auDRP Overview 2.0 published
auDA has today published the auDRP Overview 2.0, which updates and greatly expands on the initial (2014) publication.
The auDRP Overview 2.0 identifies the consensus views of Panels, drawn from the 600+ decisions since commencement of the auDRP, on more 60 key issues.
auDA applies auDRP to .au direct registrations … and to registrations in all other namespaces
Since 24 March 2022, it has been possible to register domain names at the second level (e.g., example.au) in the .au ccTLD. These registrations are referred to as .au direct registrations.
It was always the intention that the .au ccTLD equivalent of the ICANN UDRP, the .au Dispute Resolution Policy (auDRP), would apply to .au direct registrations. To that end, the regulatory authority of the .au ccTLD, .au Domain Administration Ltd (auDA), has recently amended the auDRP to state, in clause 2.1, that it applies to domain name registrations in “all Namespaces”.
As defined in the amended auDRP, “Namespaces” means the following: .au, nt.edu.au, catholic.edu.au, schools.nsw.edu.au, education.tas.edu.au, tas.edu.au, sa.au, wa.au, nt.au, qld.au, nsw.au, vic.au, tas.au and act.au or as varied from time to time by auDA.
While this change confirms that the auDRP applies to .au direct registrations, it does more. In particular, it applies the auDRP to all namespaces in the .au ccTLD, including those that are reserved for educational institutions and for State and Territory governments. Previously the auDRP only applied to registrations in the open 2LDs – i.e., asn.au, com.au, id.au, net.au and org.au.
Key Topics to Follow During ICANN 57 in Hyderabad
The key issues for consideration at the forthcoming ICANN 57 meeting, according to Mayer Brown, are:
- ICANN Accountability Post-IANA Transition
- Geographic Names
- Domain Name Registration Data
- Trademark Rights Protection Mechanism Review
- Content Regulation, Mitigating Abuse and Enhancing Trust in the DNS
- Subsequent Procedures for Additional New gTLD Applications
Six key issues under consideration at ICANN 56
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:
- Review of the Trademark Post-Delegation Dispute Resolution Procedure
- Development of subsequent new gTLD procedures
- Devising a next-generation gTLD registration directory service to replace WHOIS
- Amendments to Registry Agreements
- Enhancing ICANN accountability
- Proposals for dealing with geographic names
Australian court finds non-infringing the use of competitor’s trade mark for AdWords
The Federal Court of Australia has held that it is not an infringement of a competitor’s registered trade mark: (i) to use the trade mark as a keyword for triggering a Google AdWords sponsored link, or (ii) to use the trade mark in the text of the sponsored link in its descriptive sense.
In Veda Avantage v Malouf Group, the court decided that it was not trade mark infringement to use the trade mark as a keyword because that was not a “trade mark use” – i.e. it was not a use of the trade mark to distinguish the advertiser’s services from those of others. Rather, it was a use to identify Internet users who may have an interest in using its services.
The finding that there was no trade mark use was supported by the fact that the advertiser’s use of the trade mark as a keyword was “invisible” to consumers. It was not possible to conclude that the advertiser’s use was a trade mark use when consumers “have not seen or otherwise perceived the keywords”.
The judge distinguished the decision of the Court of Justice of the EU in Google France on the basis that that case had not considered whether the purpose for which the keyword was used was to distinguish goods or services of one person from those of another.
The court also found that, with one exception, use of the trade mark in the resulting sponsored links was not trade mark use. Rather, the use of the trade mark was descriptive.
Five key take-aways from ICANN 55 meeting in Marrakesh
For a summary of the key outcomes of the 55th meeting of ICANN in Marrakesh, March 2016, see this Mayer Brown report.
We’re not the Internet content police, says ICANN
ICANN has declared it is not, and cannot be, a content regulator.
In a recent blog post, ICANN’s Chief Contract Compliance Officer, Allen R. Grogan, states ICANN “was never granted, nor was it ever intended that ICANN be granted, the authority to act as a regulator of Internet content”.
Accordingly, despite calls for it to do so, ICANN will not use the 2013 Registry Accreditation Agreement to require a registrar to determine whether a website is engaged in illegal activity, to demand that a website operator or registered domain name owner cease illegal activity, or to suspend a domain name if a website operator or registered domain name owner does not cease illegal activity.
.sucks extends sunrise registration period
The registry for the .sucks TLD has extended its controversial sunrise registration period by three weeks.
The registry claims the move is due to the fact that “far too many intellectual property lawyers, company executives and brand owners were unaware of the registry”.
Critics claim the move is “possible overreaching … for the purpose of taking additional profits from the registration of this already high priced gTLD”.
Registration of a .sucks domain name costs USD2,500 with annual renewal at the same rate.
As previously discussed, ICANN has requested the US Federal Trade Commission (FTC) to investigate whether the registry running the .sucks domain is acting illegally.
Domain name registrars on US list of “notorious markets” for IP infringement
The US Trade Representative (USTR) has, for the first time, included domain name registrars in its list of “Notorious Markets” for online trademark counterfeiting.
The Notorious Markets list identifies markets that, due to the scale of infringing activity, cause economic harm to US IP rights holders.
The most recent list includes domain name registrars, including Tucows.com, that are said to refuse requests to lock or suspend domain names that are being used to sell suspected counterfeit pharmaceuticals to consumers worldwide.
UK court extends ISP site blocking remedy to online trademark infringement
The UK High Court has held that trademark holders may be granted site-blocking injunctions against ISPs, despite the absence of an express provision to that effect in the legislation.
Site-blocking injunctions pursuant to s97A CDPA are now well established in relation to online copyright infringement. The judgment in Cartier International and Others vs BSkyB and others could pave the way for a similar regime in respect of online trade mark infringement, reports Bird & Bird.
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