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cyberlaw:dns [2015/10/26 10:25]
mezza [Examples of Domain Name Disputes]
cyberlaw:dns [2019/09/03 11:56] (current)
131.181.11.107 [Regulating the Domain Name System]
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 ## Domain Names ## Domain Names
  
-DNS stands for Domain Name System. ​A Domain Name is the text you usually ​type into the browser to get to the website of your choicefacebook.comgoogle.comor qut.edu.au. The DNS is responsible for translating between the domain name and the IP address, which is the unique ​number ​assigned to each device on the Internet ​to allow it to communicate with other devices and looks like [[173.252.120.6|173.252.120.6]] ​or [[58.96.10.88|58.96.10.88]] for facebook.com ​and google.com respectively. ​ Because it is a lot easier ​to remember ​the name than the number, the Domain Name System plays a crucial ​role in the way people use the internet.+DNS stands for Domain Name System ​("​DNS"​)The DNS translates a domain name, which is the text that you type into a web browser to get to the website of your choice ​such as facebook.comgoogle.com or qut.edu.au, to its corresponding ​IP address, which is the unique ​series of numbers ​assigned to each device on the Internet. For example, facebook.com'​s IP address is '[[173.252.120.6|173.252.120.6]]'Since domain name are relatively simple ​and comprise largely easy-to-remember ​words, the Domain Name System plays an important ​role in making ​the internet ​more accessible to users
  
 ### The Domain Name Structure ### The Domain Name Structure
  
-Domain names contain a number of elements+Domain names, like _qut.edu.au_,​ have three main levels
-  * Top level domain (LTD) - e.g. '​.au'​+  * Top level domain (TLD) - e.g. '​.au'​
   * Second level domain (2LD) - e.g. '​.edu'​   * Second level domain (2LD) - e.g. '​.edu'​
   * Third level domain (3LD) - e.g. '​qut'​   * Third level domain (3LD) - e.g. '​qut'​
- 
-Written out as a domain name, this is qut.edu.au 
  
 ### Types of Domain Names ### Types of Domain Names
  
-At top of the DNS hierarchy is the root zone file, edited by Internet Assigned Numbers Authority (IANA), under the control of an agency of the US Department of Commerce. The root zone file contains a list of the names and numeric IP addresses of the authoritative DNS root name servers for all the top level domains published to the internet by 13 root name servers at more than 80 locations in 34 countries, maintained by a variety of organisations. Root name servers contain information about the name servers of all the top level domains (TLDs) and country code top level domains (ccTLDs), redirecting internet traffic to the name server for the relevant TLD or ccTLD as indicated in the domain name. Verisign Global Registry Services maintains the primary root server, called “a.root-servers.net” and copies of its central database, the root zone file, are stored on each of the 12 additional root servers+At the top of the DNS hierarchy is the root zone file, edited by Internet Assigned Numbers Authority (IANA), under the control of an agency of the US Department of Commerce. The root zone file contains a list of the names and numeric IP addresses of the authoritative DNS root name servers for all the top level domains published to the internet by 13 root name servers at more than 80 locations in 34 countries, maintained by a variety of organisations. Root name servers contain information about the name servers of all the top level domains (TLDs) and country code top level domains (ccTLDs), redirecting internet traffic to the name server for the relevant TLD or ccTLD as indicated in the domain name. Verisign Global Registry Services maintains the primary root server, called “a.root-servers.net” and copies of its central database, the root zone file, are stored on each of the 12 additional root servers.
  
-The root name servers are computers that maintain the authoritative list of top level domain names and which contain pointers to other computers containing directories of domains at the second, third and subsequent levels of the hierarchy. +The root name servers are computers that maintain the authoritative list of top level domain names and which contain pointers to other computers containing directories of domains at the second, third and subsequent levels of the hierarchy. The root name servers answer queries from other parts of the DNS but no internet traffic passes through them.  If a name server receives a query for which it does not have any information,​ it forwards the query to a root name server which then answers with a referral to the authoritative servers for the appropriate TLD or with an indication that no such TLD exists.  ​
-The root name servers answer queries from other parts of the DNS but no internet traffic passes through them.   ​If a name server receives a query for which it does not have any information,​ it forwards the query to a root name server which then answers with a referral to the authoritative servers for the appropriate TLD or with an indication that no such TLD exists.  ​+
  
 TLDs can be either generic (gTLD) or country codes (ccTLD). Generally, ccTLDs can only be used by companies that are established in that location or individuals located there. Examples of gTLDs are '​.edu',​ '​.com',​ '​.org'​ and '​.net'​. ccTLDs include '​.au',​ '​.uk'​ and '​.de'​. TLDs can be either generic (gTLD) or country codes (ccTLD). Generally, ccTLDs can only be used by companies that are established in that location or individuals located there. Examples of gTLDs are '​.edu',​ '​.com',​ '​.org'​ and '​.net'​. ccTLDs include '​.au',​ '​.uk'​ and '​.de'​.
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 TLDs can be open, restricted or sponsored. Open TLDS (e.g. '​.com'​ and '​.net'​) can be used by anybody. In contrast, to register a restricted domain name (e.g. '​.edu'​ and '​.gov'​),​ eligibility criteria must be met. Finally, sponsored domain names (e.g. '​.museum',​ '​.jobs'​) are only available to particular stakeholders. An organition who sponsors the domain name is able to set rules about how these domains may be used. TLDs can be open, restricted or sponsored. Open TLDS (e.g. '​.com'​ and '​.net'​) can be used by anybody. In contrast, to register a restricted domain name (e.g. '​.edu'​ and '​.gov'​),​ eligibility criteria must be met. Finally, sponsored domain names (e.g. '​.museum',​ '​.jobs'​) are only available to particular stakeholders. An organition who sponsors the domain name is able to set rules about how these domains may be used.
  
