auDRP

This page looks at mechanisms for resolving disputes about domain services in the dot-au space, in particular the auDRP that deals with disputes between domain name holders and entities with competing legal rights in the name.

It covers -

• an introduction to the auDRP
• its development
• implementation
• the auDRP service providers
• auDRP rulings

Protection under trade practices and other law is discussed in the following page of this profile.

     introduction

As we have noted in discussing domain name disputes and ICANN's Uniform Dispute Resolution Policy (UDRP), claims to domain names - a de facto address in cyberspace - have become one of the most contested areas of internet governance.

Trademark and other intellectual property (IP) owners have sought to protect or leverage their offline brands and other assets. Theorists have sought to reconcile conflicts between trademark owners or business name owners, with for example a pure 'first come,first served' model or 'first come, first served subject to registration/use in good faith'. Some libertarians have claimed that restrictions are nonsense and the administrators of the net should simply generate new gTLDs to deal with any conflict.

In Australia the initial mechanism for disputes about holding domain name is the .au Dispute Resolution Policy (auDRP). It has been devised by auDA.

It is located within Australian law regarding trademarks, business names and passing off. (Action under the Trade Practices Act and common law is discussed in the following page of this profile.)

It is similar to dispute resolution schemes overseas. It is modelled on the UDRP.

     development

In early 2001 auDA established a Dispute Resolution Working Group (DRWG) to develop a framework for handling disputes in the dot-au domain. That framework was a prerequisite for successful introduction of competition in the provision of domain registration services.

The Group comprised members of the auDA Competition and Names Policy Advisory Panels: Philip Argy of Mallesons Stephen Jaques, Derek Whitehead of Swinburne University of Technology, Patrick Fair of Baker & McKenzie, Ewan Brown of the Small Enterprise Telecommunications Centre, Alan Chalmers of the Australian Communications Authority, Peter Knight of Clayton Utz, David Lieberman of Blake Dawson Waldron and Daniel Rechtman of Melbourne IT.

In contrast to the two Advisory Panels, the Group received little media attention. In May 2001 it released a proposal for establishment of an auDRP - .au Dispute Resolution Policy. It resisted suggestions for a uniquely Australian resolution system, instead proposing that Australia adopt ICANN's Uniform Dispute Resolution Process (UDRP) with minor variations.

The Group called for community feedback about the proposal, which reflected ICANN's Uniform Dispute Resolution Policy and the complementary UDRP Rules. The Process - discussed in our ICANN profile - has gained broad international recognition as more simple, cost-effective and speedy than the tortuous nature of litigation in competing jurisdictions.

The Group envisaged that the auDRP and Rules would be a mandatory feature of registration in the dot-au domain space: applicants for a name would agree to participate in auDRP arbitration. That agreement would not preclude recourse to the courts.

Arbitration would be provided by approved dispute resolution services. Those services might include existing commercial alternative dispute resolution services (ADRS) such the Australian Commercial Disputes Centre and bodies that specialise in the UDRP, notably the World Intellectual Property Organisation's arbitration arm.

The Process would apply to all disputes regarding dot-au domain names, including disputes between:

a. registrants (those who 'own' a dot-au name) and parties with competing legal rights in a domain name
b. registrants and registrars
c. registrars
d. registrars and the registry
e. registries (if auDA's decisions regarding the Competition Policy proposals mean there are multiple registries)
f. any one of the parties listed above and auDA.

Most disputes are likely to relate to category a.

In noting that the UDRP deals with domains that are 'open slather' (eg do not have geographic or other name policy restrictions) the Group proposed minor modifications to reflect local circumstances. Those modifications were dependent on auDA's decisions regarding the proposed Names Policy.

The Group envisaged that auDRP documentation would address particular requirements regarding categories b through f; overall rules would ensure consistent interpretation of 'eligibility' principles in the Names Policy, eg questions of 'good faith'.

In line with federal legislation recognising auDA's role as administrator of the dot-au domain space, the Group expected that auDA would be responsible for administration of the auDRP, including approval of arbitration service providers.

auDA would not serve as an arbitrator (ie policy and implementation would be separate) but would have what the Group characterised as a "facilitative role to encourage consistency of decisions under the auDRP".

In July 2001 auDA's Board released a final report from the Dispute Resolution Working Group.

That report reflected comment on the May discussion paper and recent Name Policy documents. It was originally expected that the auDRP and associated Rules would apply to all disputes regarding domain name policy and service, including disagreement between registrars and registries, or between competing registrars.

