Registering a domain name – some important considerations for lawyers

by Leif Gamertsfelder & Joanne Worrad

Domain names are registered on a “first come, first served basis”. Domain names are also unique, while this is not the case with trademarks. Companies with legitimate rights to the same or similar trade marks registered in different classes generally have equal rights to register the mark as a domain name and ultimately the domain name would go to the company that registers first, irrespective of how well-known that mark may be. And the competition for a unique slice of cyberspace is not just between companies; cyber squatters also try to make a dollar by taking advantage of the first come, first served rule. The issues of registration and cyber squatting are discussed below.

Registration of Domain Names – the basics

Domain names are generally separated into two groups, “global” domain names, for example those that end in .com, .net etc, or domain names that end with a “country extension”, for example, .com.au, .org.au etc. The international policy authority for global domain names is the Internet Corporation for Assigned Names and Numbers (ICANN), and information on registration is available on their website – www.icann.org. The Australian policy authority for .au domain names is .au Domain Administration (auDA) and information on registration, as well as guidelines for developing domain names, is available on their website – www.auda.org.au

Accredited registrars conduct domain name registration. The first step in registering a domain name is to check availability. In Australia, this can be done through use of the WHOIS service available as sites such as www.ausregistry.com.au. It is also wise to search trademark databases to ensure that the domain name will not infringe any registered trademark. Once an initial search has been completed, companies or individuals should select an accredited registrar to register the domain name. This is usually completed immediately over the internet. The cost of this service varies between registrars and also depends on which type of domain name is being registered.

If a preferred domain name is unavailable, abbreviations or acronyms could be used, or alternatively, hyphens or numbers could be added to a business name to make it unique for the purpose of domain name registration.

Once you have registered a domain name, you need to ensure it is renewed on time. It is important to keep your company’s contact details up to date to ensure renewal notices are received. This is something that is, surprisingly, frequently overlooked. Expired domain names become available for registration by any eligible company.

Cyber squatting – when is it misleading and deceptive?

Cyber squatting is the practice of obtaining and holding a domain name that reflects the name or trademark of a company, with the intent of selling the name back to that company for a profit. Registration policies in Australia prohibit the practice. While this should remove the legal possibility of selling the name, cybersquatting still exists and companies can be forced to institute legal proceedings to obtain injunctions against cybersquatters, as a means of protecting their business name or trade mark.

The Federal Court case of CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279 (4 April 2003) looked at the issue of cybersquatting, and more specifically at whether registering a domain name solely for the purpose of selling or trading the domain name to another company, which has a business interest in that name, constitutes misleading or deceptive conduct under the Trade Practices Act 1974 (Cth). In that case, Resource Capital Australia (“RCA”) registered the domain names “csr” and “csrsugar” and CSR Ltd objected.

Justice Hill found that the only interest RCA had in registering the domain names was to make money from selling the name to CSR. His Honour also found that the act of obtaining the registration of the domain names was in itself misleading and deceptive conduct because CSR have considerable reputation in the sugar industry and anyone seeing the domain name would assume that CSR was the real owner of the domain name. Injunctions were awarded against RCA restraining it from registering any other domain name where “csr” appears and orders were made for the transfer of the present domain names to CSR. Further, Justice Hill directed that a copy of the judgement be sent to Melbourne IT Ltd, the domain name registrar in this instance, with a suggestion that when dealing with RCA or its directors, Melbourne IT should seek a statutory declaration that RCA is not aware of any trade marks or business names identical or substantially similar to the domain name that is being registered or that RCA does not intend to transfer the domain name to some one else.

While cybersquatters rarely win these sorts of cases, CSR v RCA is an example of the extraordinary lengths that companies may have to go to in order to protect their reputation. Companies should move quickly to register domain names corresponding to their business name and/or trademark to increase the value of their online identity.

Leif Gamertsfelder & Joanne Worrad

Leif Gamertsfelder is a Senior Associate with Deacons and leader of their E-Security Group. Leif specialises in information technology, intellectual property, e-commerce, e-security, outsourcing and privacy issues. Both the High Court of Australia and the Federal Court of Australia have cited Leif’s articles in their judgments. Leif’s aim with this column is to make the often times esoteric nexus between technology and the law accessible to all legal practitioners.

Leif Gamertsfelder may be contacted at leif.gamertsfelder@deacons.com.au


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