Do you own a trade mark or have a significant business reputation? Has someone registered a domain name that is identical or confusingly similar to yours? You may be entitled to have ownership of that domain name transferred back to you.
The law permits every business to enjoy the commercial benefits of its trade marks and reputation.
The terms of registration of domain names prohibit a domain name being registered in bad faith, such as to divert business and web traffic, or in an attempt to obtain payment for the transfer of a domain name that is legitimately protected by a trade mark.
Holding Redlich has a strong internet and intellectual property practise that can assist you to bring or defend an application pursuant to the uniform domain name dispute resolution (UDRP) policy. This is an inexpensive and efficient way of resolving disputes, no matter where the registrant of the domain name is located.
We have fixed price arrangements for bringing or defending UDRP applications starting at $5,000. Please contact us to arrange your free half hour consultation to discuss whether an application would be appropriate for your circumstances.
What is the UDRP and how does it work?
The uniform domain name dispute resolution policy [UDRP] is an entirely independent and international dispute resolution panel that adjudicates on domain name disputes.
When a domain name is registered, the registrant warrants that it has a legitimate or interest in respect of the domain name and the domain name has been registered in good faith.
The registrant agrees that if the UDRP panel finds that it has breached these warranties, then the domain name will be transferred to a person who has a legitimate interest in the domain name.
Because the UDRP is based on a contractual relationship, there is no need to issue court proceedings or to physically locate the registrant. The entire process is done by email. A complainant will file a single set of written submissions to the UDRP Panel and the respondent will then be invited to do the same. The Panel will then make a decision based solely on the written submissions and will decide to either transfer the domain name or let is stay with the original registrant.
If the parties wish to appeal the UDRP decision, then proceedings must be brought in a court in the appropriate jurisdiction.
Types of businesses and people who may be able to apply for the transfer of a domain name.
Anyone who has a trade mark or “service mark” can bring a UDRP application.
The protection of a trade mark registered with IP Australia is the simplest and most effective way to bring an application. However, a “service mark” includes an established reputation for a particular word or phrase used for commercial gain. This includes:
- Personal names used for business purposes (such as Julia Roberts, Tom Cruise or Jim Carrey)
- Recognisable business names or brands that have not yet been registered with IP Australia (such as “Austrade” or “Galway Walking Club”)
Transfers are ordered both where the domain name is identical to the trade mark or where a cybersquatters has registered a closely related word, such as a misspelt name or variation of the word.
Examples of successful transfers of domain names.
Some of the notable success stories that demonstrate the effectiveness of the UDRP regime include the transfer of the following domain names:
- ipods.com (transferred to Apple)
- godadday.com (transferred to Go Daddy)
- sony-z5.com (transferred to Sony)