How NOT To Handle An auDRP Complaint

A couple of months ago, I wrote an article entitled “Protecting Their Turf” – this is the sequel. And it wasn’t a happy ending for the respondents!

Complaint 1 – De Beers UK Limited v. International Diamond Corporation Pty Ltd

As per previous article:

“There is a current auDRP proceeding for the domain adiamondisforever.com.au. The registrant contact name is the same as the above. One can only surmise that the Complainant is the same party. Will keep you posted.”

Cutting to the chase, the Respondent lost (again). You can read the case here.

Part of the defence was quite novel, but the sole panelist Sebastian M.W. Hughes was obviously not convinced – and he certainly wasn’t impressed (as you can read below)! Bolding is mine.

“The Respondent seeks to rely on the Respondent’s Trade Mark Application and asserts in the Response as follows:

“As the complainant clearly demonstrated that they showed no commercial interest in the domain name, we commercially speaking considered alternate appropriate uses for this name and have made application to utilize and register a trademark ‘adiamondisforever’ in context of the Real Estate Industry Class 36 – to ensure that there is no infringement on Debeers Trademark Class 14 and 35. At this stage we are awaiting further approvals before we move forward with and further development works utilizing this domain name”.

The above assertion does not sit well with the name of the Respondent, “International Diamond Corporation Pty Ltd”, which suggests that the Respondent is involved in the diamond industry.

The Panel also notes that the Respondent’s Trade Mark Application was filed on the same date of the Complainant herein – which casts serious doubt on the Respondent’s assertions of genuine rights or legitimate interests in respect of the disputed domain name.“

And so it was “Good night Irene”. This particular diamond was not forever.

Complaint 2 – BlueScope Steel Limited v. Jye Fulton

As per previous article:

“This recently commenced case involves the following domain names:

colorbondfence.net.au, colorbondfenceprice.com.au, colorbondfencers.com.au, colorbondgates.com.au, fencingcolorbond.com.au, sydneycolorbondfencing.com.au”

The Respondent lost – and he deserved to in my opinion. You can read the case here.

Of course, there was all the quite legitimate legal posturing by BlueScope about abuse of trademarks etc, but what absolutely sealed Mr Fulton’s fate (imo) was this excerpt (bolding is mine):

“The Complainant says that the Respondent continued to use the disputed domain names in the same manner even after receipt of its cease-and-desist letter in April 2015 and subsequently sought in settlement negotiations to sell the disputed domain names to the Complainant at the inflated price of AUD 800,000. This says the Complainant is further evidence of the Respondent’s intention to either use the disputed domain names to attract Internet users to its own website or for the purpose of selling the disputed domain names at a considerable profit to the Respondent.”

The sole panelist Alistair Payne concluded by saying:

“The fact that the Respondent registered the disputed domain names containing the Complainant’s COLORBOND mark without its authorisation and then attempted to request a very substantial sum for their transfer to the Complainant, only serves to reinforce the Panel’s view that such use was in bad faith.”

The decisions above are common sense being applied. And the Respondents didn’t help themselves.

Domain investors and domain investors should always read cases like these to help them further understand the “does and don’ts”.

Importantly though, just because these two cases were basically lost from the start, that doesn’t mean to say that every auDRP can’t be defended. There are many instances of successful defences.

However, you have to give yourself a fighting chance by making proper purchasing decisions in the first instance – and then utilising the domain names legitimately.

Ned O’Meara – 23rd September 2016