-### Registering ​a domain name in the .au ccTLDs +### Registering ​A Domain Name In The .au ccTLDs
- +
-<WRAP box round 450px right> +
-**Darren Brown explains domain name registration in Australia** +
- ​{{youtube>​w5LSJMFaSsM}} +
-</​WRAP>​+
  
-There are general rules that apply to all open 2LD domain names within the  ​.au namespaceA .au domain name licence may only be allocated to a Registrant who is an “Australian”. Each domain name is required to: consist of from 2 to 63 characters; contain only letters (a – z), numbers (0 – 9), hyphens ( - ) or a combination of these; start and end with a letter or number, not a hypen; not contain a hyphen in the third or fourth positions, eg ab-cd.com.au.+**Darren Brown Explains [Domain Name Registration in Australia](https://​www.youtube.com/​watch?​time_continue=1&​v=w5LSJMFaSsM)**
  
-Eligibility criteria differ among the .au 2LDs. For example, eligibility for .com.au and .net.au domain names is now based on the following indicators:+There are general rules that apply to all open 2LD domain names within the  .au namespace. A .au domain name licence may only be allocated to a Registrant who is an “Australian”. Each domain name is required to: consist of from 2 to 63 characters; contain only letters (a – z), numbers (0 – 9), hyphens ( - ) or a combination of these; start and end with a letter or number, not a hypen; not contain a hyphen in the third or fourth positions, eg ab-cd.com.au. ​Eligibility criteria differ among the .au 2LDs. For example, eligibility for .com.au and .net.au domain names is now based on the following indicators:
  
 * an Australian registered company ​ * an Australian registered company ​
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 * an Australian commercial statutory body  * an Australian commercial statutory body 
  
-**Allocation ​rules**+**Allocation ​Rules**
  
 A Registrant can obtain a domain name in the .com.au, .net.au, .org.au and .asn.au open 2LDs if it: A Registrant can obtain a domain name in the .com.au, .net.au, .org.au and .asn.au open 2LDs if it:
  
-exactly ​matches the name of the Registrant’s company or trading name, organization or association name or trade mark; +Exactly ​matches the name of the Registrant’s company or trading name, organization or association name or trade mark; 
 * Is an or acronym or abbreviation of the Registrant’s company or trading name, organization or association name or trade mark; or * Is an or acronym or abbreviation of the Registrant’s company or trading name, organization or association name or trade mark; or
 * is otherwise closely and substantially connected to the Registrant. * is otherwise closely and substantially connected to the Registrant.
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 **“Close and Substantial Connection”** ​ **“Close and Substantial Connection”** ​
  
-A Registrant may obtain a domain name licence for a name that has a close and substantial connection with the Registrant. This requirement was introduced in 2002. For .com.au and .net.au domain names, a “close and substantial connection” with the Registrant may be established where the name refers to:+A Registrant may obtain a domain name licence for a name that has a close and substantial connection with the Registrant.((See Clause 10 of Guidelines for Accredited Registrars on the Interpretation of Policy Rules for Open 2LDs (2008-06) at http://​www.auda.org.au/​policies/​auda-2008-06/​)) ​This requirement was introduced in 2002. For .com.au and .net.au domain names, a “close and substantial connection” with the Registrant may be established where the name refers to:
  
-* a product that the Registrant manufactures or sells +* a product that the Registrant manufactures or sells; 
-* a service the Registrant provides +* a service the Registrant provides; 
-* an event the Registrant sponsors or organizes +* an event the Registrant sponsors or organizes; 
-* an activity the Registrant facilitates,​ teaches or trains  +* an activity the Registrant facilitates,​ teaches or trains 
-* a venue operated by the Registrant or +* a venue operated by the Registrantor 
-* a profession practised by the Registrant’s employees ​ +* a profession practised by the Registrant’s employees. ​
- +
-See Clause 10 of Guidelines for Accredited Registrars on the Interpretation of Policy Rules for Open 2LDs (2008-06) at http://​www.auda.org.au/​policies/​auda-2008-06/ ​+
  
 ### Care and Control ### Care and Control
  
-The Domain Name System comes under the exclusive control of the Internet Corporation for Assigned Names and Numbers ​or [[https://​en.wikipedia.org/​wiki/​ICANN|ICANN]] They are an American company registered and based in California.  ​They determine ​whether or not your domain can be registered or if the translation to your IP address will be performed.  Thusthey are a '​[[http://​techland.time.com/​2010/​12/​03/​wikileaks-domain-name-killed-and-why-it-wont-kill-wikileaks/​|choke point]]'​ for regulation ​- based on United States law.+The Domain Name System comes under the exclusive control of the Internet Corporation for Assigned Names and Numbers[[https://​en.wikipedia.org/​wiki/​ICANN|ICANN]], which is  an American company registered and based in California.  ​ICANN determines ​whether or not domain can be registeredor if the translation to your IP address will be performed, ​and is a '​[[http://​techland.time.com/​2010/​12/​03/​wikileaks-domain-name-killed-and-why-it-wont-kill-wikileaks/​|choke point]]'​ for regulation. The Australian Domain Administration (AuDA) is authorised by ICANN to administer the '​.au'​ TLD. AuDA has licenced AusRegistry Pty Ltd to operate the '​.au'​ domain name register. There are 34 registrars of open 2LDs in this domain space, with over 3000 resellers of Australian domain names.
  
