On December 11th, 2018, a client of Registry Australia informed me that he’d received an auDRP Complaint from CSC GLOBAL, stating that Australian Rugby Union Limited (Rugby Australia) wanted to hijack his domain name, Wallabies.com.au(,) FOR FREE.
My client wasn’t worried, especially since he’d owned the domain name for over 12 years and had never used the generic domain name in bad faith against any trademark whatsoever.
Still, it’s a lot of work defending an auDRP and can be quite expensive for both parties, both the Complainant and the Respondent.
But in this case, I met with my team at Registry Australia and we felt we had to help our client keep his domain name at all costs.
Once we’d decided to defend the domain, over the coming hours, I felt myself becoming quite annoyed at the nerve of these people. Imagine a large corporation like this thinking they can just bully anyone they want into handing over an asset for free?
Domain names are digital assets. Hence, if you want one that’s taken YOU HAVE TO PAY FOR IT. Why aren’t CSC Global explaining this to clients who are insisting on making fruitless auDRP and UDRP complaints against domain names that are legitimately owned?
auDA rules clearly stipulate, “There is no hierarchy of rights in the DNS. For example, a registered trademark does not confer any better entitlement to a domain name than a registered company or business name.”
How hard would it have been for CSC Global to have shown this statement to their client? Perhaps CSC Global are making too much money out of submitting fruitless complaints?
Regardless, Rugby Australia Ltd must have felt like they were somehow special. They must have figured they deserved the domain name over and above the hard working businessman who’d purchased it fair and square, 12 years ago. They somehow believed they deserved it over and above the other 58 companies in Australia who also have the generic-word “Wallabies” as part of their name.
Due to the fact that I thought CSC Global may not have clearly indicated to their clients the reality of the situation, I felt the need to personally reach out to Rugby Australia Ltd management staff myself.
I found Raelene Castle (CEO Rugby Australia), and a number of her staff in Linked In and I sent them the following message, on the same day that my client, and Registry Australia received the initial complaint (Dec 11 2018);
Hi Raelene,
I’m not sure if you’re aware of this, but Australian Rugby Union Limited are attempting to bully the current owner of the generic domain name Wallabies.com.au and steal it from him. He has owned it since 2006. CSC Global have filed an auDRP Complaint in an attempt to steal this domain name. They won’t win, and we at Domainer.com.au are going very public with this attempted digital asset theft.
If you don’t know about this situation, can you please look into it before things escalate much further.
Best, Robert
That’s right.
I thought I’d give Raelene the benefit of the doubt. Perhaps she was super-busy and had no idea this was going on?
Perhaps she still doesn’t know this happened?
I’m not sure, but I’ll be sure to post her a follow-up link to this article on Linked In again, once I’ve finished writing it.
Anyway, I heard no response from anyone at Rugby Australia, so the only thing left to do was to write up an 18-page defence for my client.
At this point, I’d like to say, THANKS VERY MUCH RUGBY AUSTRALIA, I spent every day of my Christmas Holidays from December 27th until New Years Eve 2018 writing this defence.
It would even be easy for Blind Freddy to work out that the timing of this complaint had been orchestrated so that it would be hard to find an auDRP Defence Lawyer during this busy holiday period.
Turns out they were right. But also turns out I can now write auDRP Defence Papers on behalf of all future Registry Australia clients. (But extra special thanks have to go out to my Domain Industry colleagues Erhan and Sean for the important initial help!)
I may have missed my 2018 Christmas Holidays. But gee, was it worth the final result! (I’m going to keep you hanging a little longer…)
To rub salt in the wound though, once we had submitted our defence, those sneaky CSC Global folk decided they were entitled to submit an EXTRA 8-PAGE SUPPLEMENTAL FILING, to further defend against our defence?!
We objected to their sneaky second Supplemental Filing, and the auDRP Panel decided to “decline to accept the Complainants Supplemental Filing“.
This is something to watch out for though, in auDRP Complaints. There seems to be some sort of “grey area” in regards to whether Complainants can keep “adding” to their complaint as the days draw near to the final submission date. Surely this is a “grey area” that needs to be closed up by WIPO?
Some of the best lines that came out of this auDRP Decision go like this:
“The Complainant asks the Panel to take note of the dates of registration of its own domain names and, indeed, the Panel takes note that the Complainant did not register a domain name incorporating its WALLABIES trademark until 2012, six years after the Respondent registered the disputed domain name.”
And then there was this:
“The mere combination of “wallabies” and Australia’s ccTLD suffix “.au” does not mislead the public to associate the Respondent’s website with the Complainant, rather, it may reflect the fact that wallabies are native Australian animals, which is doubtless a reason why that word was chosen as a nickname for an Australian team.”
And then there’s this great finding by the honorary auDRP Panelists:
“the disputed domain name consists of a single dictionary word and a 2LD suffix. It is not even an unusual word or combination of words. There is no evidence on the record that the disputed domain name is being used in connection with its trademark meaning.”
And finally, I’ll leave you with this final decision snippet:
“The Panel considers that the Complainant was careless in the preparation of its case”
Large Corporations in Australia should be put on notice.
Generic Domain Names are digital assets and are worth a lot of money. We’re not talking about trademark-infringing or cybersquatting pests here, we’re talking about legitimate domain investors and entrepreneurs owning valuable generic domain names that they have initially purchased for future development reasons.
