Panellist opens door to new remedies in 'gatekeeper.com.au' dispute

In National Office for the Information Economy v Verisign Australia Limited, LEADR panellist Philip Argy has ordered the transfer of 'gatekeeper.com.au' to the complainant - an Australian government agency that owns the GATEKEEPER mark. Argy held that if the complainant is not eligible to accept the transfer, as a result of its status as a government agency, the domain name should be cancelled and the term 'Gatekeeper' placed on auDA's reserved list of words.

In 1998 the National Office for the Information Economy (NOIE) launched the government's Gatekeeper strategy, essentially an accreditation scheme for providers of internet infrastructure technology to facilitate the secure transaction of online business with government agencies through a hierarchical digital certificate system. NOIE applied to register the term 'Gatekeeper' as a certification mark in June 2000 and proceeded to accredit both governmental and commercial service providers who complied with the rigorous standards of its authentication framework. Verisign was accredited by NOIE in April 2001 and was one of the first providers of digital certificates to a mass commercial market.

NOIE brought a complaint against Verisign under the '.au' Dispute Resolution Policy (auDRP) following its registration and use of 'gatekeeper.com.au'. NOIE registered 'gatekeeper.gov.au' in February 2000 but had not registered a corresponding domain name in the '.com.au' second-level domain.

Argy found that the disputed domain name was identical to NOIE's trademark under the first limb of the test set out in the auDRP. He also found that Verisign had no rights or legitimate interests in 'gatekeeper.com.au'. Argy noted that there was a strong impression that Verisign had registered the disputed domain name in order to redirect internet users to its own website and confuse them into thinking that Verisign was the sole supplier of digital certificates under NOIE's Gatekeeper programme. He concluded that Verisign had intentionally attempted to attract internet users for commercial gain and that the disputed domain had been either registered or used in bad faith.

Thus, Argy ordered the transfer of 'gatekeeper.com.au' to NOIE. However, mindful of the possibility that NOIE as a government entity might be considered ineligible to hold a '.com.au' registration, he directed that in the alternative, the disputed domain name should be cancelled and the term 'Gatekeeper' added to auDA's reserved list of words. Thus, preventing any other party from registering an '.au' domain name featuring the term 'Gatekeeper' without NOIE's prior consent.

This alternative recommendation is a practical but perhaps overreaching solution. It is arguable whether, under the auDRP, a panellist (i) can order the cancellation of a domain name unless the complainant has specifically requested it, or (ii) has the authority to make a proposal of this type. If the recommendation is followed by auDA, it would have the effect of creating a quasi-monopoly in the word 'Gatekeeper' within the '.au' country-code top-level domain. No other prospective registrants would be able to apply for an '.au' domain name incorporating the term 'Gatekeeper' even in circumstances where (i) they might otherwise have been entitled to such registration, and (ii) a complaint brought by NOIE under the auDRP would not succeed. However, any such difficulties will be academic if, as appears to be the case, auDA confirms NOIE's eligibility to hold a '.com.au' domain name.

Alistair Payne, Corrs Chambers Westgarth, Sydney