-In Australia, the Australian Domain Administration (AuDA) is authorised by ICANN to administer the '​.au'​ TLD. AuDA has licenced AusRegistry Pty Ltd to operate the '​.au'​ domain name register. There are 34 registrars of open 2LDs in this domain space, with over 3000 resellers of Australian domain names. 
 ### Registering and Transferring Domain Names ### Registering and Transferring Domain Names
  
-Domain names are registered on a first-come, first-served basis. ​This means that there is no general prohibition on registering domain names if a similar trade mark exists and trade marks owners have no general right to own corresponding domain names. Further, there is no obligation on the Registrar to consider whether the requested domain name infringes the rights of any third party. ​Thus, anybody can apply to register an available domain name by entering a contract with the relevant domain name agency. ​+Domain names are registered on a first-come, first-served basis. ​There is no general prohibition on registering domain names if a similar trade mark exists and trade marks owners have no general right to own corresponding domain names. Further, there is no obligation on the Registrar to consider whether the requested domain name infringes the rights of any third party. ​These factors mean that anybody can apply to register an available domain name by entering a contract with the relevant domain name agency. ​
  
-The registration of a domain name is valid for two years - however, renewal ​of the domain name is available indefinitely. Once a domain name expires, it immediately becomes available to the public. There is no limits on the number of domain names that a person can register. ​+The registration of a domain name is valid for two years, ​with the option of renewal ​in perpetuity. Once a domain name expires, it immediately becomes available to the public. There are no limits on the number of domain names that a person can register. ​
  
