auDRP explained - Brandsec

The .au Dispute Resolution Procedure aka auDRP is a mechanism available for brands to challenge registrations when intellectual property has been infringed. A domain name dispute can be quickly resolved through this procedure and it is much cheaper and simpler than going through the courts.

The .auDRP is an option for only when all other means of amicable resolution have been exhausted.

Who’s involved?

At the outset, it’s probably useful to explain that there are six parties that play a role in any dispute decided under the policy. These are:

The Complainant: This is the party who feels aggrieved at the registration of another domain name, and the one who initiates the proceedings.
The Respondent: This is the party who has registered the (potentially) offending domain.
The Provider: This is an independent provider of dispute resolution services that is approved by the auDA. Web IP goes through Leadr.
The Panel: This is the party that decides the dispute in accordance with the auDRP. The Panel can consist of either one or three members.
The Registrar: This is the auDA accredited body that is authorised to provide services to people who want to register or renew domain names, or make changes to their domain name records.
The auDA: .au Domain Administration Ltd, which is the policy authority and industry self-regulatory body for the .au domain space. It is responsible for putting together the auDRP.

The Complaint

Before submitting a complaint, you should familiarize yourself with the auDRP policy, in particular schedule A, 4.a which outline the key elements that you will need to prove to be successful. They are:

(i) the domain name is identical or confusingly similar to a name, trademark or service mark in which you, the Complainant, has rights; and

(ii) the third party (Respondent) has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered or subsequently used in bad faith.

The key element he is proving bad faith.

For example, if you have a registered trademark “Widgets R US” which was registered on 01/01/2000 and a 3rd party registered an identical or confusingly similar domain name widgetsrus.com.au on 25/12/2001 you have the basis to start developing your case.

Although having a trademark registered to support your complaint is important it is not always necessary, particularly for brands that have built strong brand equity within this relevant market.

The Process

It is important to ensure that you understand how to structure and write a complaint. We strongly recommend getting a professional to write the complaint, or at least review it before submitting it to the DRP provider.

When you are happy with the complaint you will need to send it to an auDA approved auDRP provider.

The Provider will then review the complaint to ensure that it complies with the technical requirements of the auDRP. If it does comply with these requirements, the Provider forwards the complaint to the Respondent within three calendar days.

Response

The Respondent must file a “Response” within 20 days of receiving the complaint. This is a formal document which sets out the Respondent’s version of events, and which makes submissions as to why the auDRP has not been breached. It will often contain arguments based on cases previously decided under the auDRP. For this reason, a Response will often be drafted by a lawyer, but it is not compulsory to use a legal representative.

If no response is filed within the time limit, the Panel will make its ruling based on the information provided by the Complainant unless “special circumstances” exist.

Panel Appointed

The Panel is appointed. The Panel consists of either one or three members.

If the Complainant elects to have a three-member panel decide the dispute, the Complainant must pay the entire fee for a three-member panel (currently $4,500), and the three members are appointed by the Provider.

If the Complainant elects to have a one member panel, the appropriate fee (currently $2,000) is paid, and the case will be determined by a single member panel unless the Respondent elects to have it decided by a three-member panel.

If the Respondent wishes to use a three-member panel, the Complainant and Respondent must each pay half of the full fee (i.e. currently $2,250).

Decision Made

The Panel examines the case and the documents, and forwards its written decision to the Provider within 14 days of its appointment.

Decision Communicated

Within 3 calendar days of receiving the Panel’s decision, the Provider provides the decision to each Party, the concerned Registrar(s), and the auDA. Unless the Panel determines otherwise, the Provider also publishes the full decision on its web site.

Decision Implemented

Upon receiving the decision, the concerned Registrar(s) must inform each Party, the Provider, and auDA the date for the implementation of the decision in accordance with the Policy.

If the ruling Panel decides that the domain name should be transferred or cancelled, the Registrar must wait a minimum of 10 business days before implementing the decision. This provides the unsuccessful party with a window to initiate legal proceedings (which will also delay the implementation of the decision).

Enforcement of auDRP decisions

Panel decisions under the auDRP are binding on both parties. There is no appeals process.

If the unsuccessful party is not satisfied with the outcome of an auDRP proceeding, they may decide to initiate legal proceedings against the other party. If the Panel decides that the domain name should be transferred or cancelled, the registrar is required to wait 10 business days before implementing the decision to allow for legal proceedings to be commenced.

auDRP Timings summarised:

Estimated Evidence Preparation: 2 – 4 weeks
Estimated Complaint Development 5 – 10 days
Complaint is checked by the auDRP provider: 3 days
The time the respondent has to reply to the complaint: 20 days
The time the panel takes to arrive at a decision: 14 days
The time the auDRP provider takes to communicate/publish the decision: 3 days/
The time to implement the panels decision: 10 days.

auDRP and uDRP

WIPO run a similar dispute resolution process called the Uniform Dispute Resolution Procedure (uDRP), which is what the auDRP is based on.

uDRP is the dispute resolution mechanism for gTLD domain names, that is .com, .net, .org etc. The auDRP is very similar in terms of the principles complaints should follow.
However, domain names such as .com, .net, and .org don’t really have any policy restrictions so are considered open domain names meaning anyone from any country can register them and there are very limited registration requirements. In contrast, .au domain names have restrictions, such as domain names need to be registered either by Australian entities or individuals and international companies with Australian trademarks. Therefore, the auDRP considers local policy restrictions and conditions.

See more on Domain Name Disputes here.

Providers

auDA have nominated specific auDRP providers to manage domain disputes. Complaints are submitted to the below mentioned auDA approved DRP provider.

LEADR – Association of Dispute Resolvers
The Chartered Institute of Arbitrators – Australian Branch (CIArb)
The Institute of Arbitrators and Mediators Australia (IAMA)
World Intellectual Property Organisation (WIPO)

All decisions and proceedings can be found by using the .au Dispute Resolution Search Database. This is particularly handy when developing your complaint as it provides a mechanism to research cases that may be relevant.

About brandsec

Brandsec is a corporate domain name management and brand protection company that look after many of Australia, New Zealand and Asia’s top publicly listed brands. We provide monitoring and enforcement services, DNS, SSL Management, domain name brokerage and dispute management and brand security consultation services.