Updated as at 15/04/2003.

1. Domain Names (1)

A domain name is the human-friendly form of an internet address. It is usually in a form that is easy to remember or to identify (eg. http://www.oznetlaw.net). The actual internet address is a unique string of numbers which underlies the domain name (eg 192.91.247.53). This is referred to as an Internet Protocol (IP) number. These two components make up the domain name system (DNS) and help users of the internet navigate cyberspace.

2. The Domain Name System (DNS)

The DNS is globally administered by the Internet Corporation for Assigned Names and Numbers (ICANN).(2) The DNS operates on the basis of a hierarchy of names. The top level domains are usually divided into two categories:

(a) generic top-level domains (gTLDs); and

(b) country code top-level domains (ccTLDs).

You can find more information on gTLDs at the ICANN web site.

Some gTLDs are open in the sense there is no restriction on the persons or entities that may register names in them. These are:

(a) .com;

(b) .net;

(c) .org; and

(d).info.

The remaining ten gTLDs are restricted and certain criteria must be met by entities or persons wishing to register names in them. They are:

(a) .aero: restricted to use by the air-transport industry;

(b) .biz: restricted to use by businesses;

(c) .coop: restricted to use by cooperatives;

(d) .edu: restricted to use by degree-granting colleges and universities;

(e) .gov: restricted to use by agencies of the federal government of the United States of America;

(f) .int: restricted to use by international organisations;

(g) .mil: restricted to use by the military of the United States of America;

(h) .museum: restricted to use by museums;

(i) .name: restricted to use by individuals; and

(j) .pro; restricted to use by professionals (soon to be available).

There are currently between 240 and 250 ccTLDs. Each of these domains bears a two-letter country code (eg .au (Australia), .br (Brazil), .ca (Canada), .kr (Korea), .za (South Africa)).

According to a report by the World Intellectual Property Organisation (WIPO), there were at least 7.2 million domain names registered worldwide in 1999.

3. Domain Name as Business Identifiers

The intersection of the global, digital and borderless space of the internet with the systems and laws designed for the physical, territorial world has created many legal issues.

The original purpose of domain names was to enable people to remember internet addresses more easily than a string of numbers. However, precisely because of their inherent characteristic of being easy to remember and to identify, domain names have acquired a further significance as business identifiers. As commercial activities have increased on the internet, domain names have become part of the standard communication tool used by businesses to identify themselves, their products and their activities. Advertisements in the media now routinely include a domain name, in addition to other means of identification and communication such as the corporate name, trademark, telephone and fax numbers.(3) Telephone and fax numbers are generally a string of anonymous numbers without any other significance.(4) By contrast, a domain name is easily remembered and identified and often carries an additional significance which is connected with the name or mark of a business or its product or services.

4. Tension Between Domain Names and Other Business Identifiers

As a consequence of the dual function which domain names have come to perform, conflicts have arisen out of interests in domain names and the traditional forms of business identifiers. The main form of traditional identifiers consist of trade marks but also includes other rights of business identification, such as personality rights (whether attaching to real or fictional characters) and place names (eg geographical indication such as Coonawarra, champagne, cognac).(5)

The DNS gives rise to registrations that result in a global presence accessible from anywhere in the world. However, the DNS was never intended to give rise to any proprietary rights in the names which were registered under the system. Initially, there were no formal requirements which had to be met to register a domain name at the open gTLD level. Domain names in the .com.au space were also allocated on a "first come, first served" basis, subject to minimal eligibility requirements. Essentially, the requirement were that the domain names had to be derived from the registrant's company or business name and entitites were restricted to one domain name. (Recent amendments to these requirements are discussed further below.)

By contrast, the intellectual property rights legal system governs the economic rights attaching to intellectual property (eg trade marks). The system is publicly administered on a territorial basis and gives rise to rights that are exercisable only within the territory concerned. The system requires formal requirements to be met before any registration can be made and is based on certain governing legal principles (eg balancing public and private rights).

The DNS encroached upon the territory of the intellectual property legal system in the early days of domain name registration when there were very few formal requirements that needed to be satisfied. This tension was exacerbated by a practice commonly knows as “cybersquatting”. Cybersquatting is the practice of registering as domain names famous or well-known trade marks in the hope of selling those domain names to the owners of those trade marks or other marks, or taking unfair advantage of the reputation attached to those marks.(6) See fact sheet on Trade Marks, Domain Names and Passing Off .

