Was This An Attempt At “Highway Robbery”?

The City of Parramatta Council (“The Council”) was last week officially found “guilty” of Reverse Domain Name Hijacking with regards the domain name Parramatta.com.au. For those that may not know what that means, in simple terms, they filed a dispute / complaint against the long standing registrant of this valuable premium domain name in order to try and have it transferred to them for free! And they lost spectacularly.

This finding of RDNH was made by the extremely experienced Philip Argy acting as an accredited panellist for auDRP disputes / complaints. (au Dispute Resolution Policy).

Some Key Points

  • Parramatta.com.au was first registered by Publishing Australia Pty Ltd (the Respondent to the complaint) on 21 October 2007. Yep, nearly 14 years ago.
  • The Council used Anisimoff Legal which has offices in Sydney, Melbourne and the NSW Central Coast. The actual person who handled the dispute / complaint is a Trademark Attorney based in Melbourne.
  • I wonder what the legal bill for Parramatta ratepayers is going to be? And who made the decision within The Council to embark on this costly and futile process?
  • The following excerpt from the ruling cracked me up. If Anisimoff Legal had done their research properly, they would have known that there have been new owners of Netfleet since the middle of last year!

The Complainant “understands that the Respondent operates the Netfleet website which is a platform for selling domain names as an inflated price”.

  • According to the finding, Publishing Australia “never solicited a sale of the Disputed Domain Name to anyone including the Complainant”.

To see how dead in the water this dispute / complaint was, let me highlight two excerpts by Mr Argy:

“the Complaint includes baseless allegations and submissions not grounded in the evidence put before the Panel.”

It is the Panel’s considered view that the Complaint was brought in bad faith and constitutes Reverse Domain Name Hijacking within the meaning of paragraphs 1 and15(e) of the Rules.

Conclusion

What a waste of money by The Council (and it’s unknowing ratepayers). Why didn’t they just try and negotiate a deal? If they are still intent on acquiring this domain, I imagine any price tag may have just gone up!

As for Publishing Australia, they have had to spend time and money defending this spurious claim, and they get nothing out of it. In Australia, there are no financial penalties to a RDNH finding. Perhaps there should be.

10 thoughts on “Was This An Attempt At “Highway Robbery”?

  • Avatar
    April 29, 2021 at 9:54 am
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    Shame on the goose at City of Parramatta Council who talked the other members into attempting to steal this domain name from the current owner!

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    • Avatar
      April 29, 2021 at 11:05 am
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      Rob, I think we need to do a Sesame Street style jingle to educate lawyers and their clients about:

      (1) not attempting to steal;
      (2) not abusing process; and
      (3) how best to get what you want.

      Such a joke

      Bega.com.au was a $50,000 sale
      Hobart.com.au was $67,600

      https://www.domainregistration.com.au/news/2014/1402-whisky-domain-sale.php

      There are dozens of geographic .com.au domains that have sold for mid five figures and a number of them have sold for six figures.

      Wasn’t it Publishing Australia that sold Hobart.com.au ? And that sale was 7-8 years ago. I cannot see City of Parramatta getting Parramatta.com.au for less than $180,000 now.

      NSW’s so-called second capital. Big-picture thinkers in so many ways, but small-minded in how they have gone about this as far as I am concerned.

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  • Avatar
    April 29, 2021 at 10:19 am
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    Wonder what their total legal fees were? Application is at least $2k.

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    • Avatar
      April 29, 2021 at 1:24 pm
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      Yeah, lawyers normally charge between $10k and $20k to submit the complaint. The domain name is worth way more than that though! Especially now…

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  • Ed Keay-Smith
    April 29, 2021 at 10:38 am
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    Congrats to the rightful domain owners and shame on the lawyers and Parramatta Council for thinking they can get away with such blatant attempted domain name thievery!

    In my opinion, they are either compete amateurs or outright thieves or perhaps both?

    What was the bill from the law firm to the City of Parramatta? It surely must be a matter of record? and the rate payers are the ones who ultimately are footing the bill along with the domain owner who is left holding a bill of their own???

    Surprise surprise, the one who did best of of this farce is the lawyers!

    As Derryn Hinch used to say (and maybe still does?), Shame, Shame, Shame!!!

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  • Avatar
    April 29, 2021 at 9:23 pm
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    I just read the whole verdict. Great read, and very well explained by panelist Philip Argy.

    This part is gold;

    “The Complainant is legally represented by experienced counsel, and ought to have known that there was no proper basis to bring this proceeding”.

    I’ll go one better (added on top of the above line) with the Affirm.com.au auDRP I’m in the middle of writing and about to submit at the moment…

    I told Adnan Meher and Robynne Sanders from DLA Piper that “A trademark that was registered only around 2 years ago has little effect on the current owner’s generic use of the domain name, so initiating an auDRP from your end, I believe would prove pointless and unnecessarily costly to your client.”

    I told them right from the start! I put it in writing!

    Yet they still went ahead and one can only assume they’re still billing their clients as they go.

    Driving full speed and head-first into a RDNH charge that will haunt both Affirm, Inc. and DLA Piper forever.

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    • Avatar
      April 30, 2021 at 6:01 am
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      Rarely do we get to see a car crash or train wreck LIVE in S L O W M O T I O N

      That’s what we will see with Affirm.com.au and it will be a textbook example for all going forward.

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  • Avatar
    April 30, 2021 at 7:05 am
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    The folks at Parramatta council have a trade mark number 387468 for COUNCIL OF THE CITY OF PARRAMATTA

    That is the apparent basis on which they decided to set out to acquire Parramatta.com.au

    It appears that the word “Parramatta” is not a registered trade mark.

    On any reading of domain name dispute precedents, without a trade mark the council had no hope.

    The elected officials and council management who instructed their legal advisors are the ones to blame for the self inflicted humiliation.

    The council also has another batch of obscure trade marks, none of which are simply “Parramatta”

    They have this one.. ” WHERE IT’S AT ” and whereitsat.com.au is registered to a sole trader who might be next in line for a dispute claim.

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    • Avatar
      April 30, 2021 at 7:25 am
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      The problem is, even if it was just “PARRAMATTA” it would still be no basis to strip the existing registrant of its domain name.

      There is no hierarchy of rights when it comes to domain name registration – “first in, best-dressed”.

      Using the above metaphorical tenet of .au registration as expounded by auDA itself, these slovenly-dressed latecomers can pack up their crap and move along.

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