Reverse hijackers and typosquatters are part of a growing domain name problem for business.
WEBSITE domain names have become an increasingly valuable and potentially risky aspect of business.
In recent times, changes in domain ownership have commanded multi-million dollar price tags. For example business.com sold for $US7.5 million in 1999 and then again, with added directory content and revenue streams, for $US345 million in 2007.
The number and cost of extensive international litigation between opposing parties fighting to secure their relevant dot.com, dot.com.au or dot.co.uk (a selection of website addresses available globally) has continued to grow.
And with Australia’s head of state, Queen Elizabeth II of England, labelled a ‘reverse domain name hijacker’ following an international domain name dispute, and terms such as ‘typosquatter’ and ‘cybersquatter’ becoming common, the legal ramifications can be complex to say the least.
In Perth, a case brought against local businessman Laszloi Till by the Nine Network in October last year, which was dismissed by the nation’s relevant online dispute resolution panel known as the auDRP, highlighted the multifaceted nature of domain name legislation and the assistance that professional advice can provide.
Patent and trademark attorneys Wrays last year appointed domain name and intellectual property lawyer, Jim Davies.
Mr Davies, formerly a UK-based litigator involved in domain names disputes and copyright or trademark infringements, told WA Business News that Mr Till’s company, Baseline Systems, received an auDRP complaint from Nine about the HeyHeyItsSaturday.com.au and HeyHeyItsSaturday.net.au domains, which Baseline Systems had registered and owned (although technically in Australia it’s more of a licensing agreement rather than direct ownership) prior to the program returning to Australian television in April.
Mr Davies highlighted to the auDRP panel that Mr Till had demonstrable preparations to use the domains for a social networking site and that he had a business plan, including several logos.
“The upshot was the panel were unable to find that he (Mr Till) didn’t have legitimate rights, Channel Nine succeeded in showing they had a trademark, so the two other heads were that he had registered and used in bad faith and that he didn’t have legitimate rights,” Mr Davies said.
“We succeeded on the second and third heads showing that it couldn’t be proven that he had registered and used in bad faith ... as he hadn’t done anything like popped a website up with Ozzie Ostrich on it.
“You only need to win on one head as the defendant and we won on both.”
He said seeking advice from a domain name specialist before engaging in a dispute was a good idea considering a well prepared and properly presented case could win or lose the fight.
Mr Davies cited other cases involving local organisations with which he was involved, including a claim brought by the Western Australian Turf Club in March 2007 against a UK-based business that offered hospitality and other services at various British racetracks.
“In the defence, I pointed out that WA Turf Club could not show any trademark rights and so they fell at the first hurdle,” he said.
He suggested the WA Turf Club, following its rebranding, should have made sure it had the appropriate rights before bringing the complaint.
“There are things that appear at first glance to be clear but in fact the other party may have an equally legitimate entitlement and if presented and advised properly it can explain that to a panel,” Mr Davies said.
The Queen became involved when New Zealand tried to acquire newzealand.com, which required bringing a claim in the name of the Queen as she is the head of state.
Mr Davies said the UK’s DRP ruled the country did not have a trademark on its own name.
“The obverse of registering in bad faith is to bring a complaint in bad faith ... then you’re called the ‘reverse domain name hijacker’ under the system, so the Queen was called a ‘reverse domain name highjacker’,” Mr Davies said.
He said Australia’s 1.6 million registered domain names involved relatively few disputes because it was not purely first come, first served.
“The thing is, 95-99 per cent of these cases are blatant ‘cybersquats’, where people are making money off having a typo (in the domain name),” he said.
“‘Typosquatting’ is very popular now. It’s established law you can’t go and register another brand like coles.com.au and then sell it to Coles, and that’s quite right.”