-Initially, the transfer of domain names was prohbited, in an attempt to stop people from deliberately registering domain names in order to profit from selling it. However, this restriction was removed in 2002. Nowso long as six months have passed since registration of a domain name, it can be sold and transferred.+Initially, the transfer of domain names was prohbited, in an attempt to stop people from deliberately registering domain names in order to profit from selling it. However, this restriction was removed in 2002. Todaya domain name can be sold and transferred provided that six months have passed since registration of a domain name.  
 + 
 +## Domain Name Disputes 
 + 
 +There is an apparent need for more straightforward,​ inexpensive procedures for resolving disputes between domain name Registrants and third parties about entitlement to register and use domain names. A WIPO report in 1999 entitled //The Management of Internet Names and Addresses: Intellectual Property Issues// ​ recommended the introduction of mandatory and uniform procedures for resolving disputes about names registered in the gTLDs. Acceptance of this recommendation led to development of the Uniform Domain Name Dispute Resolution Policy (UDRP). This policy was approved by ICANN in October 1999 and entered into force on 1 January 2000. 
 + 
 +Following its introduction in 2000, the UDRP rapidly became the international standard for resolving domain name disputes. The UDRP establishes procedures for dealing with disputes between a domain name Registrant and a third party complainant (ie, a party other than the Registrar) in cases where the DN is identical or confusingly similar to the complainant’s trade mark and it is alleged that the domain name has been registered and is being used in bad faith. 
 + 
 +The UDRP applies to disputes in the .com, .org, .net, .biz, .info and .name gTLDs. The UDRP is binding on all ICANN-accredited Registrars for these TLDs, through inclusion of the UDRP in their Registrar Agreements with ICANN. The UDRP is designed to protect existing trade marks by discouraging,​ and resolving disputes about the abusive registration of trade marks as domain names. Where a domain name has been registered in bad faith, it can be cancelled or transferred to the trade mark owner. 
 + 
 +The UDRP acknowledges that other avenues are available for resolution of trade mark-based domain name disputes between a Registrant ​and third party complainant. For example, disputes can be resolved by mutual agreement between the parties, arbitration,​ or proceedings in a court of competent jurisdiction. 
 + 
 +### Types of Disputes 
 + 
 +Disputes over who should have the rights to use a domain name can arise in many different ways, including:​ 
 + 
 +* __Competing Claims__: between trade mark owners with competing claims. So, for example, we might imagine a dispute between Apple Corps (the Beatles'​ record company) and Apple Computer.  
 + 
 +* __Cybersquatting__:​ involves the bad faith, abusive registration and use of the distinctive trade marks of others as domain names, with the intention to profit from the goodwill associated with those trade marks, typically by offering the domain name for sale at a substantial profit (e.g. qant.as (registered in Western Samoa) and westp.ac (Ascension Islands)). 
 + 
 +* __Typosquatting__:​ involves the registration of a deliberate misspelling of a popular domain name in order to divert trade or traffic – micrsoft.com 
 + 
 +* __Criticism Sites__: domain name is registered with the aim of criticising or defaming another person or company 
 + 
 +* __Reverse Domain Name Hijacking__:​ involves a complaint brought in bad faith by a third party against a domain name Registrant, in an attempt to deprive the Registrant of the domain name it has registered 
 + 
 +### Elements of a Dispute 
 + 
 +Under the UDRP and auDRP clause (4)(a), three requirements must be met for a domain name to be cancelled or transferred ​to the trade mark owner: 
 +  * Must be identical or confusingly similar with a trade mark of the complainant;​ 
 +  * The registrant has no right or legitimate interest in the domain name; 
 +  * THe domain name must be registered and used in bad faith. 
 + 
 +**Legitimate Interest** 
 + 
 +Clause 4(c) provides the definition of a legitimate interest: 
 +  * Bona fide offering of goods or services under the name; 
 +  * The registrant has been commonly known by the domain name; or 
 +  * A legitimate, non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. 
 + 
 +**Bad Faith** 
 + 
 +The UDRP and AuDRP also enumerates the circumstances amounting to bad faith in clause 4(b): 
 +  * Domain name registered primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the owner of the trade mark or service mark or their competitor;​ 
 +  * Domain name registered in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name; 
 +  * Domain name registered primarily for the purpose of disrupting business of a competitor; or 
 +  * By using the domain name, the registrant has intentionally attempted to attract, for commercial gain, internet users to the website, by creating a likelihood of confusion with the complainant'​s mark. 
 + 
 +### Domain Name Disputes in Australia  
 + 
 +Administrative dispute resolution procedures based on the UDRP have been adopted by the administrators of many ccTLDs, including the .au ccTLD. The .au Domain Administration (AuDA) board((Current auDRP proceedings are available at http://​www.auda.org.au/​audrp/​current-proceedings/​. Archived proceedings can be accessed at http://​www.auda.org.au/​audrp/​proceedings-archive/​. 
 +)) approved the //Dispute Resolution Working Party Report// (June 2001) recommendations for a dispute resolution policy. It adopted the AuDRP, which is based on the UDRP, and applies to all .au subdomains. The auDRP commenced on 1 August 2002.((http://​www.auda.org.au/​policy/​audrp)) The AuDRP provides for cheaper, faster alternatives to litigation for resolution of disputes between a registrant and another party who claims to have rights to the domain name. Complaints are submitted to any auDA-approved dispute resolution providers and are heard by a panel of either 1 or 3 providers. Providers, each who have their own rules, include: 
 +  * Leading Edge ADR (LEADR) 
 +  * Chartered Institute of Arbitrators (CIArb) 
 +  * Institute of Arbitrators & Mediators Aust (IAMA) 
 +  * WIPO  
 + 
 +### Domain Name Disputes in the United States  
 + 
 +In the United States, the inadequacies of the existing laws in dealing with cybersquatting led Congress to enact the //​Anticybersquatting Consumer Protection Act 1999// ("​ACPA"​) which amended the //US Trademark Act 1946// (the Lanham Act) 
 +ACPA creates civil liability for registration,​ trafficking in or use of a domain name that is identical or confusingly similar to a distinctive trade mark or which dilutes a famous trade mark. It applies to personal names as well as distinctive trade marks and famous trade marks where the registration,​ trafficking in or use of the domain name is done with a bad faith intent to profit from the mark 
 + 
 +The ACPA sets out a non-exhaustive list of factors to be applied in determining,​ on a case-by-case basis, whether a domain name holder is acting in bad faith. Remedies under the ACPA include injunctions,​ forfeiture, cancellation or transfer of the domain name, recovery of profits and actual damages or, at the election of the trade mark owner, statutory damages of $1,000 to $100,000 per domain name. 
 + 
 +### Examples of Domain Name Disputes 
 + 
 +**The "​sucks"​ cases - Wal-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey (Case No. D2000-1104)**  
 + 
 +A domain name was registered as '​wallmartcanadasucks.com'​. It was held that this was free speech, and there was public interest in parodic expression. Therefore, no cyber-squatting occurred. C/f the earlier case of Wal-Mart Stores, Inc. v. Walmartsucks and Walmarket Puerto Rico (Case No. D2000- 0477). 
 + 
 +**Celebrity Names** 
 + 
 +In the case involving the domain name '​brucespringsteen.com',​ the panel stated that “the Internet is an instrument for purveying information,​ comment and opinion… and any attempt to curtail its use should be strongly discouraged” & thus, there is no cybersquatting c/f older cases such as '​celinedion.com'​ and '​juliaroberts.com'​. The law remains unclear in this area. 
 + 
 +**Facebook Inc. v. Callverse Pty Ltd (Case No. DAU2008-0007)** 
 + 
 +The complainant was Facebook Inc and the respondent Callverse Pty ltd (from Australia). The disputed domain name '​facebook.com.au'​ was registered by the respondent with NetRegistry Pty Ltd. Facebook owned numerous trade marks for the FACEBOOK word that were registered in many countries worldwide. It had five registered trade marks for the FACEBOOK word in Australia, two of which were registered prior to commencement of the proceedings. The disputed domain name was first registered by Cocktail King Australia Pty Ltd in 2005 and was transferred to Callverse in October 2007. Callverse was the proprietor of a business in New South Wales called "Face Book"​. 
 + 
 +It was held that registration of a domain name before a complainant acquires trade mark rights in a name does not prevent a finding of identity or confusing similarity, as no specific reference to the date of acquisition is made in the AuDRP. If registration of the disputed domain name predates the acquisition of the trade mark, that fact may be relevant to the assessment of whether or not a respondent has rights or a legitimate interest in the domain name or whether the registration was in bad faith. The trade mark, however, was inherently distinctive,​ and therefore the disputed domain name incorporated a distinctive mark in its entirety and was thus confusingly similar to the trade mark. 
 + 
 +Further, it was held to be highly likely that a significant number of internet users would beleive that the disputed domain name would lead to Facebook'​s website. Cocktail King, who originally registered the domain name, had no connection with Facebook. Callverse never offered any products or services of its own under the name FACEBOOK, there is no evidence that Callverse is commonly known by the name FACEBOOK and there are no White Pages or Yellow Pages listings for Callverse under this name. Since Callverse provided essentially no evidence for its contention that it had established a click to call service or had made considerable financial investment in business, there was no legitimate interest. The registration was in bad faith
  
