Wrays is a leader in domain name law in Australia. We understand our clients' domain name issues and bring to bear our significant experience to resolving any problems.

Wrays is very experienced in UDRPs and domain name disputes. We act for some of Australia's largest companies in policing their domain name portfolios. We ensure that when new top level domains are created (most recently, .xxx and .co) that our clients are aware of this and can make decisions to register relevant domains in those new spaces before a third party can.

What is it and why do I need one?

A domain name is an Internet Website address. Just as your house or business has its own unique identifying address for the post office (56 Ord Street, West Perth) so does every Website (www.wrays.com.au).

In the business world, domain names are just as common and essential as telephone numbers. If your advertisements and business cards don't display a domain name, you run the risk of being passed over by customers that prefer to browse merchandise and services online. Having a registered domain name with a live Website is one of the first priorities for a business today. It is an inexpensive way to showcase your business name and information to the public.

A good domain name must be easy to remember and it must match or be closely related to your business name or slogan.

What rights does a registered domain name give me?

In Australia, there are no proprietary rights in a domain name. The registrant does not "own" their domain name. Instead, they have a licence to use the domain name for a specified period of time subject to certain licence terms and conditions.

In contrast, in the US and Canada, courts have concluded that domain names are a form of property, like a copyright or trade mark (Kremen v. Cohen, 337 F.3d 1024 (9th Cir. 2003); Tucows.Com Co. V. Lojas Renner S.A., 2011 ONCA 548).

Are there restrictions on what domain names I can register?

Yes, there are certain rules for registering certain domain names. For instance, to be eligible to register com.au or .net.au domain names you must be a sole trader or have a state registered business name or an Australian registered company.

You can register generic top level domain names (gTLD’s) such as .com, .net, .edu, .gov, .info, .biz, .asia, .org, .travel. Each TLD represents a different category of use. For instance, .biz is for businesses and cannot be registered for personal use, .info is an unrestricted category which can be used for any purpose and .edu is for post-seconadry educational establishments.

You can register country code top level domain names (ccTLDs) such as .au (Australia), .nz (New Zealand), .uk (United Kingdom), cn (China), .jp (Japan), .sg (Singapore), .pl (Poland). A ccTLD represents the domain space for a particular country. Some countries open their ccTLD for registration to anyone in the world, while other countries have restrictive guidelines limiting who can register the ccTLD.

New gTLDs

Now companies and organizations will be able to choose their own top level Internet domains. The use of non-latin characters (such as Cyrillic, Arabic, Chinese, etc.) will also be allowed in gTLDs. Applications for new gTLDs will be accepted from 12 January 2012. The new gTLDs are very costly. The initial price to apply for a new gTLD will be $185,000, with an annual fee of $25,000. The Internet Corporation for Assigned Names and Numbers (ICANN) expects that the first batch of new gTLDs will be operational at the beginning of 2013.

How will the rights of trade mark holders be protected in the new gTLD registration process?

1. An objection-based process will enable rights holders to demonstrate that a proposed gTLD would infringe their legal rights. In the event that the legal rights objection is successful the application will not proceed.
2. Applicants for new gTLDs will be required to describe in their applications the rights protection mechanism, which must meet certain minimum standards as described in the Applicant Guidebook, they propose for second-level registrations.
3. All new gTLDs must ensure that second-level registrations are subject to ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP), a process that has worked well to protect rights for many years.
4. Solutions to potential issues for trade mark holders in implementing new gTLDs include:
   1. a trade mark clearinghouse (a centralized location for storage and authentication of trademark information);
   2. the uniform rapid suspension system (URS) (added as a complement to the UDRP and provides a faster and less expensive process for resolving clear-cut cases of infringement); and
   3. a trade mark post delegation dispute resolution procedure (PDDRP) (a rights holder may bring a complaint under the PDDRP if they believe a registry is actively engaging in infringing behaviour).

Can use of a trade mark in a domain name (such as www.mickeymouse.com) constitute use as a trade mark for the purposes of trade mark infringement/passing off and misleading and deceptive conduct?

