDRP and UDRP Domain Name Decisions

• Author: Alpana Roy,Althaf Marsoof
• Published date: 01 November 2016
• Date: 01 November 2016
• DOI: http://doi.org/10.1111/jwip.12059

A Critical and Comparative Review of auDRP and

UDRP Domain Name Decisions

Alpana Roy

Western Sydney University

Althaf Marsoof

Kings College London

Domain names are simplified internet addresses which provide a shorthand way to connect to webpages on the

internet. The exponential increase in the use of the internet has led to a growing number of disputes relating to the

registration and use of domain names. This has also led to the development of legal and quasi-legal rules relating to the

management of domain names and domain name disputes. The Uniform Domain Name Dispute Resolution Policy

(“UDRP”), which was implemented in 1999, provides the international legal framework for the resolution of domain

name disputes concerning generic top-level domains (“gTLDs”), such as “.com”. National authorities provide

corresponding policies for the resolution of domain name disputes concerning country code top-level domains

(“ccTLDs”), such as “.au”. The relevant national policy governing .au domain name disputes is the .au Dispute

Resolution Policy (“auDRP”), which came into force in 2002. Both the auDRP and UDRP have proven to be an

effective mechanism for the quicker and cheaper resolution of domain name disputes. While there has been

considerable academic discourse on the UDRP, there has been very little commentary written on the auDRP. The aim

of this paper is to fill the gap in knowledge on the auDRP by providing a critical and comparative review of key

decisions under both the international and Australian domain name policies.

Keywords domain names; auDRP; UDRP; elements under Paragraph 4(a)

Despite the internet’s omnipr esence, online content is stored in the physical environment—in compute r

devices located all over the glob e. These devices that are connect ed to the internet have a unique

address, known as the Inter net Protocol Address (“IP Address”), which is used to establ ish connections

between them. Typically, I P Addresses take a numeric for mat (e.g. 203.2.218.214, whi ch is the IP

Address for the Australia Br oadcasting Corporation’s we bsite at http://www.abc.ne t.au/). Domain

names are essentially a human f riendly substitute for IP Addr esses. Thus, the importance of do main

names becomes visibly clear, as it wou ld be extremely difficult for most hu mans to remember the IP

Addresses for every single onli ne location (or website) they wis h to locate. When IP Addresses are

converted to human friendly a lphanumeric strings, such as “abc .net.au”, it becomes easier to remember

(Armon, 2003, pp.101–102). How ever, the translation of IP Addresses to their alphanumeric format (o r

domain names) has given rise to le gal disputes. This is because in dividuals derive rights and/o r

legitimate interests in respe ct of trademarks, as well as personal, c orporate and business names, all of

which could be represented i n the form of domain names taking the same alphanumeric forma t. In

short, the negative conseque nce of establishing domain name s is the rise of cybersquatting (Bad gley,

2001, pp.345–346).

In order to resolve domain name disputes, the Internet Corporation for Assigned Names and

Numbers (“ICANN”), the international authority established for the administration of the internet, has

adopted a dispute resolution policy known as the Uniform Domain Name Dispute Resolution Policy

(“UDRP”). The UDRP applies to disputes concerning generic top-level domains (“gTLDs”),

1

and has

been adapted in various jurisdictions for the resolution of domain name disputes involving country code

©2016 John Wiley & Sons Ltd 203

The Journal of World Intellectual Property (2016) Vol. 19, no. 5–6, pp. 203–237

doi: 10.1111/jwip.12059

top-level domains (“ccTLDs”). In Australia, the relevant local policy for .au domain name disputes is

the .au Dispute Resolution Policy (“auDRP”), which is administered by the .au Domain Administration

Ltd (“auDA”) (Bender, 2007). The auDA is the policy and industry regulatory body for .au domain names.

Among its functions, auDA accredits and licenses registrars to make domain name registrations, develops

and administers policy, and represents .au domain names at ICANN.

Although the auDRP is derived from the UDRP, there are some notable points of divergence, which

have consequentially resulted in panels constituted under the auDRP deviating from their UDRP

counterparts in their approach to resolving similar disputes. This paper undertakes a critical and

comparative analysis of these notable differences in the two policies and the key domain name decisions

awarded by panels under the two policies.

To date, any attemptto compare UDRP and auDRP decisions has been limited to the auDRPOverview

1.0,

2

which is based on the corresponding overview of UDRP decisions formulated by the Arbitration and

MediationCenter of the World Intellectual Property Organization(“WIPO”).

3

Despitethe auDRP Overview

1.0 being a “compendium of consensus views of panels on key legal and procedural issues under the

auDRP”, it is arguably not exhaustive. This paper seeks to contribute to the discussion commenced by the

auDRP Overview1.0 by comparing panel decisions under a key provisionof both policies: paragraph 4(a). It

is under this provision that a complainant is required to establish three distinct elements (which are

considered below) in order to be successful in domain name dispute resolution proceedings.

