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Australian domain name disputes update

Australian cricket captain Ricky Ponting has lodged an application (set for hearing in the Federal Court on 8 February 2008) claiming misleading and deceptive conduct against the operator of a website which described itself as "the official Ricky Ponting site": Ricky Thomas Ponting v Kevin Leonard Consulting Pty Limited (ACN 087 382 858) & Anor (also see Computerworld story)

It is not clear why Ricky Ponting has chosen litigation rather than the domain name disputes resolution procedure administered by .auDA.

According to this data from the World Intellectual Property Organization 2007 was a record year for domain name disputes. Disputes are dealt with under ICANN's Uniform Domain Name Dispute Resolution Policy (?UDRP?)

The auDRP is an adaptation of the Uniform Dispute Resolution Policy (UDRP) administered by ICANN with respect to the generic top level domains such as .com.

auDA can compel dispute resolution where:

(i) a domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights; and
(ii) the domain name owner 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.

The complainant has the burden of proof.

The Australian 2007 decisions made by WIPO include decisions to transfer the domain name to the complainant as well as cancellation of the name.

The WIPO Domain Name Dispute Resolution Service has resources and past decisions.

In the UK recently Maestro (a subsidiary of Mastercard) failed in its attempt to stop another organisation using maestro.co.uk.

The appeal panel ruled that it did not prove the case that the registration was abusive, and that because maestro is a normal word with a dictionary definition it could not monopolise its use in domain names just because it also happened to be one of its brands.

auDA's policy states that it accepts that a complainant has rights in the complainant's personal name.

Full post as published by Australian Regulatory Compliance Review on January 15, 2008 (boomark / email).