On December 11th, 2018, a client of Registry Australia informed me that he’d received an auDRP Complaint from CSC GLOBAL, stating that Australian Rugby Union Limited (Rugby Australia) wanted to hijack his domain name, Wallabies.com.au(,) FOR FREE.
My client wasn’t worried, especially since he’d owned the domain name for over 12 years and had never used the generic domain name in bad faith against any trademark whatsoever.
Still, it’s a lot of work defending an auDRP and can be quite expensive for both parties, both the Complainant and the Respondent.
But in this case, I met with my team at Registry Australia and we felt we had to help our client keep his domain name at all costs.
Once we’d decided to defend the domain, over the coming hours, I felt myself becoming quite annoyed at the nerve of these people. Imagine a large corporation like this thinking they can just bully anyone they want into handing over an asset for free?
Domain names are digital assets. Hence, if you want one that’s taken YOU HAVE TO PAY FOR IT. Why aren’t CSC Global explaining this to clients who are insisting on making fruitless auDRP and UDRP complaints against domain names that are legitimately owned?
auDA rules clearly stipulate, “There is no hierarchy of rights in the DNS. For example, a registered trademark does not confer any better entitlement to a domain name than a registered company or business name.”
How hard would it have been for CSC Global to have shown this statement to their client? Perhaps CSC Global are making too much money out of submitting fruitless complaints?
Regardless, Rugby Australia Ltd must have felt like they were somehow special. They must have figured they deserved the domain name over and above the hard working businessman who’d purchased it fair and square, 12 years ago. They somehow believed they deserved it over and above the other 58 companies in Australia who also have the generic-word “Wallabies” as part of their name.
Due to the fact that I thought CSC Global may not have clearly indicated to their clients the reality of the situation, I felt the need to personally reach out to Rugby Australia Ltd management staff myself.
I found Raelene Castle (CEO Rugby Australia), and a number of her staff in Linked In and I sent them the following message, on the same day that my client, and Registry Australia received the initial complaint (Dec 11 2018);
I thought I’d give Raelene the benefit of the doubt. Perhaps she was super-busy and had no idea this was going on?
Perhaps she still doesn’t know this happened?
I’m not sure, but I’ll be sure to post her a follow-up link to this article on Linked In again, once I’ve finished writing it.
Anyway, I heard no response from anyone at Rugby Australia, so the only thing left to do was to write up an 18-page defence for my client.
At this point, I’d like to say, THANKS VERY MUCH RUGBY AUSTRALIA, I spent every day of my Christmas Holidays from December 27th until New Years Eve 2018 writing this defence.
It would even be easy for Blind Freddy to work out that the timing of this complaint had been orchestrated so that it would be hard to find an auDRP Defence Lawyer during this busy holiday period.
Turns out they were right. But also turns out I can now write auDRP Defence Papers on behalf of all future Registry Australia clients. (But extra special thanks have to go out to my Domain Industry colleagues Erhan and Sean for the important initial help!)
I may have missed my 2018 Christmas Holidays. But gee, was it worth the final result! (I’m going to keep you hanging a little longer…)
To rub salt in the wound though, once we had submitted our defence, those sneaky CSC Global folk decided they were entitled to submit an EXTRA 8-PAGE SUPPLEMENTAL FILING, to further defend against our defence?!
We objected to their sneaky second Supplemental Filing, and the auDRP Panel decided to “decline to accept the Complainants Supplemental Filing“.
This is something to watch out for though, in auDRP Complaints. There seems to be some sort of “grey area” in regards to whether Complainants can keep “adding” to their complaint as the days draw near to the final submission date. Surely this is a “grey area” that needs to be closed up by WIPO?
Some of the best lines that came out of this auDRP Decision go like this:
And then there was this:
And then there’s this great finding by the honorary auDRP Panelists:
And finally, I’ll leave you with this final decision snippet:
Large Corporations in Australia should be put on notice.
Generic Domain Names are digital assets and are worth a lot of money. We’re not talking about trademark-infringing or cybersquatting pests here, we’re talking about legitimate domain investors and entrepreneurs owning valuable generic domain names that they have initially purchased for future development reasons.
And if you want an amazing generic-word domain name to make your brand look 10 times better on the internet, and someone else is using it, then you have to be prepared to pay that sort of money to acquire it.
Extra special thanks for out to the fair and just decision and work put in by Panelists: The Hon. Neil Brown Q.C.(,) Matthew Kennedy and Sebastian M. W. Hughes.
You can read the full decision and more at the following locations: