E-book (Part 1) Someone has registered my.au domain name! What can I do? There are options available but you need to remember that you may not always be entitled to a domain you may deem as rightfully yours. written by Brett Fenton Call 1300 638 734 or visit www.netregistry.com.au
Introduction Understanding trademarks Eligibility & allocation of domains Rights to your.au domain Negotiating ownership Conclusion 3 4 5 5 7 9 Part 1 : Someone has registered my.au domain name! 2
It can be very frustrating to find out that the.au domain name you are trying to register for your business has been taken. When setting up a business in Australia owners usually leave the purchasing of their preferred.au domain name till last and then find out it is not available to register it s the same experience for already established businesses looking to go online. Many of you may feel as though you are the rightful owner of the domain especially if it is your business name that you are trying to register. However, this is not the case if you don t have the proper trademarks in place, and it doesn t matter if you have been trading under that name for years. In this e-book, we touch on the importance of trademarks, which can help in a case if you wish to contest that a domain actually belongs to you, and discuss options for the best way to negotiate a transfer of ownership from the current registrant. Please note that this guide applies to.au domains specifically. However, many of the core principles apply equally to other domain types, such as.com domains. Part 1 : Someone has registered my.au domain name! 3
Understanding trademarks As a certified domain registrar in Australia, Netregistry is regularly confronted with angrily typed emails that goes something like this: Dear Manager, I have been trading as Acme for 5 years. I have found that you are the Registrar for acme.com.au, I have all rights to this name in Australia. I require you to immediately un-register this name and hand it over to me. If you do not do this within 24 hours I shall initiate immediate legal action against your company. Regards, Angry Person Using Acme.com.au as an example sometimes Acme or the domain namecan be a highly specific term but more often than not it s a reasonably generic word or words combined. So should Netregistry immediately un-register the name to avoid pending doom? The most immediate answer is no. As a registrar we only have a limited number of circumstances in which we can effectively delete a.au domain name. Broadly these are either because the Registrant is no longer eligible to hold the domain, for example their ABN/ACN/RBN has been de-registered or expired, or more commonly because auda have undertaken an investigation and have instructed us to cancel the domain license. In a more rare circumstance the domain will have been part of a successful formal dispute process (audrp), and the instruction isn t to cancel the domain, but to transfer the ownership from one party to another. I ll briefly cover the above situations and give you some guidelines so you can consider the options that are available to you if you feel your name has been taken by someone else. Firstly, let us discuss the topic of Trademarks. This will help give you a better understanding on the basis for any rights you may (or more often don t) have. Most business owners believe that because they have registered an ABN called Acme Pty Ltd and have been trading on that name that they have sole and exclusive rights to that word in all its forms. The bottom line is that simply registering a business or company name and trading under it, even for a very long time, will typically confer no rights to that that word or phrase. To actually take ownership of words or a phrase you need to undertake a Trade Mark (TM). Within trademarks there are a number of even more granular distinctions. If Acme is a generic word, similar to say Books, there is very little probability you ll actually be awarded a TM on the word itself. The more generic the term, the less probable it is to gain a TM. You can gain a TM on your logo which contains the word, which then protects you from someone using a similar logo, but it offers no protection on the actual word itself. If your phrase is generally unique, you ll be able to gain a TM on the word(s) themselves, which then provides you with some rights. But You only get rights to the words in specific classes - where classes are broad industry sectors. So as a real example, at Netregistry we have a trademark on our trading name NETREGISTRY which is a combination of two generic words. Visit the website www.ipaustralia.gov.au nd do a search for NETREGISTRY in the ATMOSS TM database. You will see that we have secured the mark in classes 35, 38 and 42; which are marketing, internet/ IT/computers and web hosting related. If you do the search you can see the full details of those classes on the results page. What that means is people can t use the word NETREGISTRY in any of those defined areas. However say someone decided to run a bakery called for some odd reason the Netregistry Bakery. Then that wouldn t be conflicting with the rights we have. As a Registrar we only have a limited number of circumstances in which we can effectively delete an.au domain name. Part 1 : Someone has registered my.au domain name! 4
