Recent Case Notes & Commentary

ELIGIBILITY RULES MAY BE A PROBLEM IN TRYING TO WIN AN AUSTRALIAN DOMAIN NAME

It should never be forgotten that the domain name system on the internet is really two structures. First, there is the prominent big league of .com and .net etc and also the new top level domains like .club or .melbourne and many others. Most domain name disputes are about that range of domain names. But there is a second family, the so-called Country Codes based around the internet in a particular country, like Germany or Australia. Germany has its .de and Australia has its .com.au ( soon to be .au ). Most countries have their own extensions of that sort. But they also have their own rules on other aspects of the internet and domain names.


People in this industry have to make themselves familiar with the rules of the country code with which they are working or they can get into difficulties. It is particularly important if they are trying to acquire a domain name, because local rules may prevent them from owning it. This may not seem consistent with the much-lauded claim of the internet being the great international means of free communication, but there it is. Countries may make their own rules and sometimes do.

The difficulty you can get into was illustrated very clearly in a recent Australian case case of PB Fintech Private Limited v. Wayde Knight, The Trustee for WDK Trust, trading as Knightcorp Insurance Brokers, WIPO Case No. DAU2021-0010. [1]


The Complainant was a big Indian provider of online insurance products in India, wiuth the trade marks POLICYBAZAAR.COM and POLICY BAZAAR and it also used some domain names like <policybazaar.com>. It was minded to start up in Australia and found the disputed domains names <policybazaar.com.au> and <policybazaar.net.au> which were owned by a Australian local insurance broker who did not want to sell them. Accordingly, it brought this complaint under the auDRP, the Australian equivalent of the UDRP but which makes some changes from the UDRP. The domain name resolved to a holding page hosted by the Registrar.


But it got into trouble early in the piece because it was an Indian company and it did not have, for instance, an Australian subsidiary. The problem was that there are quite detailed and unusual rules and regulation on who may own an Australian domain name. Arguments go back and forth as to whether the use of domain names should be restricted in this way, but they can be and they are. Basically, the Australian rules say that only an Australian may own an Australian domain name. This requirement is embodied in the Australian Eligibility Rules. They say that the registrants of all open TLDs must be Australian. Also, the rules for .com.au and .net.au are that the registrant must be an Australian registered company or specified entity, or own an Australian trademark. The complainant did not do business in Australia, own an Australian trademark or otherwise qualify to own either of the two Australian domain names it was seeking through this complaint.


The Panel did not go into detail on the three elements in the Policy, but honed in on the eligibility requirement. It held that the Complaint must fail because the Complainant would be ineligible to own the domain names, not being an Australian company or holding an Australian trademark.


The Panel made only a passing reference to the rest of the claim, noting that “had it been necessary to do so (to consider the grounds relied on by the Complainant), it would appear the Complainant might in any event have had difficulty in fulfilling each of the three requisite elements”. The claim was therefore denied.


It might seem that the Complainant lost on a technicality, but it is a matter of policy that there is an Australian requirement and this decision shows that it is important and that it will be enforced.


Reverse Domain Name Hijacking (RDNH)


But the Complainant’s troubles were not over, as the Panel had then to consider if it would make a finding of RDNH against the Complainant. The majority said it would not find RDNH, because the Complainant did not act unreasonably in bringing the claim and the Complainant “had reasonable grounds for establishing the second limb (as well as the first limb) under paragraph 4(a) of the Policy”. It would have to be noted that this conclusion was reached despite the panel having found that “the Complainant might in any event have had difficulty in fulfilling each of the three requisite elements”.


The minority [2], in a dissent, found for RDNH on the ground that the Complainant must have known or should have known of the eligibility requirement and was warned in the policy document that it would have to prove this requirement. But read the two opinions on RDNH to obtain a sense of how various factors influence panelists when they come to resolve the difficult issue of whether to make a finding of RDNH.


[1] It was a WIPO case because WIPO is one of the two approved providers for disputes about Australian domain names.

[2] The Hon. Neil Brown QC .

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