auDA have replied to the RottnestIsland.com.au complaint made by RIA (Rottnest Island Authority) and their lawyer Iain Freeman from Lavan and have denied the complaint to delete the domain name and acknowledge it is a “geographic locale” that may be used by a “range of entities”.
Most notably, Steph Viljoen (auDA Compliance Manager) stated:
“The initial finding where based on the complainant having trademarks…”
[for Rottnest Island logos and images found at IP Australia]
“The decision was based on:
On a breach of Schedule C, 3b (for com.au) and Schedule D, 3b (for net.au) of the Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (https://www.auda.org.au/policies/index-of-published-policies/2012/2012-04/) which both state that a domain name which is, or incorporates, an entity name, personal name or brand name in existence at the time of the registration cannot be monetised.
Upon internal review, it was found that the trademarks (as mentioned above) were not an exact match for the domain name rottnestisland.com.au
The auDA Compliance Manager goes on to state:
“The domain monetisation test under paragraphs 11.3 and 11.4 of the Guidelines on the Interpretation of Policy Rules for the Open 2LDs (2012-05) states that the registrant must satisfy both limbs of the domain monetisation test:
(1) the content of the website to which the domain name resolves must be related specifically and predominantly to subject matter denoted by the domain name; and
(2) the domain name must not be, or incorporate, an entity name, personal name or brand name in existence at the time the domain name was registered.
In determining whether a registrant breaches the second limb, auDA will take into consideration whether the domain name is a generic word or may have an alternative meaning which is not related to a specific entity, person or brand.
The domain rottnestisland.com.au contains website content and links that relate specifically and predominantly to the subject matter of the domain name Rottnest Island. It satisfies the first limb.
In relation to the second limb, there is no evidence that the domain name incorporates or encompasses an entity name, personal name or brand name in existence at the time. The current trademarks are not an exact match and the name is a geographic locale in Australia, which may be used by a range of entities operating out of or providing services to the Island or information about the Island. It therefore has an alternative meaning which is not related to a specific entity, brand or person. The registrant satisfies limb 2.
Taking this into account I am setting aside the initial finding and denying the complaint.“
Let it be a lesson to all wishful thinking end users. Unless your name is distinctive / an invented word (eg. ‘Google’, ‘Winc’) don’t think you have any greater right to the matching domain name than anybody else.
There is no hierarchy of rights to .com.au domain names. First in, first served.
The lawyer, who claims to specialise in IP law, now has to explain the boo-boo to his client and talk them into paying 6 figures for the domain if they really want it, because they don’t have any hope of getting it for less that’s for sure.
PS. Rob, I think you should share this article on Facebook that way all boomers can get the memo
Congratulations
Congrats Rob.👍😎
Great outcome for yourself and all domain investors who have wannabe domain thieves trying to take what does not belong to them.
Pay up, or shut up!
I wonder how many domains end up deleted because of hasty/wrong decisions by auDA staff. A lot of people wouldn’t have the knowledge or resources to fight it.
Reminds me of the Boardman days where every auDA decision subsequently appealed to the review panel was overturned.
What a fail