Domain name disputes and the onus of truth
Avid readers of this blog might be aware of the au Dispute Resolution Policy (the “auDRP”). The purpose of the auDRP is to provide a cheaper, speedier, alternative to litigation for the resolution of dispute between the registrant of a domain name and a party claiming competing rights in that domain name.
The auDRP is our version of ICANN’s UDRP, applying to .com.au and a few other .au domains. The slight difference from the UDRP is that it is sufficient for a complainant under the auDRP to demonstrate that the domain name was either used OR registered in bad faith, instead of having to make out both of these factors.
Complaints are determined by a panel, there is no appeals process, and panellists are not bound to follow previous panel decisions.
Sure doesn’t sound like a court to us.
Panellist Professor Dan Hunter might tend to agree, following his dissenting opinion in a recent domain name dispute between Hill & Smith Limited v LB International Pty Ltd regarding the domain name “brifen.com.au”.
In this dispute, the complaint was the owner of an Australian registered trade mark set out below, in respect of goods including wires, ropes, cables, fences and barriers:
The respondent was an Australian company engaged in the design and construction of road safety barriers, including wire rope safety barriers. From about 1988, the respondent acted as the Australian licensee or distributor of the complainant, until its licence was terminated in April 2011. The respondent had registered the domain name in 2006, and renewed it in September 2012. In September 2011, the complainant demanded transfer of the domain name from the respondent. At the time the complaint was filed with the World Intellectual Property Organization Arbitration and Mediation Centre in March 2014, the domain name resolved to an inactive webpage which contained links to two other websites advertising wire rope fence.
In order for a complainant to succeed under the auDRP policy, three grounds have to be satisfied:
- the domain name is identical or confusingly similar to a name, trade mark or service mark in which the complainant has rights, and
- the registrant has no rights or legitimate interests in respect of the domain name, and
- the domain name has been registered or subsequently used in bad faith.
The domain name was found by the panel to be confusingly similar to the complainant’s BRIFEN trade mark, and the panel also held that the respondent did not have a legitimate right to the domain name after the termination of the licence (despite the respondent arguing that its interest was founded (among other matters) on its ownership of its registered business name “Brifen Australia”).
In respect of the final ground, the complainant alleged that the respondent’s renewal of the domain name in 2012 (following the termination of the licence) was in bad faith, and further, that the respondent’s passive use of the domain name was in bad faith and damaging to the complainant’s reputation. The majority of the panel agreed, deciding that there was no ‘plausible’ reason why the respondent should have renewed the domain name after its association with the Brifen products had ceased, other than to thwart the complainant’s desire to reflect its trade mark in a domain name.
In contrast, Professor Hunter observed that:
- the respondent traded for years in Australia under the mark and had a registered business name in Australia;
- the respondent had a right to use the mark under the licence agreement until 2011; and
- after the termination of the licence, the complainant acquiesced to the respondent’s use of the domain name for another three years before bringing the domain name dispute.
Professor Hunter observed that all of these facts seemed to be ‘plausible’ (to use the majority’s language) evidence of an absence of bad faith, and more importantly, actually amounted to credible evidence of an absence of bad faith. In Professor Hunter’s opinion, in assessing bad faith, panels should not use the standard of “plausibility” to assess the complainant’s or the respondent’s assertions, where a panel does not have the benefit of sworn evidence and cross examination, and where a party has provided some credible evidence of an absence of bad faith.
To put it another way, the UDRP and similar systems like the auDRP are intended to deal with egregious domain name registrations, rather than cases that tend towards a bona fide dispute between two claimants to the same domain.
The decision highlights that the auDRP applies to cases closer to the line, which will be music to the ears of brand owners.