The final report concluded that it is impractical to cover all domain disputes within a single policy document. Different types of disputes (for example between registrars) will need separate policy guidelines, to be devised in future. The report accordingly covered only disputes between registrants and parties with competing legal rights in a domain name.

The report was adopted by the auDA Board in August 2001.

As with the UDRP, each proceeding under the auDRP will be administered by a registered panelist of an auDA-approved provider of arbitration services.

Information from auDA's June 2002 workshop for prospective auDRP panellists is here. An introduction is provided in the 2002 Resolving disputes in the .au domain space paper by Rachel Garland & Lucy Davis. There is more detailed coverage in Alistair Payne & Ravi Mohindra's chapter in Domain Name Law & Practice: An International Handbook (Oxford: Oxford Uni Press 2005) edited by Torsten Bettinger, complemented by Mark Bender's 'Domain Name Disputes Involving Trademarks in Australia' in 3(3) Monash Business Review (2007) here and David Lindsay's International Domain Name Law: ICANN and the UDRP (Oxford: Hart 2007).

     implementation

The auDRP came into effect on 1 August 2002 and covers all open .au domain names (ie the com, net, org, asn and id 2LDs) registered or renewed from that date.

Existing domain name licences as at that date are 'grandfathered' - registrants who licensed their domain name before introduction of the auDRP will not have to submit to a proceeding under the auDRP, unless they choose to 'sign on' to the auDRP. Registrants are however required to 'sign on' to the auDRP as part of their domain name licence agreement on renewing the domain name.

     auDRP service providers

Complaints under the auDRP may be submitted to any of the four auDA-approved dispute resolution service providers -

• World Intellectual Property Organisation (WIPO)
• Leading Edge Alternative Dispute Resolvers (LEADR)
• Chartered Institute of Arbitrators Australian Branch (CIArb)
• Institute of Arbitrators & Mediators Australia (IAMA)

Complaints are determined by a single member or three member panel appointed by the provider from its listed panelists. Each provider follows the auDRP Rules, supported by its own supplemental rules.

     rulings

As of August 2005 there has only been a handful of auDRP cases, with resolution by panels from WIPO (15 names), LEADR (23), CIArb (1) and IAMA (2). Three complaints were withdrawn; 7 were pending at that date.

The first ruling (PDF), in January 2003, involved a decision to refuse transfer of adra.com.au. (The original registrant failed to renew the domain registration; the new registrant argued that their registration was completed in good faith.)

The second ruling concerned the 'globalcentre' name, with a WIPO panel ordering transfer of the domain to the plaintiff. In the 'cigarettes.com.au' and 'tobacco.com.au' case the LEADR panel ruled (PDF) in favour of the respondent. The WIPO panel in the 'Discover-tasmania.com.au' case ruled for the respondent against the State government of Tasmania. The panel ruled in favour of PA Consulting in the 'paconsulting.com.au' case.

In disputes about gatekeeper.com.au (PDF), esat.com.au and esat.net.au (PDF) the LEADR panel ruled for the plaintiffs. The gatekeeper case is of particular interest as the dispute pitted the National Office for the Information Economy (responsible for the Commonwealth government's underwhelming Gatekeeper online authentication initiative, discussed here) against the local arm of authentication and registry/registrar giant VeriSign.

In petsmegastore.com.au the WIPO panel ruled in favour of the plaintiff, as did CIArb in the dispute about the singaporeairlines.com.au domain (PDF). The WIPO panel in the abebooks.com.au dispute ruled in favour of the plaintiff. The complaints about independent.com.au (LEADR-auDRP04/03) and launch.com.au (LEADR-auDRP01/04) were withdrawn. A dispute about partymob.com.au was resolved by LEADR in favour of the plaintiff (PDF).

Decisions in the bluechip.com.au (PDF), internet.com.au (here), mgm.com.au (here) and people.com.au (PDF) cases were in favour of the respondent. The people.net.au (PDF), bt.com.au (here), abclearningcentres.com.au (PDF), quiznos.com.au (PDF), overture.com.au (here), swin.com.au (here) and unimelb.com.au (here), carecredit.com.au (here), supre.com.au (PDF), lampeberger.com.au (here), ink-king.net.au (PDF), netratings.com.au (PDF), flowersfast.com.au (PDF), rnbsuperclub.com.au (PDF) and justcarfinance.com.au (PDF) cases resulted in transfer of the name. The LEADR panel in the quiznos case noted that the respondent had offered to sell the name to the complainant only two days after registration.

Panels decided for the respondent in the 13flowers.com.au (PDF) and billingbureau.com.au (PDF) cases. Dispute about premierfire.com.au and net.au (PDF) resulted in cancellation of those names.





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