5. Domain Name Registration in Australia

(a) .au Domain Administration (auDA)

auDA is an independent, non-profit Australian company with the responsiblity of formulating and administering policy in relation to the .au name space. auDA is endorsed by the Australian government and recognised by ICANN. (See www.auda.org.au/about for more information.) Prior to October 2001, the .au name space was administered by Mr Robert Elz.

(b) Available categories

A number of subdomain categories in addition to the well-known (.com, .org, .net, .edu and .gov) have been created in .au, the country name space for Australia. The following table lists these subdomains and the eligible applicants. The table distingushes between those domain names which are open to the general public subject to some eligibility requirements and those that are closed in that their availability is restricted to defined communities of interest.

Subdomain / Eligible Entities

Open

(i) .com.au / commercial entities;

(ii) .org.au / miscellaneous organisations;

(iii) .net.au / network infrastructure and providers;

(iv) .asn.au / associations;

(v) .id.au / individuals (This recently opened domain space allows individuals to create a personalised website and email address which will not need to be changed if the individual changes service providers);

(vi) .conf.au / conferences and exhibitions requiring short duration Internet connectivity;

(vii) .info.au / major Australian informational and service resources;

Closed

(i) .edu.au / educational institutions;

(ii) .gov.au / government and semi-government entities;

(iii) .csiro.au / CSIRO;

(iv) .oz.au / entities which are visible within the ACSnet domain; and

(v) telememo.au/gateway to the X.400 email service operated by Telstra Enhanced Services.

Until recently, each subdomain of .au was delegated to a designated authority that was responsible for the administration of the applicable policies. As of 1 July 2002, auDA has assumed responsibility for policy administration for all open subdomains. This Fact Sheet will consider the subdomain .com.au as it is the most popular domain. Further information on other subdomains can be obtained at http://www.aunic.net/policies.html.

(c) Registry and registrar functions for the .com.au space

Until the introduction by auDA of a new competition regime on 1 July 2002, Melbourne IT (formerly trading as Internet Names Worldwide), was the sole registrar (ie processing data for registrants and approved resellers and providing customer service) for the .com.au space. There are now 18 auDA Accredited Registrars, authorised to provide registrar services in all open 2LDs.

Registry functions for the .com.au domain space (maintaining database and providing an information service) which were previously provided by AUNIC, will be provided by AusRegistry for the next four years. AusRegistry will also be responsible for the .id.au, .net.au, .org.au and .asn.au domain space. auDA will seek tenders for the provision of registry services by another body if any new 2TLDs are opened up eg .biz.au.

(d) Requirements for registration

Domain names are licensed (rather than 'sold') to registrants, on the terms and conditions set down by the relevant registrar. (7)

To be eligible for a .com.au domain name licence in Australia, registrants must be:

(i) the owner of or an applicant of an Australian registered trademark;

(ii) an Australian registered company; or

(iii) registered under a registered business name in any Australian State or Territory;

(iv) an Australian partnership or sole trader;

(v) a foreign company licensed to trade in Australia; or

(vi) an association incorporated in an Australian State or Territory; or
(vii) an Australian commercial statutory body.

To be eligible for registration, domain names must be:

(i) an exact match or an acronym or abbreviation of the:

* words comprising the registrant's trademark or application for trademark; or

* the registrant's company, business, trading, association or statutory body name; or

(ii) otherwise closely or substantially connected to the registrant because the domain name refers to:

* a product that the registrant manufactures or sells; or

* a service that the registrant provides; or

* an event that the registrant sponsors; or

* an activity that the registrant facilitates, teaches or trains; or

* a venues that the registrant operates; or

* a profession that the registrant's employees practice.

In addition:

(i) domain names must be at least two characters long, contain only alphanumeric characters and hyphens (but must not contain hyphens in the third and fourth position, eg. ab-cd.com.au); and

(ii) where an abbreviation or accronym is used, the domain name must be derived from the characters contained in the trademark or the commercial entity's name and must follow the original sequence of the characters.

The previous restriction of one domain name per eligible commercial entity has now been lifted.

Note: The registration requirements set out in this fact sheet reflect the requirements set out by auDA in its policy document "Domain Name Eligibility and Allocation Policy Rules for Open Second Level Domains". Additional licence conditions may be imposed by individual registrars.