 ### Domain Names and IP ### Domain Names and IP
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 This causes potential problems, since domain names are an important asset of any business with an internet presence. They may not be intellectual property, but they can be very valuable. A domain name is a contractual right, held under licence from the Registrar. ​ This causes potential problems, since domain names are an important asset of any business with an internet presence. They may not be intellectual property, but they can be very valuable. A domain name is a contractual right, held under licence from the Registrar. ​
  
-<WRAP third right round> 
 In April 2001, a US Federal Court awarded $US65 million to the owners of the domain name sex.com: _Kremen v Cohen_. The defendant fraudulently obtained the domain name by means of a forged letter to the domain name Registrar and had illegally operated the site from 1995 onwards. The award comprised an estimate of the illegal profits earned by the defendant as well as damages incurred by the owners. In April 2001, a US Federal Court awarded $US65 million to the owners of the domain name sex.com: _Kremen v Cohen_. The defendant fraudulently obtained the domain name by means of a forged letter to the domain name Registrar and had illegally operated the site from 1995 onwards. The award comprised an estimate of the illegal profits earned by the defendant as well as damages incurred by the owners.
-</​WRAP>​ 
  
 Domain names are generally not treated as IP but there are exceptions: Domain names are generally not treated as IP but there are exceptions:
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 ## Trade Marks ## Trade Marks
  
-### Introduction +Australian trade marks are usually protected through registration under the Commonwealth ​_Trade ​Marks Act_ 1995 (Cth). It has become increasingly common for businesses to register domain names as trademarks, in order to gain more protection for them. Trade marks ("​TM"​),​ generally speaking, are those ''​signs''​ (traditionally,​ names, words and logos) that businesses use to identify themselves and the goods and services they provide. Because of the vital commercial role that trade marks play, no business enterprise can function without TMs. A TM is a sign used in trade or commerce to indicate source of goods or services, and distinguish them from those of other traders. TMs are extremely important for businesses as they are an essential part of branding of goods and services. TMs can be a very valuable commercial asset (e.g. Coca Cola, Microsoft). ​
- +
-Australian trade marks are usually protected through registration under the Commonwealth ​Trade Marks Act 1995. It has become increasingly common for businesses to register domain names as trademarks, in order to gain more protection for them. +
- +
-Trade marks ("​TM"​),​ generally speaking, are those ''​signs''​ (traditionally,​ names, words and logos) that businesses use to identify themselves and the goods and services they provide. Because of the vital commercial role that trade marks play, no business enterprise can function without TMs. +
- +
-A TM is a sign used in trade or commerce to indicate source of goods or services, and distinguish them from those of other traders. TMs are extremely important for businesses as they are an essential part of branding of goods and services. TMs can be a very valuable commercial asset (e.g. Coca Cola, Microsoft). ​+
  
 In Australia, TMs can be either registered or unregistered (common law); registration is not compulsory for protection of business reputation. However, registration confers considerable advantages, so should be done where possible. In particular, registered trade marks are easier and cheaper to enforce. Obtaining a trade mark registration under the //Trade Marks Act 1995// (Cth) may be seen as taking out a form of insurance. If registered owners of trade marks consider that their TMs have been infringed, they have a comparatively cheap and expeditious way of taking action against the infringer. In many cases, a letter of demand to the infringer providing details of the owner'​s registration will enable the matter to be settled out of court. ​ In Australia, TMs can be either registered or unregistered (common law); registration is not compulsory for protection of business reputation. However, registration confers considerable advantages, so should be done where possible. In particular, registered trade marks are easier and cheaper to enforce. Obtaining a trade mark registration under the //Trade Marks Act 1995// (Cth) may be seen as taking out a form of insurance. If registered owners of trade marks consider that their TMs have been infringed, they have a comparatively cheap and expeditious way of taking action against the infringer. In many cases, a letter of demand to the infringer providing details of the owner'​s registration will enable the matter to be settled out of court. ​
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 The registration of business, company, or domain names does not confer property rights or rights to use the name as a TM. It is a common misconception that a company name or registered business or domain name gives exclusive rights to the name, and that it is not possible for anyone else to adopt a similar name.  The registration of business, company, or domain names does not confer property rights or rights to use the name as a TM. It is a common misconception that a company name or registered business or domain name gives exclusive rights to the name, and that it is not possible for anyone else to adopt a similar name. 
  
