The value of a three-letter internet domain name to a business and the potential embarrassment that can arise if someone else owns it has been starkly revealed recently.
The Australian Financial Review reported two of Australia’s largest banks, the Commonwealth Bank of Australia and NAB, have paid millions of dollars to have the three-letter domains, CBA.com and NAB.com, respectively, transferred to them.
In NAB’s case, David Weissenberg, an individual who resides overseas, registered the domain name NAB.com over 20 years ago and used it to host an adult website. Unsurprisingly, NAB was rather embarrassed by the association and has been negotiating the transfer of the domain for a number of years.
While not so scandalous, Commonwealth Bank revealed it purchased the domain, CBA.com, from a broker who had acquired it after a US-based merchant bank, and original registrant, Cheslock, Bakker and Associates, allowed the domain name registration to lapse.
Generally, domains are registered on a first come first serve basis so long as the applicant meets the relevant eligibility criteria. So what rights do business name or trade mark owners have in relation to domains and how are those rights enforced? It depends on the domain name extension.
In order to register a .com.au domain, the applicant must meet the following requirements:
- The applicant is an Australia-registered company, a sole trader or a partnership trading under an Australian registered business name; and
- The applicant is the applicant or owner of an Australian registered trade mark or an incorporated association or a commercial statutory body and the name must either be an exact match or acronym or abbreviation of the applicant’s name or of the words in its application for an Australian registered trade mark or otherwise be closely and substantially connected to the applicant because the domain name refers to its products, services, events, activities, venue or profession.
- Foreign companies can register .com.au domain names if they hold an Australian trade mark registration or application.
A third party may make a complaint in relation to a .com.au domain on the basis that the registrant of the domain does not meet one or both of the aforementioned requirements, or if they believe a domain name has been registered or used in bad faith.
The complainant must submit its complaint to an approved .au Dispute Resolution Policy (auDRP), such as Resolution Institute or the World Intellectual Property Organisation, which determines the outcome based on the evidence provided.
The Uniform Dispute Resolution policy (UDRP) deals with top level domain name disputes, such as .com. In order to establish a UDRP complaint, three requirements must be established:
- the domain name registered by the registrant is identical or confusingly similar to a trade mark in which the complainant has rights; and
- the domain name registrant has no rights or legitimate interests in the domain name; and
- the domain name has been registered in bad faith and is being used in bad faith.
Registering a domain name for the purpose of diverting business and web traffic or in an attempt to obtain payment for the transfer of a domain name legitimately protected by a trade mark is often considered registration and use in bad faith.
In NAB’s case, whilst Weissenberger was hosting a risqué website on the NAB.com domain, he had been the registrant since 1994 so it would have been difficult for NAB to prove Weissenberger had registered the domain in bad faith.
Thus NAB was left to bargain with Weissenberger for transfer of the domain, which resulted in a speculated multi-million dollar settlement. This case highlights the importance of obtaining early registration of primary domain names such as .com.au and .com for important trade marks.
Author - Ali Perry, Lawyer
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