Last Updated:27 August 2002

1. What is cybersquatting?

Cybersquatting is the act of registering a domain name (without having a legitimate right or interest in it) with the intention of selling it to a person who has a legitimate interest in the name or otherwise profiting from the goodwill attaching to it.

2. How do I protect my commercial name from cybersquatters?

The best way is to register your business or company name and any trading names as a domain name as soon as possible. If you want a .com.au name, before you do this, you will need to have:
*registered your name as a business name, company name or trade mark; or
*lodged an application to register your trade mark.

Given that cybersquatters often register names which are similar (rather than identical) to a name, you may wish to register several variations of your name as a domain name, and to register those variations in several of the more popular subdomains, such as .com and .com.au. There is no limit on the number of domain names that can be held by an entity. However, a separate fee will apply for each registration. For more information on registering domain names, see the Domain Name fact sheet.

3. What are my options when a cybersquatter has already registered my business or company name as a domain name?

Where a cybersquatter has already registered your business or company name, you can seek to have the matter resolved through:
*litigation in the courts;
*the Uniform Dispute Resolution Policy (UDRP) if the relevant name has been registered in a .com, .net or.org subdomain; or
*the auDA Dispute Resolution Policy (auDRP) if the relevant name has been registered in a .com.au, .net.au, .asn.au etc subdomain.

4. Litigation

Actions may be available for:

(a) Trade Mark Infringement

An action can be initiated under s 120 of the Trade Marks Act 1995 (Cth) where:
* the domain name is substantially identical with or deceptively similar to a registered trade mark;
* the cybersquatter uses the domain name as a trade mark; and
* the domain name is used in relation to goods or services from the class in relation to which the trade mark has been registered. (This third requirement does not apply where the trade mark is well-known and its use is likely to be taken as indicating a connection with the trade mark owner).

(b) Passing Off

The common law action of passing off may be available. To be successful, you would need to show that:
* you have goodwill/reputation in the trade name or business name; and
*the domain name has misled, or is likely to mislead, the public, for example, by misrepresenting a connection with your goods or services or your business; and
*that you have suffered, or are likely to suffer, damage by loss of custom or diminished reputation etc.
There is case law to suggest that mere registration or registration and use, of a domain name may amount to passing off. (For more details see the Trademarks, Domain Names and Passing Off facts sheet).

(c) Misleading and Deceptive Conduct under the Trade Practices Act (or similar provisions under the State or Territory Fair Trading Acts)

If a company is using a domain name in the course of business that misleads or deceives the public, or is likely to mislead or deceive, for example by misrepresenting that the business is related to your business, then a breach of section 52 of the Trade Practices Act (Cwth) (or related fair trading legislation) may have occurred. Actions under s52 are commonly brought in conjunction with passing off actions. The two actions are similar, although under the trade practices provision it is not necessary to prove damage has occurred, or is likely to occur.

5. UDRP

The Uniform Dispute Resolution Policy (UDRP) is an administrative dispute resolution procedure which is available where a domain name is registered by one person or company ("the registrant") in the .com, .org, or .net domain name space and another person or company ("the claimant") believes that he, she or it has a legitimate claim to that name.

The remedies under this procedure are:
* cancellation of the domain name registration; or
* transfer of the domain name registration to the claimant.

A claimant under the UDRP must show that:
* the domain name is identical or confusingly similar to a trade mark or service mark in which the claimant has rights; and
* the registrant has no rights or legitimate interest in respect of the domain name; and
* the domain has been registered and is being used in bad faith.

The registrant will be able to prove a legitimate right to a domain name if she/he/it can prove:
* his/her/its use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services, before any notice of the dispute; or
* he/she/it (as an individual, business or other organisation) has been commonly known by the domain name, even if she/he/it has not acquired trade mark or service mark rights; or
* he/she/it is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert customers or tarnish the trade mark in issue.

The claimant must establish that the registration was made in bad faith. Evidence of bad faith includes:
* circumstances indicating that the registrant has registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to another person who is the owner of the trade mark or to a competitor of the claimant; or
* the registrant acquired the domain name in order to prevent the owner of a trade mark or service mark from reflecting the mark in a corresponding domain name, provided the registrant has engaged in a pattern of such conduct; or
* the registrant registered the domain name primarily to disrupt the business of a competitor; or
* the registrant has used the domain name intentionally to attempt to attract, for commercial gain, internet users to the registrant's website.

The policy and procedural rules for the UDRP are available at www.icann.org. Links to accredited dispute resolution service providers are also provided.

6. auDRP

The auDRP applies to domain names registered (or renewed) in an open .au space after 1 August 2002 (unless consented to by the domain name holder). The auDRP is modelled on the UDRP, but is slightly more expansive. The threshold requirements for complainants under the auDRP are the same as those under the UDRP, and the requirements for demonstrating legitimate use are almost identical.

The most significant differences are as follows. The auDRP covers the registration as a domain name of business, company or other names (as well as trade marks and service marks). The requirements for demonstrating bad faith are different in that the target of the registrant’s behaviour can be any person, not necessarily a competitor. Also, the registrant need not have engaged in a "pattern of conduct" of registering domain names to prevent the owner of the name, trade mark or service mark from using it as a domain name ie it could be the first or only time. The complainant need not show that the domain name has been registered AND used in bad faith, but that it has been "registered OR subsequently used in bad faith".

The full policy and procedural rules for the auDRP are available at www.auda.org.au. Links to accredited dispute resolution service providers are also provided. In the case of domain names registered (or renewed) before 1 August 2002, you will need to check whether the registrar with which the domain name was registered offers an alternative dispute resolution procedure.

7. Which procedure is right for my circumstances?

In the .com, .org, .net etc space, the UDRP should be the first port of call. In the .au space, the auDRP should be used. In general, an action under an administrative dispute resolution policy will be less expensive than litigation.

Remedies under an administrative dispute resolution process are limited to the status of the infringing domain name. If you wish to seek damages or an account of profits then litigation may be the preferable option. However, given that cybersquatters often passively hold domain names, it may be difficult in practice to quantify your loss.

A limitation specific to the UDRP is that only trade mark owners (registered or unregistered) may bring complaints under it. In contrast, the auDRP is also available people and companies whose trade mark, service mark or other name (including company, trading, business or personal name) has been registered as a domain name by another party.

Importantly, initiating administrative proceedings under either the auDRP or the UDRP will not prevent either party from initiating litigation at any time.

8. Reverse Domain Name Hijacking

Reverse domain name hijacking means using either the UDRP or auDRP in bad faith, or other means, to attempt to deprive a registered domain name holder of a domain name. Other means in the .au domain include seeking to de-register business or company names upon which a domain name is based. If the Panel deciding the complaint considers that the complaint was brought in bad faith, for example, if the complaint was brought primarily to harass the domain name owner, then the Panel shall declare in its decision that the complaint constitutes an abuse of the administrative proceeding. Neither the auDRP nor the UDRP prescribe any penalties for reverse domain name hijacking.

9. Where can I find out more information?

You can find more detailed information in the Domain Name fact sheet and the Trademarks, Domain Names and Passing Off facts sheet.

Information about initiating an action under the UDRP or auDRP (including applicable fees and procedural rules), is available at www.icann.org and www.auda.org.au respectively, including links to dispute resolution service providers’ websites.


Other relevant Articles on this site:
Trade practices and consumer protection

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

End Notes