Abbreviated cybersquatter falls short in 'paconsulting.com.au' dispute

International

In PA Consulting Services Pty Ltd v Barrington-Lew, panellist John Swinson at the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre has ordered the transfer of 'paconsulting.com.au' to the complainant. Swinson rejected the respondent's contention that the domain name referred to the abbreviated form of his Park Avenue Consulting business name, holding that although he had rights in that name, he had no legitimate rights in the PA Consulting name.

The case, which was brought under the '.au' Dispute Resolution Policy (auDRP), highlights that even if a registrant meets the strict eligibility criteria for holding an '.au' domain name (ie, the requirement that a registrant has a presence in Australia in the form of a business or company name registration or a trademark application or registration), this does not necessarily establish legitimate rights in that domain name.

PA Consulting Services, the Australian arm of the PA Consultancy Group, filed a complaint against Joseph Barrington-Lew following his registration of 'paconsulting.com.au'. In response, Barrington-Lew argued that he had a legitimate right to the disputed domain name because it was an abbreviation of his registered business name Park Avenue Consulting and he therefore met the eligibility requirements for holding the domain name. He claimed that he had chosen to register 'paconsulting.com.au' as it was "shorter in length and easier to remember". However, five months after registering the domain name, Barrington-Lew had made an unsolicited offer to sell it to PA Consulting.

Swinson rejected Barrington-Lew's argument, noting that his business was not commonly known by the name PA Consulting and he did not own any trademarks, or company or business names containing that specific name. Swinson also stated that Barrington-Lew had not established rights or legitimate interests in the domain name merely as a result of a registrar's determination that he satisfied the relevant eligibility criteria at the time of registration. Swinson concluded that Barrington-Lew was aware of PA Consulting when registering the domain name and that his primary purpose was to sell it to PA Consulting for a significant profit. This also suggested that he had registered and used it in bad faith. Thus, Swinson ordered the transfer of 'paconsulting.com.au'.

As a practical point, the eligibility requirements for holding an '.au' domain name are an important consideration when deciding in whose name an auDRP complaint should be brought. If the complainant elects to have the disputed domain name transferred rather than cancelled, it must be able to establish that it is eligible for the transfer. In the case at hand, for example, the local Australian company brought the complaint, rather than the overseas parent company. Establishing eligibility may be an issue for overseas companies who do not have a local company based in Australia or any Australian trademark applications or registrations. In such a case, the overseas company would need to file an Australian trademark application prior to filing an auDRP complaint.

Joanna Lawrence, Blake Dawson Waldron, Sydney

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