Entries categorised as Domain Names:

New study identifies the factors associated with a successful auDRP complaint

Posted On December 12, 2019
In Domain Names / No Comments

A recently-published empirical analysis of auDRP decisions has identified the factors which are associated with a greater likelihood of a complaint succeeding.

Andrew F. Christie, James Gloster and Sarah Goddard analysed the characteristics and the outcome of all 470 decisions that were made in the first 15 years of the auDRP’s operation. They found that there is a statistically significant greater likelihood of a complaint succeeding where:

  • the complaint is based on a trademark rather than on a name
  • the complaint is based on a registered trademark rather than on an unregistered trademark
  • the respondent files a response rather than defaults
  • the case is decided by a 1-member panel rather than by a 3-member panel

The study also found that there is no statistically significant difference in the likelihood of a complaint succeeding by virtue of:

  • when the case was filed – the rate at which complaints succeed has not changed over time
  • with whom the case was filed – the success rate of cases filed with WIPO is not different from that of cases filed with Resolution Institute
  • by whom the case was decided – the rate at which panelists find for the complainant does not differ across the most experienced panelists

The authors of the study conclude that these findings show the auDRP procedure for resolving disputes between trademark owners and domain name registrants, in addition to being fast, cheap and effective, is also fair.

Read a pre-publication version of the study.

Watch a seminar reporting and discussing the findings of the study.

The study is published in: (2019) 30(1) Australian Intellectual Property Journal 4.

 

auDA Policy Review Panel releases draft recommendations

Posted On March 6, 2019
In Domain Names, Governance of Cyberspace / Comments Off

The auDA Policy Review Panel has released a Consultation Paper containing its likely recommendations on implementation of direct registration, reform of the eligibility requirements and allocation rules, and the prohibition on registration for resale or warehousing.

On implementation of direct registration (i.e. registration of <yourname.au>), the Panel recommends:

  • the holder of a domain licence at the third level of .au (e.g. <yourname.com.au>) have priority to register the corresponding domain name at the second level of .au (e.g. <yourname.au>) for a six-month period from the Launch Date
  • where there is a priority conflict at the third level (e.g. both <yourname.com.au> and <yourname.net.au> are registered) at the Cut-off Date, the second level domain name be locked from registration unless and until the conflicting registrants agree on who can register it
  • the Cut-off Date be 4 February 2018 (the date when the Panel began public consultations on implementation of direct registration)
  • certain names – inc. <parliament.au>, <court.au> and <police.au> – be reserved for use as future second level domains

On reform of the eligibility requirements, the Panel recommends:

  • the requirement that a registrant has an Australian presence be retained
  • where an Australian trade mark application or registration is the sole basis for meeting the Australian presence requirement, the applicant/owner be restricted to registering a domain name that is an exact match to their trade mark
  • only trade mark applications or registrations for word marks can satisfy the Australian presence requirement
  • where the Australian presence requirement is satisfied solely by an Australia trade mark application or registration, eligibility automatically ceases if the application lapses or the registration is cancelled or removed from the Register

On reform of the allocation rules, the Panel recommends:

  • the close and substantial connection rule be retained
  • domain monetisation no longer be a basis for satisfying the close and substantial connection rule
  • there be a six months grace period from first registration in which to satisfy the close and substantial connection rule

On the application of the prohibition on registration for resale or warehousing, the Panel recommends:

  • the prohibition be retained and strengthened
  • registrants be prohibited from registering a domain name “primarily” for the purpose of resale or warehousing
  • adoption of a list of factors indicating that a domain name has been registered primarily for resale or warehousing, with the onus shifting to the registrant to demonstrate that the registrant did not register the domain name for purpose of resale or warehousing where the majority of these factors are met

The Panel is due to provide its final report to the auDA Board in the first half of 2019.

auDA canvasses options for implementing direct registration in .au

Posted On October 3, 2017
In Domain Names, Governance of Cyberspace / Comments Off

The regulatory authority for the .au domain space, auDA, has published an Issues Paper seeking stakeholder input on implementation of direct registration.

Background: In late 2015, the auDA Names Policy Panel recommended, by majority, that direct registration (i.e. registration at the 2LD) be permitted in the .au domain space. Despite a strong dissenting report highlighting multiple problems with direct registration, the majority recommendation was adopted by the auDA Board in April 2016. Recently, the auDA Board established a Policy Review Panel to, among other things, recommend a mechanism for implementation of direct registration.