And if you want an amazing generic-word domain name to make your brand look 10 times better on the internet, and someone else is using it, then you have to be prepared to pay that sort of money to acquire it.
Extra special thanks go out to the fair and just decision and work put in by WIPO Panelists: The Hon. Neil Brown Q.C.(,) Matthew Kennedy and Sebastian M. W. Hughes.
You can read the full decision and more at the following locations:
Well done. Justice prevails at last.
Arguably, there have been some poor recent auDRP decisions in the .au space (invariably single panelists), but this decision shows that it is possible to defend valuable domain names from private and corporate pillagers.
One lesson to take from this is the importance of investing in a 3 member Panel.
Absolutely Matilda!
Love the “Corporate Pillagers” reference. There’s no reason for a corporation to be jealous that their dream domain name is taken and go down the “bully” path.. All they have to do is “communicate” and pay the appropriate and reasonable “current market value” for the domain name.
And, yes, the 3-member panel is a must to ensure the Panelists are able to reach a fair decision. I learned a lot from Erhan Karabardak on this episode of the Domainer Show – https://assets.com.au/domainer-show-episode-2/
Please name and shame the lawyers who backed this frivolous and vexatious complaint
They either didn’t know their stuff or took their client’s money and chose to back a losing complaint
#FAIL
What is Reverse Domain Name Hijacking?
Reverse Domain Name Hijacking is when a person or entity tries to steal a domain name from the rightful and legal owner by claiming Trademark Infringement and/or Bad Faith among other fabrications in order to get a governing panel to award them the domain name. In lay terms, they are folks too cheap to pay the owner and so they abuse the process and try to steal or hijack the domain name.
https://www.coopermills.com.au/reverse-domain-name-hijacking/
What is Reverse Domain Name Hijacking ?
The term Reverse Domain Name Hijacking or RDNH is becoming more prevalent as the cost and availability of valuable domain names makes them less attainable.
Reverse Domain Name Hijacking (‘RDNH’) is defined by the auDRP as meaning “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”. This often takes place where the Complainant has been unable or unwilling to negotiate the purchase of a domain name from the registrant holding it. Some in the industry refer to RNDH as the process to ‘steal rather than pay’ for a domain name.
We are seeing more cases of RDNH or attempted-RDNH. The most telling evidence of this is that of the five RDNH findings that have been made since 2010. All five have been made in the past three years; with three of those being made in 2015. This lends weight to the fact that there is a trend of bad faith auDRP proceedings increasing.
REFORM OF THE AUDRP
As the incidence of RNDH is more frequent, we should consider that there is a justifiable basis for the auDRP to be amended to provide for some form of ‘penalty’ or consequence, where a Complainant uses the administrative process in bad faith.
This is something that has been adopted in Canada. Canada’s equivalent of the auDRP is the CIRA Domain Name Dispute Resolution Policy (‘CDRP’). Like the auDRP, the CDRP is largely based on the UDRP which provided the genesis of many administrative dispute processes around the world.
Of particular note in clause 4.6 of the CDRP is the following:
4.6 Bad Faith of Complainant. If the Registrant is successful, and the Registrant proves, on a balance of probabilities, that the Complaint was commenced by the Complainant for the purpose of attempting, unfairly and without colour of right, to cancel or obtain a transfer of any Registration which is the subject of the Proceeding, then the Panel may order the Complainant to pay to the Provider in trust for the Registrant an amount of up to five thousand dollars ($5000) to defray the costs incurred by the Registrant in preparing for, and filing material in the Proceeding. The Complainant will be ineligible to file another Complaint in respect of any Registration with any Provider until the amount owing is paid in full to the Provider.
The effect of this clause is that there are costs consequences for Complainants who use the CDRP in bad faith. The concept is not new, this principal is something which is part of the Court process across most Western jurisdictions such as Australia, New Zealand, Canada and the USA.
As the auDRP stands, a Complainant who chooses to use the auDRP in bad faith with the hope of taking a valuable domain name without having the pay for it (in other words RDNH) there are no consequences except a finding of RDNH by the panel. Unfortunately, many panelists are reluctant to make these findings, presumably to avoid the Complainant being embarrassed publicly. In cases where a RDNH finding is made, there is in effect no real consequence except a public finding, so a Complainant who abuses the auDRP has nothing to lose.
If the auDRP were amended to incorporate a provision similar to that found in the CDRP, then there would be an added consequence for an abuse of process by a Complainant. There would be something to lose for a Complainant, and as a consequence a reason to think twice before making a bad faith complaint.”
DOMAIN HIJACKING RELEVANT DECISION:
carsales.com.au Limited v. Alton L. Flanders, WIPO Case No. D2004-0047, , Denial (Domain hijacking: RDNH found)
I absolutely agree there needs to be a reform of the auDRP process! It is a joke how companies can just try to steal domain names for free!
Unfortunately the auDA Policy Review system is now being shown NOT TO WORK. auDA are an extremely slow organisation.
Direct .AU Registrations and implementation have been discussed by and at auDA now for OVER 12 YEARS.
Congrats Rob & client, this is a HUGE WIN and a great example to %$#@#$%^ who think they can take a domain that does not belong to them!
David kicks Goliath fare & square in the nuts 🥜 again!
Love your work 👍😎