The First Element

There are no limitations to what domain names could comprise. When generic phrases such as “cars”or

“computers”are used to form a domain name, such as “cars.com”or “computers.com”, there is unlikely to

be any dispute. In contrast, when a domain name closely resembles a registered trademark

4

(as well as a

“name”, in the case of the auDRP), and someone other than the owner of the trademark (or bearer of a

name) had registered that domain name, there is a greater likelihood that a dispute might spur. It is for this

reason that both the policies incorporate a requirement that a domain name subject to a dispute must be

identical or confusingly similar to a trademark (and/or name, in the case of the auDRP) in which the

complainant has rights, if the complainant is to succeed.

Thus, in terms of paragraph 4(a)(i) of the UDRP, a domain name registrant must submit to a

mandatory administrative proceeding if a complainant establishes inter alia that the domain name is

identical or confusingly similar to a trademark or service mark in which the complainant has rights. This is

the first element that any complainant must satisfy. The corresponding provision in the auDRP replicates

UDRP’s paragraph 4(a)(i) with a minor, yet significant, change. Under the auDRP, in addition to stating

that a registered domain name is identical or confusingly similar to a trademark or service mark,

complainants may also assert similarity to a “name”in which they have rights.

5

The footnote attached to

that provision provides the following clarification:

For the purposes of this policy, auDA has determined that a “name ... in which the

complainant has rights”refers to: a) the complainant’s company, business or other legal or

trading name, as registered with the relevant Australian government authority; or b) the

complainant’s personal name.

In order to satisfy this element under both the policies, a complainant must establish two things—first,

that the complainant has a “right”in respect of a trademark or service mark (or a name in the case of the

auDRP) and second, that the domain name concerned is identical or confusingly similar to the trademark,

service mark or name, as the case may be.

Alpana Roy and Althaf Marsoof auDRP and UDRP Domain Name Decisions

©2016 John Wiley & Sons Ltd

204 The Journal of World Intellectual Property (2016) Vol. 19, no. 5–6

Establishing a Complainant’s“Rights”

Rights in Respect of Registered Trademarks

Under the UDRP,

6

as well as the auDRP,

7

a complainant having a registered trademark easily satisfies the

first element, although a mere application to register a trademark is not sufficient to confer any “rights”on a

claimant.

8

In the case of the UDRP, a complainant could establish rights in a trademark irrespective of

where it is registered.

9

Whereas, under the auDRP there has been some uncertainty whether rights arising

from trademark registrations outside of Australia could satisfy this requirement, as there have been two

strands of authority. Some panels have expressly opted for a more restrictive view in holding that only

trademark registrations in Australia are capable of establishing rights for the purpose of the first element.

10

Whereas, the more common view has been that even foreign trademark registrations would suffice.

11

The

consensus view is reflected in the auDRP Overview 1.0—“The auDRP does not restrict a complainant’s

trademark rights to a trademark registered with the Australian trademark authority”.

12

Notably, when this

issue arose in Marshmallow Skins v Piipiinoo, the panel considered these two lines of authority and

expressly decided to take the liberal approach in allowing foreign trademark registrations to supply the

necessary rights for the purposes of this element under the auDRP. The panel observed that it “does not

seek to insert a nationality requirement in the Policy, which does not exist in the text of the Policy”.

13

Although the panel was concerned that a literal interpretation of the policy would open floodgates allowing

“complainant[s] with no connection to Australia to satisfy the first element of the Policy and thereby

acquire a “.au”domain name”,

14

this concern was negated in view of the following:

(1) It is unlikely that a complainant would expend legal resources preparing a complaint under the auDRP

if it had no connection to, or interest in, Australia.

15

(2) The lack of a connection to Australia would be an obstacle in satisfying the other elements of the

auDRP.

16

(3) The Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (2012–04) require some

connection to Australia, before a domain name is allowed registration. Thus, “[t]he Domain Name

Eligibility and Allocation Policy Rules operate to prevent a complainant who relies solely on a foreign

registered trade mark and has with (sic) no connection with Australia from taking possession of a

domain name in the “.au”space that it is not entitled to, even if it obtained an order for transfer under

the Policy”.

17

Rights in Respect of Unregistered Trademarks

Rights may also be established with regards to unregistered trademarks where such marks are

inherently distinctive,

18

as well as in circumstances where they are less distinctive but have acquired a

“secondary meaning”.

19

However, there is a notable difference between the UDRP and auDRP in

relation to unregistered marks—in that, under the latter, unregistered trademarks used only within

Australia are considered for the purposes of establishing a complainant’s rights in relation to a

trademark.

20

The auDRP Overview 1.0 reflects this position: “evidence that [a complainant] has

unregistered trademark rights outside of Australia is insufficient”.

21

Thus, in We Buy Any Car v

Highway Auto Mart, the panel rejected the complaint on the basis that the complainant had never traded

in Australia, despite it having established a reputation, and thereby common law trademark rights, in

the United Kingdom.

22

Taking into account the nature of business to which the domain name related in

that dispute, the panel observed that “it seems [...] inherently unlikely that an Australian consumer

would sell a motor vehicle in Australia through a United Kingdom based website and business that does

not purport to offer services in Australia”.

23

Yet, whether such a consideration should be part of the

analysis in determining whether the first element of the auDRP is satisfied is questionable. This is so,

auDRP and UDRP Domain Name Decisions Alpana Roy and Althaf Marsoof

©2016 John Wiley & Sons Ltd

The Journal of World Intellectual Property (2016) Vol. 19, no. 5–6 205