Developments: The Policy Review Panel has now released an Issues Paper canvassing options for a range of matters relating to implementation of direct registration, including: establishing priority registration rights; resolving competing claims; and reserving names. The Issues Paper seeks stakeholder views on the following questions:

  1. What date should be chosen as the cut-off date for determining registrant eligibility for priority registration of the second level domain name, and why?
  2. Should registrants of domain names at the fourth level within edu.au and gov.au be eligible for priority registration? If so, what rules should apply?
  3. What process should be implemented to resolve competing claims to the same .au name and why? Should registrants whose claim is unsuccessful be given priority to register another second level domain name?
  4. How much time should priority registrants have to exercise their right to register the matching second level name before it is made available to the public for registration?
  5. Should certain names be reserved for future use as 2LDs? Please indicate which names and why they should be reserved as future 2LDs?
  6. Are there names whose use is not prohibited at law that should be reserved?
  7. Should names that are potentially confusing or misleading when registered at the second level be reserved (ie not available for registration)?
  8. Should names that are a deliberate misspelling of the existing 2LDs be prohibited from being registered at the second level?
  9. Should direct registration be implemented in .au using a staged process or concurrent reservation and open availability process, and why?
  10. Should other registrants or rights holders be given priority during the landrush or reservation period to register a second level domain name (trademark owners)?

Responses to these questions are sought by Friday 10 November 2017.

 

auDA to undertake comprehensive review of all policies

Posted On October 3, 2017
In Domain Names, Governance of Cyberspace / Comments Off

The Board of the policy authority and industry self-regulatory body for the .au domain space, auDA, has established a Policy Review Panel to advise on what it calls “the most substantial changes to the .au domain name space in 30 years”.

According to the Terms of Reference, the Panel’s role is two-fold:

  1. to recommend a mechanism for implementation of direct registration; and
  2. to review and reform all existing auDA policies (other than the policies on dispute resolution and on education).

The Panel is chaired by John Swinson, partner King & Wood Mallesons.  Other members of the Panel are:

Key Topics to Follow During ICANN 57 in Hyderabad

Posted On November 1, 2016
In Domain Names, Governance of Cyberspace, Trade Marks in Cyberspace / Comments Off

The key issues for consideration at the forthcoming ICANN 57 meeting, according to Mayer Brown, are:

  1. ICANN Accountability Post-IANA Transition
  2. Geographic Names
  3. Domain Name Registration Data
  4. Trademark Rights Protection Mechanism Review
  5. Content Regulation, Mitigating Abuse and Enhancing Trust in the DNS
  6. Subsequent Procedures for Additional New gTLD Applications

US government intends IANA functions transfer to ICANN by 1 October 2016

Posted On August 18, 2016
In Domain Names, Governance of Cyberspace / Comments Off

The United States Commerce Department has confirmed it will hand over oversight of the internet domain name system root zone and other core internet infrastructure registries to the ICANN no later than 1 October 2016.

Six key issues under consideration at ICANN 56

Posted On June 26, 2016
In Domain Names, Governance of Cyberspace, Trade Marks in Cyberspace / Comments Off

Dispute resolution mechanisms, a further round of new gTLD applications, and enhancing accountability are among the key issues to be considered at the 56th meeting of ICANN being held in Helsinki.

A discussion of the following 6 key issues under consideration at ICANN 56 is set out in a Mayer Brown report:

  1. Review of the Trademark Post-Delegation Dispute Resolution Procedure
  2. Development of subsequent new gTLD procedures
  3. Devising a  next-generation gTLD registration directory service to replace WHOIS
  4. Amendments to Registry Agreements
  5. Enhancing ICANN accountability
  6. Proposals for dealing with geographic names

Divided views in US on IANA stewardship transition

Posted On June 6, 2016
In Domain Names, Governance of Cyberspace / Comments Off

Witnesses before the US Senate Committee on Commerce, Science, & Transportation hearing examining the plan for IANA authority were divided on when—and whether—to transition stewardship, reports Mayer Brown.

ICANN sued by unsuccessful new gTLD applicant

Posted On May 9, 2016
In Domain Names / Comments Off

ICANN has been sued by the disgruntled new gTLD applicant DotConnectAfrica, in order to prevent the delegation of .AFRICA to its rival applicant ZA Central Registry, reports Hogan Lovells.

Five key take-aways from ICANN 55 meeting in Marrakesh

Posted On April 26, 2016
In Domain Names, Governance of Cyberspace, Trade Marks in Cyberspace / Comments Off

For a summary of the key outcomes of the 55th meeting of ICANN in Marrakesh, March 2016, see this Mayer Brown report.