-Similarly, company ​names and registered business names are often permitted to co-exist. This is because, unlike the registered TM system, the systems of registering company and business names are not intended to give exclusivity over names. The position in relation to domain names is similar, though the registration procedure will provide additional security. ​+Company ​names and registered business names are often permitted to co-exist. This is because, unlike the registered TM system, the systems of registering company and business names are not intended to give exclusivity over names. The position in relation to domain names is similar, though the registration procedure will provide additional security. It follows that the best way of securing exclusive rights to a company or business name or domain name is through registration of the name as a trade mark
  
-It follows that the best way of securing exclusive rights to a company or business name or domain name is through registration of the name as a trade mark.  +### Trade Mark Infringement
- +
-### Infringement+
  
 A trade mark is infringed under s 120(1) of the //Trade Marks Act 1995// (Cth)by another person'​s use of the name  if: A trade mark is infringed under s 120(1) of the //Trade Marks Act 1995// (Cth)by another person'​s use of the name  if:
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 ## Domain Names and Trade Marks in Australia ## Domain Names and Trade Marks in Australia
-<WRAP box round 280px right> + 
-**Robert Tranent ​explains cybersquatting ​and applicable remedies under the auDRP** +**Robert Tranent ​Explains [Cybersquatting ​and Applicable Remedies Under the auDRP](https://​www.youtube.com/​watch?​v=YHcpQpF2LVc)** 
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 In Australia the mere registration of a domain name does not constitute use (and therefore infringement) of a trade mark. There are no reported Australian cases in which a domain name has been held to have infringed a registered trade mark under s 120 of the Trade Marks Act 1995. It is at least theoretically possible for a .au domain name to infringe a registered trade mark((see CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279)). The Advisory Council on Intellectual Property (ACIP) commented in its 2004 issues paper, //A review of the relationship between trade marks and business names, company names and domain names //  In Australia the mere registration of a domain name does not constitute use (and therefore infringement) of a trade mark. There are no reported Australian cases in which a domain name has been held to have infringed a registered trade mark under s 120 of the Trade Marks Act 1995. It is at least theoretically possible for a .au domain name to infringe a registered trade mark((see CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279)). The Advisory Council on Intellectual Property (ACIP) commented in its 2004 issues paper, //A review of the relationship between trade marks and business names, company names and domain names // 
  
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 The applicants owned the registered TM "BRAND POWER"​. The respondents obtained the domain name '​brandpower.com'​ and developed a website at that address. Heery J did not reach a conclusion, but expressed the view that it was at least arguable that the respondents have infringed the applicant'​s TM and issued an interlocutory injunction restraining the use of the words "BRAND POWER" in the course of trade and the domain name '​brandpower.com'​. The applicants owned the registered TM "BRAND POWER"​. The respondents obtained the domain name '​brandpower.com'​ and developed a website at that address. Heery J did not reach a conclusion, but expressed the view that it was at least arguable that the respondents have infringed the applicant'​s TM and issued an interlocutory injunction restraining the use of the words "BRAND POWER" in the course of trade and the domain name '​brandpower.com'​.
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 ### Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664 (Sports Warehouse) ### Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664 (Sports Warehouse)
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 The court concluded that the use of the domain name '​www.tennis-warehouse.com'​ constituted use of the mark TENNIS WAREHOUSE with additions or alterations that did not substantially affect the identity of the mark. The court concluded that the use of the domain name '​www.tennis-warehouse.com'​ constituted use of the mark TENNIS WAREHOUSE with additions or alterations that did not substantially affect the identity of the mark.
  
-### Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (Mantra) ​ +### Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) ("Mantra"
  
 Mantra was the exclusive on-site letting agent of about a third of the apartments in a residential apartment complex called, CIRCLE ON CAVILL, located at Surfers Paradise. Mantra owned three registered TMs incorporating the words, CIRCLE ON CAVILL, covering various property management and accomodation services. ​ Mantra was the exclusive on-site letting agent of about a third of the apartments in a residential apartment complex called, CIRCLE ON CAVILL, located at Surfers Paradise. Mantra owned three registered TMs incorporating the words, CIRCLE ON CAVILL, covering various property management and accomodation services. ​
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 Tailly was ordered to transfer to Mantra registration of the domain names incorporating the CIRCLE ON CAVILL words. Futher, an injunction was ordered restraining Tailly from using CIRCLE ON CAVILL or similar words as trade marks. Finally, Tailly was ordered to pay Mantra its profits derived from bookings sourced via the infringing websites. Tailly was ordered to transfer to Mantra registration of the domain names incorporating the CIRCLE ON CAVILL words. Futher, an injunction was ordered restraining Tailly from using CIRCLE ON CAVILL or similar words as trade marks. Finally, Tailly was ordered to pay Mantra its profits derived from bookings sourced via the infringing websites.
  
- +### Summary of Case Law 
-### Summary of Points from these Cases+
  
 The mere registration of a domain name does not constitute use of a sign as a trade mark (but may still constitute passing off at common law or misleading or deceptive conduct). 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. Under the Trade Marks Act it is not permissible to use another'​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. The mere registration of a domain name does not constitute use of a sign as a trade mark (but may still constitute passing off at common law or misleading or deceptive conduct). 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. Under the Trade Marks Act it is not permissible to use another'​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.
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 "​www.",​ "​.com"​ or hyphens within a domain name do not substantially affect the identity of the trade mark contained in the domain name.  "​www.",​ "​.com"​ or hyphens within a domain name do not substantially affect the identity of the trade mark contained in the domain name. 
  
