Arts Law was recently contacted by an artist who was concerned that someone else had registered his name as a domain name. A Melbourne entrepreneur had, in fact, registered not only this artist's name but over 300 Internet domain names corresponding to the names of various Australian artists, including russelldrysdale.com, brettwhiteley.com, rosaliegascoigne.com and johnolsen.com. As an artist your name and reputation are essential to the promotion of you and your artwork, and it is therefore essential that you are aware of the use of domain names and the issue of cybersquatting.
What is 'cybersquatting'?
Cybersquatting is the term used to describe the registration of domain names for 'illegitimate' commercial gains. It can take many forms. A cybersquatter might register domain names similar or identical to well known trade marks or names, such as the names of artists, with the sole intention of selling them to the owners of the trade marks or names. When author, Jeanette Winterson, went to register her name as a domain name she found that someone had already registered her name and the names of over 100 authors. A cybersquatter could also register a company's name as a domain name and then use the site to damage that company's reputation by encouraging unfavourable commentary on its practices or policies. Cybersquatters have also been known to register well-known names as a domain names and then use those names as links to pornographic or politically extreme websites. What is common to each type of cybersquatting is the potential to cause damage to the rightful owner of the name.
How does it work?
A domain name is an Internet address. Each domain name is unique and guides the Internet user to the website located at the domain name address. A domain name consists of a secondary level domain such as 'artslaw' and a top level domain (TLD) such as '.com'. TLDs can be divided into country code TLDs which are unique to the specific countries (such as .au for Australia or .uk for the United Kingdom) and generic TLDs such as .net, .org and .com.
Businesses are eager to obtain a domain name that is easy to identify and reflects their line of business. A rush to register domain names has occurred over the last few years with over 100,000 domains being registered each month. There are therefore financial gains to be made for the cybersquatter if he/she can register a domain name that a business or individual would want for themselves and then auction the rights to the domain name to the highest bidder.
What can you do about it?
If someone has registered your name or the name of your business as a domain name, there are several things you can do about it.
If the domain name in dispute is a generic TLD, such as 'arthurboyd.com', you may be able to file a domain name complaint with the Internet Corporation for Assigned Names and Numbers (ICANN), an international non-profit body responsible for issues relating to the Internet naming system. ICANN has adopted the Uniform Dispute Resolution Policy (UDRP), an arbitration process for resolving domain names disputes. UDRP is available:
- where the registered domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
- where the registrant of the domain name has no rights or legitimate interests in respect of the domain name in question; or
- where the domain name has been registered and is being used in bad faith.
If one of these three situations can be established and the domain name has been registered as .com, .net. or .org, then you can commence arbitration using the UDRP. Use of the UDRP does not preclude you from taking other legal proceedings against the cybersquatter.
If the domain name in dispute is an Australian specific domain name, such as 'arthurboyd.com.au' the UDRP does not apply but there are several alternative remedies available.
The legitimate owner of the name may bring an action for passing off. An action for passing off may be successful where some goodwill or reputation is attached to the name or trade mark and the cybersquatter has used a similar name or mark to deceive the public which has resulted in, or is likely to result in, damage to the legitimate owner's business reputation or goodwill.
There have been several examples of successful litigation in passing off against cybersquatters. In the UK case of Marks & Spencer plc v One in a Million cybersquatters had registered several domain names incorporating the names of various well known companies, such as virgin.com and leedsunited.com. The defendants then tried to sell the names to the companies affected. For example, the name 'burgerking.co.uk' was offered for 25,000 pounds. Even though most of the domain names were merely lying dormant, the court granted an injunction against the cybersquatters.
Qantas was successful in an action against a cybersquatter in Qantas Airways Ltd v The Domain Name Co Ltd, where the cybersquatter had attempted to sell the domain name 'qantas.co.nz' to Qantas for several thousand dollars. Even though the cybersquatter was not actually using the name, the court found that due to the cybersquatter Qantas had been unable to lawfully exploit its goodwill on the Internet.
Misleading and Deceptive Conduct
The legitimate owner of a name could also bring an action against a cybersquatter under Section 52 of the Trade Practices Act1974 (Cth) or the equivalent provision of the relevant Fair Trading Act. This prohibits conduct in trade and commerce that is, or is likely to be, deceptive or misleading. This was successfully relied upon by a Melbourne firm, 'Melbourne IT' against a couple in Queensland who were using the name 'Melbourne-it.com.au' to sell domain names. Section 52 is also being relied upon in the class action that has been brought on behalf of the artists affected by the mass registration of domain names.
Trade Mark Infringement
Where you have registered the name as a trade mark in the relevant jurisdiction, you may be able to bring an action for trade mark infringement against the cybersquatter.
Domain Name Registration
You may seek to actually prevent cybersquatting by registering your trade mark or famous name as a domain name in as many countries as are likely to be used for trade and commerce. If finances permit, registering variations on your name as well, including misspelt versions, could be an effective preventative strategy against cybersquatting.
.au Domain Administration
In December 2000 the .au Domain Administration (auDA) was formally endorsed by the Australian Government as the appropriate entity to manage the .au domain space. The auDA's advisory panel on Naming Policy has a final report due in April 2001 which will include provisions relating to the bad faith registration of domain names, and will also address appropriate avenues of dispute resolution. In the Panel's Second Public Consultation Report handed down in February 2001, the Panel recommended amongst other things, a strict criteria of eligibility for prospective domain name owners. This criteria if it comes into force should help in the prevention of cybersquatting. For further information on auDA check out www.auda.org.au for information on auDA's naming policy.
Philip Clark was an administrative assistant at Arts Law.