* Got a trademark? If not, you could potentially lose your domain name.
* Want someone else's domain name? Get a trademark and you could 
potentially take it off them.

According to auDA, there is no hierarchy of rights in the domain name 
system and trademark rights are not to be accorded any special 
significance. However, this has been overruled in a recent, yet 
unpublished, auDRP Decision in which the Panellist states that a 
trademark owner /...has a right to register corresponding domain names 
*over and above anyone else*/.

So what about auDA's Domain Name Eligibility and Allocation Policy? It 
states/: There is no hierarchy of rights in the DNS. For example, a 
registered trade mark does not confer any better entitlement to a domain 
name than a registered business name. Domain name licences are allocated 
on a ?first come, first served? basis. Provided the relevant eligibility 
rules are satisfied, the first registrant to apply for a particular 
domain name will be permitted to license it.

/As far as the Panellist is concerned /...*this is clearly not the case* 
as it would defeat the purpose of the auDRP/.

What makes this Decision even more remarkable is that the trademark in 
question isn't even registered, it is an unregistered / common law 
trademark. So even though you can't register a domain name on the basis 
of an unregistered / common law trademark, you could lose a domain name 
to someone with an unregistered / common law trademark.

In determining that trademark holders have a right to a domain name over 
and above anyone else, it negates the first-come first-served principle, 
and you could be at risk of losing your domain name unless you have a 
corresponding trademark.

This raises many questions:
- Who is right and who is wrong?
- If the Panellist is wrong is the Decision still valid?
- If auDA is wrong are they in breach of the Trade Practices Act?
- Who enforces the auDRP Rules when they are breached as auDA won't 
intervene?
- Does this undermine the authority of auDA or its ability to set policy?
- Is the future of the domain name system in the hands of trademark 
holders and IP lawyers?
- Will cunning lawyers take advantage of this, to the detriment of 
existing domain name holders?
- How much instability will this create in the Australian domain name 
system?

Before registering this particular domain name we had numerous 
conversations with auDA, to see if we could register it and if the 
purpose for which it would be registered was legitimate under their 
policy. Likewise, we also have written correspondence from auDA which 
relates to an almost identical website, in which auDA state that it is 
/compliant with auDA policy/.

Naturally, we are not to happy about the situation, so the big decision 
is what to do about it, as it has ramifications which effect every 
domain name that has ever been registered, including yours, not just 
this one domain name.

We're in two minds about this. If we do challenge the Decision and if we 
win, it also gets auDA off the hook. However, if we don't challenge the 
Decision, we lose one domain name but auDA gets a massive headache, lots 
of press and possible legal action.

It is very tempting and probably better for us financially to do nothing 
and let auDA deal with the subsequent fallout. In fact, I think it could 
be quite amusing to see just how big a mess this becomes.

We've also spoken to the ACCC about this issue. At first they weren't 
that interested but once we pointed out, that if the Decision is allowed 
to stand, it potentially means that auDA has provided information to 
virtually every entity that has ever registered an Australian domain 
name, that is possibly false and misleading, they assigned a reference 
number to the issue and asked that we make a submission to their 
Regional Director so they could investigate the matter further.

Before we do this, we'll wait to see if the Decision stands and how many 
others have similar issues.

Andrew Young

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