Cybersquatters and the pandemic – how to disinfect the cyberspace

30 Mar Cybersquatters and the pandemic – how to disinfect the cyberspace

On 30 November 2020, the World Intellectual property Organization (WIPO) reported that it had registered its 50,000^th cybersquatting case. With more people depending on the internet and spending time at home, WIPO has stated that the “COVID-19 pandemic has fueled cybersquatting cases filed”.  According to WIPO, in the period from January to October 2020, WIPO dealt with 3,405 cases which is an 11% increase over the same period during 2019.[1]

What is cybersquatting?

Cybersquatting is when a person registers a domain name in bad faith for the purpose of selling the domain name to the true owner of the business name or trademark at an inflated price.

While an action for the contravention of section 18 of the Australian Consumer Law or copyright/trademark infringement is available, if you simply want the disputed domain to be cancelled or transferred to you, you may file a complaint under the .au Dispute Resolution Policy (auDRP) or the Uniform Domain Name Dispute Resolution Policy (UDRP). Filing a complaint under the relevant policy is generally a much more efficient and cost-effective way of resolving a domain dispute compared to litigation.

Australian Domains

Australian domains such as .com.au, .org.au and .info.au are governed by the .au Dispute Resolution Policy (auDRP) developed by .au Domain Administration (auDA). AuDa is a not-for-profit membership organisation and the self-regulatory body responsible for developing and administering policies in respect of .au domain names. If you wish make a complaint in respect of an Australian domain, you may submit your complaint to a provider approved by auDA such as Resolution Institute or WIPO.

In your submission, you are required to demonstrate the following:

• the cyber squatter’s domain name is identical or confusingly similar to a trademark or service mark in which you have rights; and
• the cyber squatter has no rights or legitimate interests in respect of the domain name; and
• the disputed domain name has been registered and is being used in bad faith by the cyber squatter.

Your complaint and any response by the current domain holder will be reviewed by a single or three-member panel who will determine whether the domain should be cancelled or transferred to you.

International Domains

International domains such as .com, .org, and .info are governed by the Uniform Domain Name Dispute Resolution Policy (UDRP) established by the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN is a not-for-profit public benefit corporation which is responsible for coordinating and developing policy on the Internet’s unique identifiers (i.e. domain names and IP addresses). If you wish to make a complaint in respect of an international domain, you may submit your complaint online to an accredited dispute resolution provider such as the World Intellectual Property Organization (WIPO).

In your submission, you are required to demonstrate the following:

• the cyber squatter’s domain name is identical or confusingly similar to a trademark or service mark in which you have rights; and
• the cyber squatter has no rights or legitimate interests in respect of the domain name; and
• the disputed domain name has been registered and is being used in bad faith by the cyber squatter.

Again, your complaint and any response by the current domain holder will be reviewed by a single or three-member panel who will determine whether the domain should be cancelled or transferred to you.

If you would like assistance in relation to a domain name dispute or any other intellectual property matters, please do not hesitate to contact us.

By Narges Attai

This publication is intended to provide general information on the identified legal topics and does not constitute legal advice and should not be relied upon as such.

[1]World Intellectual Property Organisation, “WIPO’s Anti-“Cybersquatting” Service: 50,000 Cases and Growing amid COVID-19 Surge” (30 November 2020) PR/2020/869 https://www.wipo.int/pressroom/en/articles/2020/article_0026.html