In Australia, mere registration of a domain name does not constitute use of a sign as a trade mark. However, a domain name may be used as a trade mark when it can be shown to be a sign used in trade to distinguish goods and/or services from those of other traders in addition to operating to indicate the location of a website. ¹

Use of a trade mark in a domain name may constitute passing off at common law or misleading or deceptive conduct which is prohibited by Section 18 of the Australian Consumer Law (Schedule 2 to the Consumer and Credit Act 2010 Cth) (“CCA”). Under the CCA it is not permissible to use another party’s registered trade mark as part of a domain name if the domain name links to a website which uses the registered mark to advertise or market goods or services in respect of which the trade mark is registered.

An alleged infringer who includes another's trade marks excessively in metatags on their own websites may have difficulty relying on defences arising under the CCA which include a good faith element.

Remedies available through the Courts are more extensive than the limited relief available in an auDRP dispute (namely, transfer or cancellation of the domain name). The Court can order an injunction to restrain the use of domain names, metatags and search engine keywords which contain words which are identical or similar to registered trade marks; the transfer of the domain name, an award of legal costs and damages or an account of profits.

How do I register one?

Registering a domain name is extremely easy and inexpensive. Wrays Intellectual Property is a registered domain name reseller. You can register your domain name by giving us call on (08)92165100. Fees vary depending on the type of domain name required eg. .com; .com.au; .net; .net.au; .co.nz; .co.uk; .cn etc.

Registering a domain name is imperative to protect copyrights and trade marks, secure unique product names and increase brand awareness with the public.

You must get in quick!

It is important to register your domain name as soon as possible before someone else does.

What if someone is cybersquatting the domain name I want?

A person is cybersquatting if they are registering, selling or using a domain name in bad faith with the intent of profiting from the good will of a trade mark which belongs to someone else. In order to transfer registration of a domain name from a cybersquatter to a person who has trade mark rights, a dispute process a complaint can be filed under the Uniform Domain Name Dispute Resolution Policy (UDRP) with the World Intellectual Property Organization Arbitration and Mediation Center (WIPO Center).

The UDRP Administrative Procedure is available for disputes concerning an alleged abusive registration of a domain name, that is, which meet the following criteria:

1. the domain name registered by the domain name registrant is identical or confusingly similar to a trademark in which the complainant (the person or entity bringing the complaint) has rights; and
2. the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
3. the domain name has been registered and is being used in bad faith.

The UDRP process is initiated by filing evidence in support of your complaint. The cybersquatter must then file a response within 20 days of your complaint being filed. A panel of one or three persons will decide the dispute based on the evidence provided. This whole process usually takes up to 60 days. If the panel decides in favour of the complainant, the domain name will be cancelled or transferred to the complainant. Note that financial remedies are not available under this system.

Renewals

Most domain name problems arise from accidental failure to renew a domain name. This issue arises time and time again for even very large companies.

The benefit of using Wrays to register your domain names is to have all renewal deadlines (domain names, trade marks and business names) are contained within the one deadline tracking system, to which we allow clients remote access.

Our Expertise

Wrays Intellectual Property is very experienced in UDRPs and domain name disputes. We act for some of Australia's largest companies in policing their domain name portfolios. We ensure that when new top level domains are created (most recently, .xxx and .co) that our clients are aware of this and can make decisions to register relevant domains in those new spaces before a third party can.

For companies which are either financial institutions or conduct financial transactions online, preventing phishing is a priority. Phishing is a way by which people engaged in online fraud gain personal information such as credit card details. Most phishing involves a misappropriated domain name. The outcome of this is consumer fraud, and a loss of consumer trust in your business. We have assisted financial institutions and other businesses with this issue.

For more information contact David Stewart at This e-mail address is being protected from spambots. You need JavaScript enabled to view it or Marie Wong at This e-mail address is being protected from spambots. You need JavaScript enabled to view it .

¹ Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664 per Kenny J