LEADR decision leaves generic domain names with registrant
In Shatim v Morris, LEADR panellist Alan Limbury has declined to transfer 'tobacco.com.au' and 'cigarettes.com.au' because the complainant failed to provide evidence of trademark rights in the names. The decision confirms that a complaint under the '.au' Dispute Resolution Policy (auDRP) can succeed only if the following three requirements set out in Paragraph 4(a) of Schedule A are alleged:
- the registrant has registered a domain name that is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights;
- the registrant has no rights or legitimate interests in the domain name; and
- the registrant has registered the domain name in bad faith or has subsequently used the domain name in bad faith.
Instead of asserting that either of the disputed domain names was identical or confusingly similar to a name or trademark in which he has rights, Tim Shatim asserted that the registrant, Douglas Morris, had not met the eligibility requirements in relation to registration of '.com.au' domain names. (Although there is no longer a prohibition on the registration of generic names, a registrant must still meet the domain name eligibility criteria to register a domain name.)
Limbury indicated that the issue of whether Morris met the eligibility criteria in relation to each domain name does not fall under the auDRP, but under another auDA policy - the Complaints (Registrant Eligibility) Policy. Thus, he was obliged to dismiss Shatim's complaint.
Cathy Pappas, Blake Dawson Waldron, Melbourne
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