Eligibility & allocation of domains So now that we re experts in trademarks, we can look at the next relevant piece of background which is the policy for eligibility and allocation of domain names: http://www.auda.org.au/policies/auda-2008-05/ Rights to your.au domain So we ve covered off the background to trademarks and domain eligibility policy. But what happens next? my domain is still registered by someone else!. If you still believe you have the ownership rights to the.au domain there are a options for you to take to get the domain ownership reviewed. There are two parts to this policy. The first is that in the.au domain space there is no hierarchy of rights, and that domains are provided on a first come first served basis. What exactly does this mean? It is very simple, if there are two possible registrants for a domain name, and both meet the requirements of being eligible for a domain, then the first person to register the domain gets it. There is no mechanism that looks at who is more eligible. This is the part of the policy that most businesses don t understand. They feel they have more right to a domain than someone else. So long as that someone else meets eligibility requirements, and they got in first, trying to use policy to subsequently grab the domain is bad - I ll explain this in more detail later. If you are adamant that the registrant of the domain is in fact not eligible to hold the name (keeping in mind the very broad notion of close and substantial ) you can make a formal complaint to auda. What auda will then do is: 1. Send an email to the Registrar asking Netregistry (or the domain registrar) to contact the Registrant and have them explain their connection to the domain. 2. We notify the Registrant and give them 7 days to provide a response. 3. We provide that response to auda and they make a determination as to eligibility The second part of the policy is who is eligible to hold the domain. This is met in two ways. Either it s an exact match or abbreviation of a ABN/ACN/RBN (and the associated provisions for TM s etc) or the registrant is closely and substantially related to the domain. The exact match or abbreviation I hope is obvious so we won t touch on that, but the otherwise closely and substantially related requires a bit of explanation. For example purposes, I ll limit the explanation to.com.au and.net. au which have identical requirements. Close and substantial is very broad, it can cover products or services you offer, a location you trade in, a profession you or your employees are involved in etc. Basically, anything that reasonably associates the domain name with your use of it. As you d guess reasonably is a very very broad concept and open to interpretation. 4. If they find the current Registrant is eligible they notify us and the complainant of that and the domain continues or 5. If they determine the Registrant is ineligible they ask us to policy delete the domain. You should note that policy delete does not mean hand the domain over to you as the new Registrant. This means that the domain will be deleted from the Registry, and subsequently be available for registration by the first eligible applicant. Most complainants think this is simply a matter of waiting for the domain to be deleted and then casually registering the domain at their convenience. But this is not the case. If the domain is even mildly generic in nature, companies like Netfleet (www. netfleet.com.au) use highly complex tehnology and automated systems that register domains within milliseconds after the domains are deleted from the registry, and add them to their daily auction. This is what is known as Drop Catching. Part 1 : Someone has registered my.au domain name! 5
Rights to your.au domain (cont.) So if the domain you want holds any value, you ll find that others who will almost invariably be eligible to register the domain will grab it using a system like this, and at that point you have very little prospect of obtaining the name. I m sure you would agree this is a bad thing! So what other options are available? The next option after a complaint to auda is the.au Dispute Resolution Process, otherwise known as audrp. Like almost everything else in the.au domain space there s a policy for it. You can read the full policy at www.auda.org.au/policies/auda-2010-05/ This process evaluates competing rights to a domain name, but it will cost you $2,000 (whether you win or lose) to undertake that process. That cost is for the process alone. If you want to do it properly and have a lawyer prepare your submission, the cost will increase substantially! So it s something you really need to be serious about and also understand that you will need to prove three very specific things in order to obtain the domain. You can t get 2 out of 3, it s all 3 or you lose. In summary the mediator who evaluates the application looks at the following: 1. The domain is confusingly similar to your name or TM 2. The registration of the domain has been done in Bad Faith 3. The current registrant has no legitimate rights to the name If you d like to spend many fun filled hours reading through previous audrp complaints, then feel free to look over the online listing at www.auda.org.au/audrp/proceedings-archive. What you ll immediately notice is the decisions are about 50/50 split between people winning and obtaining the domain, as well as losing and blowing $2,000+. So if you go down that route, you want to be very sure of your grounds for complaint. Most complainants think this is simply a matter of waiting for the domain to be deleted and then casually registering the domain at their convenience. As the complainant it s up to you to prove all 3 of these points. The Bad Faith part is generally very difficult to prove and really has to be pretty obvious for you to be successful. In an audrp, the big difference is the ruling on the outcome - it doesn t specify a domain be deleted. The outcome is either the current registrant is allowed to retain the name, or the domain is to be transferred to the party who made the complaint. Part 1 : Someone has registered my.au domain name! 6