(e) Non-registrable Names

Australian place names and their common abbreviations are considered to be overly representative and are not licensed for use as .com.au domain names. However, if these place names are combined with other words to form more specific words which are aligned with eligible commercial entities, they would be registrable as domain names. For example, canberra.com.au would not be licensed but mycanberra.com.au may be.

Also excluded from licensed domain names are names which are unacceptable because they are obscene, offensive or contrary to public policy. The administering body has the discretion to decide which names fall into those categories.

(f) Generic Words

Words that represent commercial categories or sectors (that is, deemed 'generic') were previously not licensed. This prohibition has recently been lifted by auDA, with generic domain names initially being licensed via an auction process which concluded on 30 June 2002.

(g) Geographical Names

auDA is currently considering removing the restriction on geographical names.

(h) Licence terms

Subject to the above requirements, .com.au domain names are licensed on a ‘first-come, first-served” basis. If a domain name is already licensed, or if there is an application pending for that name, no further application is accepted for that name until the name is either revoked or the pending application is declined. The licence to use the domain name may be renewed at the end of each licence period, subject to current terms and conditions. The licence fee charged differs amongst the various registrars. (9)

In an obvious policy designed to discourage cybersquatters, the licence to use the .com.au domain name cannot be transferred or sold to another party.

Similar standards, policies and rules for registration requirements are in place for the remaining open subdomains. (See "Domain Name Eligibility and Allocation Policy Rules for Open Second Level Domains").

6. Settling Disputes in the .com, .org, .net Domain Name Space

The Uniform Dispute Resolution Policy (UDRP) is an administrative dispute resolution procedure available to companies or individuals whose trade or service marks have been subjected to abusive registration or "cybersquatting" in the .com, .org, .net domain name space.(10)

A person seeking to register a gTLD domain name must agree to comply with the UDRP. The remedies under this procedure are:

(a) cancellation of the domain name registration;

(b) transfer of the domain name registration to the third party complainant; or

(c) the allocation of the responsibility for payment of the costs of the proceedings.

Specific requirements under the UDRP include showing that:

(a) the domain name registered by the respondent is identical or confusingly similar to a trade or service mark of the complainant; and

(b) use and registration is in bad faith; and

(c) the registered party has no legitimate interest.

7. Settling Disputes in the .au Domain Name Space

Despite the more stringent registration requirements applicable at the .au domain name level, disputes may still arise between cybersquatters and legitimate claim holders or between two parties with legitimate claims to a domain name.

auDA has adopted a modified form of the UDRP as the basis for its new dispute resolution policy (auDRP), which applies to domain names registered (or renewed) from 1 August 2002 onwards. Like the UDRP, the auDRP only applies in relation to "abusive" domain name registrations ie cybersquatting.

Many of the differences between the auDRP and the UDRP, reflect the prerequisites to registration which apply at the .au domain name level but which do not apply at the .com, .net, .org domain name level.

Other major differences include:

(a) The auDRP extends to domain names which are identical or confusingly similar to names as well as to trademarks and service marks. In contrast, the UDRP covers only trade and service marks. (11)

(b) The UDRP requires that the domain name be both registered and used in bad faith. The auDA Dispute Resolution Working Group noted that this requirement has proved problematic in applying the UDRP.(12) As a result, the auDRP provides that the domain name must have been registered or subsequently used in bad faith. (13)

(c) The auDRP provides that registration primarily for the purposes of transferring the domain name to a third party for profit amounts to bad faith.(14) This is in contrast to the corresponding provision of the UDRP which requires an intention to transfer the domain name to the complainant, or one of its competitors, for a profit. (15)

(d) The UDRP provides that a pattern of conduct showing intent to prevent the complainant from reflecting its trademark in a corresponding domain name amounts to bad faith. (16) The auDRP provides that it is sufficient for the complainant to show that the registered the domain name in order to prevent the complainant from registering the domain name.(17)

(e) The UDRP provides that registration of the domain name primarily for the purpose of disrupting the business of a competitor amounts to bad faith.(18) Under the auDRP, the complainant need only show that this was an intention of the respondent.(19)

(f) The auDRP makes it clear that an intentional attempt to direct Internet users to another website not operated by the respondent can amount to bad faith.(20)

(g) The auDRP makes it clear that the respondent is taken to have notice of the dispute from the time that it receives a letter of demand from the complainant, rather than from the time of the formal complaint.(21)

(h) The UDRP requires the respondent to show that the domain name has been used in connection with a bona fide offering of goods and services.(22) The auDRP provides that it is the use of the domain name which must be bona fide, rather than the offering of goods and services. (23)

