GlobalCenter wins first transfer under the auDRP
In GlobalCenter Pty Ltd v Global Domain Hosting Pty Ltd, the second decision issued under the new '.au' Dispute Resolution Policy (auDRP) and the first in favour of a complainant, a World Intellectual Property Organization panel has ordered the transfer of 'globalcentre.com.au' and 'globalcentre.net.au' to GlobalCenter.
GlobalCenter, an internet hosting company based in Australia, brought a claim under the auDRP following registration of 'globalcentre.com.au' and 'globalcentre.net.au' by one of its competitors - Global Domain. GlobalCenter claimed that it had acquired goodwill in the 'GlobalCenter' name in Australia and that the registrations had infringed its rights in that name.
The panel upheld GlobalCenter's complaint and ordered the transfer of the disputed domain names. It concluded that GlobalCenter had fulfilled the three requirements for transfer in Paragraph 4(a) of Schedule 1 of the auDRP, namely:
- the domain names were identical or confusingly similar to a name, trademark or service mark in which GlobalCenter has rights;
- Global Domain had no rights or legitimate interests in respect of the domain names; and
- Global Domain had registered the domain names or used them in bad faith.
The panel also highlighted differences between the auDRP and the Uniform Domain Name Dispute Resolution Policy (UDRP). It noted the following points:
- The auDRP allows a disputed domain name to be compared with a name in which the complainant has rights, whereas the UDRP requires comparison with a trademark. In this case, although there was no evidence that GlobalCenter had any trademark rights, the panel held that it had sufficient rights in its name to satisfy the auDRP test.
- Under the auDRP, the registrant must prove its rights or legitimate interests in a domain name before it receives notice of the subject matter of the dispute, as opposed to notice of the dispute itself under the UDRP.
- While the UDRP requires proof that the domain name was registered and is being used in bad faith, evidence of either of these elements is sufficient for the auDRP. Here, the panel held that, as the disputed domain names were confusingly similar to GlobalCenter's name, they would divert customers away from GlobalCenter, thereby disrupting its business.
For discussion of the first decision issued under the auDRP, see First auDRP decision goes to respondent. For a general discussion of the differences between various domain name dispute resolution policies, see Domain name dispute resolution policies compared.
Jim Dwyer, Allens Arthur Robinson, Sydney
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