Negotiating ownership So the final part of this e-book is now that you know the process, pitfalls, costs and requirements - and you still want that domain what s the best way to get it? This is a conversation that I have very regularly, after people sending those letters of demand have calmed down, and a rational conversation begins. The most certain and cost effective way to obtain a domain that has been registered by another party is to reach a mutually agreeable price with the registrant and to buy it from them. People usually talk to me about principle at this time, and how they don t feel this is a reasonable thing. Well we re back at one of the core principles of.au domain policy, and that is the first person to register the domain (who meets eligibility) owns it. So how should you approach someone to buy their domain? The absolutely worst thing you can do at this point is to mail or call the current registrant and say Hey sell me your domain, really cheap, because if you don t I ll do lots of nasty legal things. You might think that s a pretty obvious thing to not do, but in my experience more conversations start this way than less. Dear Mr Jones, I have recently found that you are the owner of the domain name, acme.com.au. I possibly have an interest in using this domain and am wondering whether you would be willing to consider selling the name to me? If you aren t currently using the domain, or you otherwise would like to discuss a possible sale, please let me know by replying to this email in the next week or so. I m looking at a few other variants of the name, or similar names presently and need to make a decision on which to secure reasonably soon. If you would like to sell the name, if you could let me know what range of valuation you place on the domain, and how you have determined that valuation, that would be a good starting point for us to begin a discussion. Regards, Bob Smith Sending an email or letter similar to the above will hopefully help your cause as the first step. After which you will be able to hopefully negotiate a price that both parties are happy with. So first things first. Do your research. Visit a site like www. netfleet.com.au to get a good understanding of the value of domain names. You want to be making an offer that is somewhere in the ballpark of a fair market value. If you go in too low you might find the seller doesn t think you re a genuine buyer and is dismissive. In Part 2: Negotiation for ownership of your.au domain, I ll delve into the techniques that you might want to use during a negotiation process, through to the actual completion of a sale and the best way to transfer the name to yourself. Next you want to understand what the value of the domain is to you, and how much you might be prepared to spend. If it s a great domain and ties into your business and marketing activities, then spending a bit of money on the domain today may well be a good long-term investment for you. At this stage your ready to talk to the owner of the domain. First rule is: Be Nice. That s also the second and third rules. You might not appreciate the fact that they have a domain you feel you have a claim to, however being nice will generally help initiate a useful conversation. Once a conversation opens you can get down to the mechanics of a transaction. Feel free to take the example below and modify to suit, it s a good starting point for you: Part 1 : Someone has registered my.au domain name! 7
So as a quick wrap up. 1) Multiple registrants can be eligible to hold the same domain. 2) If multiple registrants are eligible, it s first come, first served. 3) Even a registered (or pending) Trade Mark, does not guarantee your exclusive right to a domain. 4) Eligibility based complaints and obtaining domain deletions are possible but if it s a good domain, obtaining it after deletion is both risky and possibly expensive. 5) You can assert rights you have over a trade mark using audrp. It is expensive, and you need to prove all 3 assessment criteria to be successful. 6) The fastest, surest and often cheapest way to secure the name you want is to buy it for a reasonable price from the current Registrant. 7) If you do decide to attempt to purchase it, be nice! Part 1 : Someone has registered my.au domain name! 8
Conclusion So there you have it. Should you want to register a domain and to your complete horror you find that someone has already registered the domain, you now hopefully know all the basics to the premise of understanding your rights to ownership. Remember, to check your rights, trademarks and research your options before going on the attack and asking for rightful ownership of a specific domain. Sometimes you will find that you may not have any rights to the domain, even if you have registered the business name. However, there are ways in which you might be able to negotiate ownership of all the legal avenues fail - this is discussed in Part 2: Negotiating Ownership. About Brett Fenton Brett Fenton is currently the Chief Operating Officer at Netregistry. With extensive experience and knowledge gained from over 12 years within the industry, he has been a director of auda and has participated in a large number of industry panels - both public and by invitation - for which he has helped shape policies and changes within the domains industry in Australia. Call 1300 638 734 Part or visit 1 : Someone www.netregistry.com.au has registered my.au domain name! 9