-### Australian Consumer Law contraventions and passing off+## Australian Consumer Law contraventions and Passing Off 
 In several decisions, the use of domain names has been held to contravene ss 52 (misleading and deceptive conduct) and/or 53 (misrepresentations of the //Trade Practices Act 1974// (Cth) ("​TPA"​) ​ - now ss 18 and 29 of the Australian Consumer Law (//​Competition and Consumer Act 2010// (Cth) Schedule 2) respectively). In these cases, courts have made orders requiring all necessary steps to be taken to transfer, cancel or de-register the disputed domain name. In several decisions, the use of domain names has been held to contravene ss 52 (misleading and deceptive conduct) and/or 53 (misrepresentations of the //Trade Practices Act 1974// (Cth) ("​TPA"​) ​ - now ss 18 and 29 of the Australian Consumer Law (//​Competition and Consumer Act 2010// (Cth) Schedule 2) respectively). In these cases, courts have made orders requiring all necessary steps to be taken to transfer, cancel or de-register the disputed domain name.
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 * //Macquarie Bank Ltd v Seagle// [2008] FCA 1417 – registrant breached TPA s 52 in registering domain names related to Macquarie Bank  in .com, .net and .us domains * //Macquarie Bank Ltd v Seagle// [2008] FCA 1417 – registrant breached TPA s 52 in registering domain names related to Macquarie Bank  in .com, .net and .us domains
  
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 Prior to 1999, there was no specific dispute resolution mechanism for disputes involving TLDs (2002 for .au 2LDs). Instead, dispute resolution required court action for infringement of a registered trade mark, contravention of the TPA or passing off. Prior to 1999, there was no specific dispute resolution mechanism for disputes involving TLDs (2002 for .au 2LDs). Instead, dispute resolution required court action for infringement of a registered trade mark, contravention of the TPA or passing off.
  