The auDRP is being implemented via incorporation in registration contracts and therefore does not apply to domain names registered (or renewed) prior to 1 August 2002 (unless consented to by the domain name holder). Disputes concerning domain names registered (or renewed) prior to 1 August 2002 are subject to the voluntary dispute resolution scheme overseen by Melbourne IT. Under this process, the parties must attempt to settle the dispute by negotiation and conciliation, failing which the parties are to agree to have the matter determined by a commercial disputes arbitration centre. However, it is likely that the contractual provisions underlying the scheme are unenforceable due to uncertainty.(24)

The alternative to the above dispute resolution procedures is to commence court proceedings.



Other relevant Fact Sheets:
Trade Marks, Domain Names and Passing Off

Sources of Law
* http://www.auda.org.au/
*http://www.id.au
* http://www.inww.com.au
* http://www.aunic.net
* http://www.wipo2.wipo.int

End Notes
1.This fact sheet is generally based on the information provided by WIPO publication: "The Management of Internet Names and Addresses: Intellectual Property Issues", Report of the WIPO Internet Domain Name Process, 30 April 1999 ("the WIPO Report"). This can be found at http://wipo2.wipo.int. The Report of the Second WIPO Internet Domain Name Process 3 September 2002 is also available now at HREF="http://www.wipo2.wipo.int/process2/">http://www.wipo2.wipo.int/process2/

2. In as much as it can be said to be global. Since the internet was an initiative of the US Department of Defence, these agencies and organisations are essentially American and associated with the federal Government of USA.

3. See the WIPO Report.

4. Of course there are exceptions where the businesses choose a particular phone numbers, eg. numbers with corresponding letters which spell out their name, or certain string of numbers which are easier to memorise, eg. 1234 but in general, the numbers are merely an anonymous string of numbers.

5. A geographical indication is a sign used on goods that have a specific geographical origin and possess qualities or a reputation that are due to that place of origin. Most commonly, a geographical indication consists of the name of the place of origin of the goods. Agricultural products typically have qualities that derive from their place of production and are influenced by specific local factors, such as climate and soil. Whether a sign functions as a geographical indication is a matter of national law and consumer perception. Geographical indications may be used for a wide variety of agricultural products, such as, for example, "Tuscany" for olive oil produced in a specific area of Italy (protected, for example, in Italy by Law No. 169 of February 5, 1992), or "Roquefort" for cheese produced in France (protected, for example, in the European Union under Regulation (EC) No. 2081/92 and in the United States under US Certification Registration Mark No. 571.798). For further information, see http://www.wipo.int/about-ip/en.

6. One of the most notorious cybersquatters was a Canadian, Dennis Toeppen. Toeppen registered as domain names the names of more than 100 famous or well-known company names or product names in the .com domain and sold the names to other companies for up to $US15,000 per name. One registration which did not work for him was panavision.com. He had registered, panavision.com as a domain name showed the aerial view of the town, Pana, Illinois, USA on that website, www.panavision.com. The company, Panavision International L.P sued Toeppen for infringement of trademark and unfair competition, among other things, and won.

7. The terms and conditions of the Melbourne IT domain name licence can be found at http://www.melbourneit.com.au/policies/comauterms.php3.

8. See http://www.melbourneit.com.au/policies/comaupolicy.php3

9.> Links to the registrars are available at http://www.auda.org.au/registrars/

10.> http://www.icann.org/udrp/

13. See http://www.melbourneit.com.au/help.php3?keyword=newpricing. See also http://www.auda.org.au/policy/.

11. Para 4(a)(i) auDRP.

12. See "Proposed .Au Dispute Resolution Policy (auDRP) and Rules Report to the auDa Board" at HREF="http://www.auda.org.au">http://www.auda.org.au

13. Para 4(a)(iii) auDRP.

14. Para 4(b)(i) UDRP.

15. Para 4(b)(i) UDRP.

16. Para 4(b)(ii) auDRP.

17. Para 4(b)(ii) UDRP.

18. Para 4(b)(iii) auDRP.

19. Para 4(b)(iii) UDRP.

20. Para 4(b)(iv) auDRP.

21. Para 4(c)(i) auDRP.

22. Para 4(c)(i) UDRP.

23. Para 4(c)(i) auDRP.

24. Elizabeth Bay Developments v Boral Building Services (1995) 36 NSWLR 709.