NeedtoKnow - Domain NamesPDF

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					                     May 2011




                     NeedtoKnow: Domain Names
                     .XXX Reservations

                     If your business operates outside the adult industry (now also referred to as the XXX
                     Community) and if you would prefer that your trade mark not be associated with the
                     XXX Community, the Registry for the top level domain .xxx (ICM Registry) will offer
                     a unique rights protection mechanism.

                     It will allow trade mark owners to reserve domain names that correspond with their
                     respective trade marks during a pre-launch period it has called “Sunrise B”.
                     Reserved domain names cannot point to an active website. Furthermore, ICM
                     Registry currently envisages a reservation to be permanent, i.e. it will not require
                     regular renewal fees.

                     Whilst details are still being finalised, trade mark owners may consider whether to
                     include a Sunrise B reservation in their strategy for protecting their brands in this
                     new top level. The alternative will be to challenge abusive registrations.

                     For further information, please contact: Jürgen Bebber, Senior Associate,
                     jürgen.bebber@griffithhack.com.au


                     Refiling an unsuccessful UDRP Complaint

                     A recent Uniform Domain-Name Dispute-Resolution Policy (UDRP) decision has
                     confirmed that unsuccessful UDRP Complaints may be refiled and considered
                     afresh in certain limited circumstances.

                     Telstra (and a subsidiary company, Sensis) filed a Complaint in May 2010 against
                     Yellow Page Marketing BV (Yellow Page), a Dutch company. Yellow Page had
                     taken steps to launch online directories for the Australian market by registering 10
                     domain names comprising “yellowpage” followed by an Australian capital or region
                     (eg. “yellowpage-melbourne.com”) and then sending faxes to Australian businesses
                     to solicit listings.

                     The initial UDRP Complaint was dismissed and Telstra refiled the Complaint. A
                     three member panel of the World Intellectual Property Organisation recently decided
                     that the matter could be revisited for two reasons:

                     1. new evidence came to light since the filing of the original Complaint, which could
                        not have been reasonably known to Telstra at the time; and
                     2. the Panel in the original proceeding conducted private investigations and relied
                        on the results without giving Telstra an opportunity to comment on those results.

                     The Panel noted that the UDRP is silent on the question of refiled complaints. The
                     Panel held that complaints can be refiled in circumstances similar to those in which
                     a judicial complaint can be re-litigated, including, for example, serious misconduct
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                     May 2011




                     by a panellist, witness or lawyer, perjured evidence, the discovery of credible and
                     material evidence which could not have been reasonably foreseen or known at the
                     time, and a violation of “natural justice” or due process.

                     Telstra’s Complaint was reconsidered and, in light of its new evidence and its
                     submissions, the Panel decided in favour of Telstra, ordering the transfer of all 10
                     disputed domain names.

                     The decision highlights that refiling an unsuccessful complaint may be an option in
                     limited circumstances, made all the more attractive by the relatively low cost of
                     UDRP proceedings.

                     For further information, please contact: Nicholas Tobias, Lawyer,
                     nicholas.tobias@griffithhack.com.au


                     ICANN Applicant Guidebook to be more IP friendly

                     As Government representatives on the Governmental Advisory Committee (GAC)
                     and Internet Corporation for Assigned Names and Numbers (ICANN) continue to
                     disagree on details relating to the mass expansion of the domain name system,
                     ICANN has sought to address some of the GAC’s concerns in its revised Draft
                     Applicant Guidebook, which it released recently.

                     For trade mark owners, ICANN’s most significant concession is that it will be
                     mandatory for registrars to offer sunrise periods and trade mark claims services.
                     Previously, registrars had a choice between the two. Also, any trade mark
                     registration can be used as a basis for a trade mark claims service, even a
                     registration that is not underpinned by use. However, only marks that are in use may
                     support a sunrise application.

                     The practical consequences of these amendments are that any registered trade
                     mark owner may participate in the trade mark claims service, which will notify a
                     trade mark owner if a third party attempts to register a string that is identical to its
                     trade mark. However, only trade mark owners that are able to prove use of their
                     marks may register domain names defensively in sunrise periods, which precede
                     the opening of the respective top levels to the general public.

                     Whilst ICANN’s concessions will be welcomed by many in the IP community, they
                     will not be considered sufficient by those that requested a more robust system for
                     protecting brand owners from what is expected to be a flood of abusive domain
                     name registrations.

                     ICANN is expected to publish the final Applicant Guidebook by 30 May 2011 and
                     give its final approval on 20 June 2011.

                     For further information, please contact: Jürgen Bebber, Senior Associate,
                     jürgen.bebber@griffithhack.com.au



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