What is the Complaint Process regarding Trademark/Company ownership claims of a .AU Domain Name

Overview

When it comes to registering .au domain names registrations are provided on first-come, first-served basis to available applicants.

Prior to a policy changes in 2002, a related business name was required to be eligible to register a .com.au or .net.au domain name. Hence, if you wanted to register xyzchemicals.com.au, you had to have a company or business name “XYZ Chemicals Pty Ltd” for example. This is no longer the case. As long as a customer claims to have a substantial connection to a domain, along with valid registrant data, they are eligible to register any domain they wish. XYZ Chemicals can register soapysuds.com.au, if they claim its relevant to their business.

You can read about the eligibity rules for .AU domain names.

What if I own the business/company name for a domain name that is already registered?

If you hold a Registered Business Name/Company similar to this domain name, like for example “Soapy Suds Industries Pty Limited”, you are not automatically entitled to claim ownership of this domain name.

You would only have a legitimate claim to the domain name soapysuds.com.au, if either the current registrant no longer meets the registration licence requirements; notably that they have maintained their ownership of their company/business name and that they continue to have a close and substantial relationship to the domain name. Bad faith registrations will fail this test.

What if I own the trademark?

If the domain name was registered by another organisation before you registered your trademark – and, the domain name was being actively used from before that date, the other organisation will likely to be able to maintain control of the domain license. Unless of course they have failed to maintain their ownership of their company/business name. They also need to maintain a close and substantial relationship to the domain name.

How to raise a compliant

If you feel you have a right to claim ownership of a .AU domain name, you can pursue a number of processes.

Complain to the Registrar of Record

  1. Find out who is the registrar of record for the domain name using a whois service.
  2. Contact the registrar and raise your complaint.
  3. The registrar is obliged to check the eligibility of the current applicant. They must check the registrant data is current and must approach the registrant if there is a possibility the registrant does not have a close and substantial relationship to the domain name.
  4. The registrant is obliged to respond within 14 days to any question asked. If they do not substantiate their rights to own the domain name, the registrar is obliged to cancel the domain name.
  5. The domain name will enter a period called EXPIRY, where the domain name no longer works, however the existing registrant could get the domain name reactivated with the support of the registrar.
  6. After 30 days the domain name will enter a period called PENDINGDELETE. This lasts 5 days and nothing can be done to stop the domain name being cancelled.
  7. When the domain name is cancelled, anyone can register it. It does not pass to you.
  8. To increase the likelihood you secure the domain name, you are advised to subscribe to a specialist service that snaps recently cancelled domain names within microseconds of them coming available. Netfleet is easily the market leader in this field winning at least 95% of all snap activity.

Complain to auDA

  1. You must approach the registrar first, using the process above.
  2. If you are not happy with their response, you can approach auDA.
  3. They will conduct their own investigation and, if they agree with your claim to the domain name they will follow the same cancellation steps above.
  4. If you do not wish to have to snap a domain name, but would rather have the domain licence transferred to you, you can pursue the auDRP process.

auDRP process

  1. Familarise yourself with the auDRP policy, schedule A, 4.a which outline the key requirements to building a successful case.
    (i) the domain name is identical or confusingly similar to a name, trademark or service mark in which you, the Complainant, has rights; and
    (ii) the third party (Respondent) has no rights or legitimate interests in respect of the domain name; and
    (iii) the domain name has been registered or subsequently used in bad faith.
  2. Write a complaint. As the auDRP is a professional process with a substantial attached cost (minimum $2000 for a one member panel) we recommend sourcing a professional to write and submit the complaint to a DRP Provider.
  3. The DRP Provider will review the complaint, if it meets the auDRP policy requirement then it will be forwarded to the Respondent within 3 calendar days.
  4. The Respondent must file a response within 20 days of receiving the complaint. If no response within the time limit the panel will make a ruling based on the complainants information.
  5. The next step of the process is the appointment of a Panel to adjudicate.
  6. The Panel will provide a written decision to the DRP Provider (within 14 days), the DRP Provider will provide the decision to each party and the registrar (within 3 days).

More Information


auDA – Australian Domain Policy and Regulation Authority

For further information about auDA policies, you can contact auDA directly via the below contact details:

Telephone: 1300 732 929
Facsimile: 03 8341 4112
Email: info@auda.org.au
Post: 114 Cardigan Street, Carlton VIC 3053

You can also submit an enquiry online to our Domain Administration Team, who will be happy to assist with any enquiries you may have.

.au Domain Policies

You can view and download .au domain policies via the following link:

http://auda.org.au/policies/current-policies/

.au Dispute Resolution Policy (auDRP)

For further information about the .au Dispute Resolution Policy, please see the below link:

http://auda.org.au/audrp/audrp-overview/

Lodge an Eligibility Complaint for a .au domain registered through TPP Wholesale

To lodge a domain eligibility complaint for a domain registered through TPP Wholesale, please contact our support department.