-## Domain Name Disputes 
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-There is an apparent need for more straightforward,​ inexpensive procedures for resolving disputes between domain name Registrants and third parties about entitlement to register and use domain names. A WIPO report in 1999 entitled //The Management of Internet Names and Addresses: Intellectual Property Issues// ​ recommended the introduction of mandatory and uniform procedures for resolving disputes about names registered in the gTLDs. Acceptance of this recommendation led to development of the Uniform Domain Name Dispute Resolution Policy (UDRP). This policy was approved by ICANN in October 19999 and entered into force on 1 January 2000. 
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-Following its introduction in 2000, the UDRP rapidly became the international standard for resolving domain name disputes. The UDRP establishes procedures for dealing with disputes between a domain name Registrant and a third party complainant (ie, a party other than the Registrar) in cases where the DN is identical or confusingly similar to the complainant’s trade mark and it is alleged that the domain name has been registered and is being used in bad faith. 
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-The UDRP applies to disputes in the .com, .org, .net, .biz, .info and .name gTLDs. The UDRP is binding on all ICANN-accredited Registrars for these TLDs, through inclusion of the UDRP in their Registrar Agreements with ICANN. The UDRP is designed to protect existing trade marks by discouraging,​ and resolving disputes about the abusive registration of trade marks as domain names. Where a domain name has been registered in bad faith, it can be cancelled or transferred to the trade mark owner. 
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-The UDRP acknowledges that other avenues are available for resolution of trade mark-based domain name disputes between a Registrant and third party complainant. For example, disputes can be resolved by mutual agreement between the parties, arbitration,​ or proceedings in a court of competent jurisdiction. 
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-### Australian Domain Name Disputes 
-Administrative dispute resolution procedures based on the UDRP have been adopted by the administrators of many ccTLDs, including the .au ccTLD. 
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-The AuDA board approved the //Dispute Resolution Working Party Report// (June 2001) recommendations for a dispute resolution policy. It adopted the AuDRP, which is based on the UDRP, and applies to all .au subdomains. The auDRP commenced on 1 August 2002. There are differences between the two policies - the auDRP can be accessed at http://​www.auda.org.au/​policy/​audrp 
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-The AuDRP provides for cheaper, faster alternatives to litigation for resolution of disputes between a registrant and another party who claims to have rights to the domain name. Complaints are submitted to any auDA-approved dispute resolution providers and are heard by a panel of either 1 or 3 providers. Providers, each who have their own rules, include: 
-  * Leading Edge ADR (LEADR) 
-  * Chartered Institute of Arbitrators (CIArb) 
-  * Institute of Arbitrators & Mediators Aust (IAMA) 
-  * WIPO  
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-Current auDRP proceedings are available at http://​www.auda.org.au/​audrp/​current-proceedings/​. Archived proceedings can be accessed at http://​www.auda.org.au/​audrp/​proceedings-archive/​. 
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-**Melbourne IT Disputes** 
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-Melbourne IT's terms and conditions apply to '​.com.au'​ domain name licences. They can be accessed at http://​www.melbourneit.com.au/​policies/​aupolicy.php. The policy provides: 
-  * 35.The Licensee agrees to be bound by the auDA dispute resolution policy, auDRP (the .au Dispute Resolution Policy) in the event of disputes between Melbourne IT and the Licensee, or between the Licensee and a third party, in relation to a party'​s entitlements to register or maintain a Domain Name registration. ​ 
-  * 36.The Licensee acknowledges that auDA may develop and implement other dispute resolution policies. The Licensee agrees to be bound by such dispute resolution policies where notified to the Licensee by auDA. 
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-### United States Domain Name Disputes 
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-In the United States, the inadequacies of the existing laws in dealing with cybersquatting led Congress to enact the //​Anticybersquatting Consumer Protection Act 1999// ("​ACPA"​) which amended the //US Trademark Act 1946// (the Lanham Act) 
-ACPA creates civil liability for registration,​ trafficking in or use of a domain name that is identical or confusingly similar to a distinctive trade mark or which dilutes a famous trade mark. It applies to personal names as well as distinctive trade marks and famous trade marks where the registration,​ trafficking in or use of the domain name is done with a bad faith intent to profit from the mark 
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-The ACPA sets out a non-exhaustive list of factors to be applied in determining,​ on a case-by-case basis, whether a domain name holder is acting in bad faith. Remedies under the ACPA include injunctions,​ forfeiture, cancellation or transfer of the domain name, recovery of profits and actual damages or, at the election of the trade mark owner, statutory damages of $1,000 to $100,000 per domain name. 
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-### Types of Disputes 
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-Disputes over who should have the rights to use a domain name can arise in many different ways, including: 
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-* __Competing Claims__: between trade mark owners with competing claims. So, for example, we might imagine a dispute between Apple Corps (the Beatles'​ record company) and Apple Computer. ​ 
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-* __Cybersquatting__:​ involves the bad faith, abusive registration and use of the distinctive trade marks of others as domain names, with the intention to profit from the goodwill associated with those trade marks, typically by offering the domain name for sale at a substantial profit (e.g. qant.as (registered in Western Samoa) and westp.ac (Ascension Islands)). 
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-* __Typosquatting__:​ involves the registration of a deliberate misspelling of a popular domain name in order to divert trade or traffic – micrsoft.com 
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-* __Criticism Sites__: domain name is registered with the aim of criticising or defaming another person or company 
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-* __Reverse Domain Name Hijacking__:​ involves a complaint brought in bad faith by a third party against a domain name Registrant, in an attempt to deprive the Registrant of the domain name it has registered 
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-### Elements of a Dispute 
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-Under the UDRP and auDRP clause (4)(a), three requirements must be met for a domain name to be cancelled or transferred to the trade mark owner: 
-  * Must be identical or confusingly similar with a trade mark of the complainant;​ 
-  * The registrant has no right or legitimate interest in the domain name; 
-  * THe domain name must be registered and used in bad faith. 
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-**Legitimate Interest** 
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-Clause 4(c) provides the definition of a legitimate interest: 
-  * Bona fide offering of goods or services under the name; 
-  * The registrant has been commonly known by the domain name; or 
-  * A legitimate, non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. 
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-**Bad Faith** 
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-The UDRP and AuDRP also enumerates the circumstances amounting to bad faith in clause 4(b): 
-  * Domain name registered primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the owner of the trade mark or service mark or their competitor; 
-  * Domain name registered in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name; 
-  * Domain name registered primarily for the purpose of disrupting business of a competitor; or 
-  * By using the domain name, the registrant has intentionally attempted to attract, for commercial gain, internet users to the website, by creating a likelihood of confusion with the complainant'​s mark. 
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-### Examples of Domain Name Disputes 
-**The "​sucks"​ cases - Wal-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey (Case No. D2000-1104)** ​ 
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-A domain name was registered as '​wallmartcanadasucks.com'​. It was held that this was free speech, and there was public interest in parodic expression. Therefore, no cyber-squatting occurred. C/f the earlier case of Wal-Mart Stores, Inc. v. Walmartsucks and Walmarket Puerto Rico (Case No. D2000- 0477). 
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-**Celebrity Names** 
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-In the case involving the domain name '​brucespringsteen.com',​ the panel stated that “the Internet is an instrument for purveying information,​ comment and opinion… and any attempt to curtail its use should be strongly discouraged” & thus, there is no cybersquatting c/f older cases such as '​celinedion.com'​ and '​juliaroberts.com'​. The law remains unclear in this area. 
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-**Facebook Inc. v. Callverse Pty Ltd (Case No. DAU2008-0007)** 
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-The complainant was Facebook Inc and the respondent Callverse Pty ltd (from Australia). The disputed domain name '​facebook.com.au'​ was registered by the respondent with NetRegistry Pty Ltd. Facebook owned numerous trade marks for the FACEBOOK word that were registered in many countries worldwide. It had five registered trade marks for the FACEBOOK word in Australia, two of which were registered prior to commencement of the proceedings. The disputed domain name was first registered by Cocktail King Australia Pty Ltd in 2005 and was transferred to Callverse in October 2007. Callverse was the proprietor of a business in New South Wales called "Face Book". 
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-It was held that registration of a domain name before a complainant acquires trade mark rights in a name does not prevent a finding of identity or confusing similarity, as no specific reference to the date of acquisition is made in the AuDRP. If registration of the disputed domain name predates the acquisition of the trade mark, that fact may be relevant to the assessment of whether or not a respondent has rights or a legitimate interest in the domain name or whether the registration was in bad faith. The trade mark, however, was inherently distinctive,​ and therefore the disputed domain name incorporated a distinctive mark in its entirety and was thus confusingly similar to the trade mark. 
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-Further, it was held to be highly likely that a significant number of internet users would beleive that the disputed domain name would lead to Facebook'​s website. Cocktail King, who originally registered the domain name, had no connection with Facebook. Callverse never offered any products or services of its own under the name FACEBOOK, there is no evidence that Callverse is commonly known by the name FACEBOOK and there are no White Pages or Yellow Pages listings for Callverse under this name. Since Callverse provided essentially no evidence for its contention that it had established a click to call service or had made considerable financial investment in business, there was no legitimate interest. 
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-Finally, the registration was in bad faith. ​ 
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