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From 16 November 2009, the Internet Corporation for Assigned Names and Numbers (ICANN) will take the first step in a long process to introduce the option of ending domain names in non-Latin characters with an aim to improving access for 800 million-plus Internet users in non-Latin script using countries. However, no-one can register domain names with the new endings yet, so keep your hairy shirt on. If you cannot understand non-Latin domain name endings, this article may help, but finding websites featuring Thai ladyboys is about to get a whole lot more difficult.

Under the new system, Country Code Top Level Domains (ccTLDs) such as .au, and generic Top Level Domains (gTLDs) such as .com, can obtain new endings known as ‘Internationalised Domain Names’ (IDNs) in languages such as Chinese, Hebrew or Cyrillic.

On that date, countries with a non-Latin native script may apply to ICANN for a ‘FASTTRACK’ IDN ccTLD so that the letters to the right of the dot can reflect that country’s name in the script of its official language. ICANN will evaluate these applications on a number of criteria. If ICANN’s filing and technical requirements are met by the application, including government and community support and country stability considerations, the relevant applicant nation will be fast tracked so that they can issue new IDN ccTLD registrations in the second quarter of 2010.

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The Full Employment Act for Domain Name Practitioners, otherwise known as the new generic top-level domains (gTLDs) ‘internationalised domain names’ (IDN) program proposed by ICANN (the acronym obsessed, global domain name bureaucrats), could be active on the Internet by the end of 2010. Under this program, it is proposed that (in summary), generic, geographical and brand names can be registered to the right of the last dot (for example, .melbourne, .aboriginal, .christian and so on). These may conflict with existing gTLD’s and ccTLD’s and with trade marks in various jurisdictions. The critical path seems to be as follows:

• Draft Applicant Guidebook (DAGv3) will be released by ICANN prior to the Seoul ICANN meeting in late October 2009.
• DAGv4 (final version) likely to be published in December 2009.
• First application cycle in February 2010
• Validation period: 4 - 5 months
• Sign off on applications by the Board of ICANN: > 7 months

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In National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd (WIPO Case No. DAU2008-0021) an Administrative Panel Decision of the WIPO Arbitration and Mediation Center handed down on 6 March, 2009, the Complaint was submitted by nine complainants against one respondent. The complainants (whom were commonly represented by one law firm) each operate businesses that deal in ‘smartnumbers’: or, in other words, freephone or local rate phone numbers. These are numbers auctioned by the Australian Communications and Media Authority that are numerically alliterative (e.g. 1800 222 222) or those that translate to a "phoneword" when the suffix digits are selectively mapped to the letters on an alphanumeric keypad (e.g. 13 2287, which translates to 13 CATS).

The Respondent, it was alleged, operates a business that had registered sixty-six disputed domain names comprising the Complainants’ phonewords with the addition of the suffix ".com.au".  

The Complaint raised a novel procedural issue for which the auDRP contains no express provision: whether a single complaint may be filed against a single respondent by multiple complainants or, in other words "consolidation of multiple complainants" as distinguished from similar issues like consolidation of multiple domain names, consolidation of multiple respondents and consolidation of multiple complainants and respondents.

Panelist, Professor Andrew Christie enumerated ten principles to help guide determination of this issue, as follows:

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Nick Weston, the name principal of Melbourne based powerhouse niche law firm Nicholas Weston, has been appointed to the Geneva, Switzerland-based World Intellectual Property Organization’s (WIPO) Arbitration and Mediation Center’s List of Arbitrators and Mediators and also the Center’s Domain Name Panel. WIPO is a United Nations organization. Mr Weston also serves as chairman of ASX listed biopharma, Agenix Limited [ASX:AGX; NASDAQ OTC: AGXLY] and charitable foundation Karma Currency.

Mr Weston will serve as a WIPO Domain Name Panelist to decide disputes under the “Uniform Domain Name Dispute Resolution Policy” (UDRP) and the “.au Dispute Resolution Policy” (auDRP) the mandatory arbitration procedures for deciding competing claims to domain names. As a domain name panelist, Nick Weston will review domain name disputes and decide whether a domain name registration should be transferred, cancelled or the status quo maintained.

The UDRP applies primarily to international domains such as .com, .net, .org, .info, .biz. and .mobi. In addition, 56 country code top-level domains (ccTLDs) have now appointed WIPO as service provider for their domain name disputes. Apart from UDRP cases, the Center has administered over 15,000 cases under Sunrise policies relating to registrations in the start-up phase of new domains. The auDRP is an Australian adaptation of the UDRP for com.au, net.au, asn.au, id.au, edu.au and org.au domain names.

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Starting on 3 December, trade marks owners will get first look-in on obtaining the new .tel top level domains that publish contact data directly in the DNS, not on html based websites. So brand owners should probably ensure that they are first in to register each corresponding .tel address. Internet Corporation for Assigned Names and Numbers (ICANN) has sanctioned a new top level domain name called .tel that has been set aside purely to integrate contact information directly into the heart of the internet - the world’s first global e-directory. 

A .tel domain name will enable the creation of an interactive and live communications hub to take control over how and where others communicate with peeps and businesses. .tel users will be able to publish all contact details including phone, mobile, fax, email addresses, as well as store web links, geo-location data and keywords describing a business.

.tel has already been termed the “the Google of online address books” and over 100 ICANN-accredited registrars have signed on to sell the .tel domain names.

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The writer has been attending the World Intellectual Property Organisation (WIPO) Arbitration and Mediation Center’s two workshops in Geneva over the past week, one on Arbitration and the other an “Advanced Workshop on Domain Name Dispute Resolution”. It is from the latter that I shamelessly crib the statistics carefully compiled by the Center’s Erik Wilbers and David Roache-Turner (the latter an Australian national).

Nearly 170 million domain names have been registered to date. Nearly 110 million of these are in the United States of America. Some U.S. citizens are known to love a barney.

The Centre (in Australian English) is the original ICANN-accredited provider of domain name dispute resolution services. It has received more than 14,000 cases for gTLD’s (Global Top Level Domains, such as .com) and ccTLD’s (Country Code Top Level Domains, such as .com.au) since 1999, covering more than 25,000 disputed domain names. As at 21 October 2008, 1843 cases had been filed with the Centre this year, averaging 6 new cases each calendar day. The Centre acts as a case manager and secretariat, using staff (most of whom are lawyers) from 25 nations with skills in 17 languages.

Naturally the United States of America tops the lists of Complainant and Respondent countries, with 44.16% and 39.76% of those filed, respectively. Australia finishes 9^th on the list of Complainant countries, filing only 257 cases since 1999 or 1.82% of the total. In Respondent filings, Australia did a little better and is presently ranked 8^th, apparently annoying a Complainant somewhere in 338 cases, or 2.39% of the total filings. Surprisingly, it seems that Australians are far more annoying than New Zealanders, who are ranked 25^th on the list with only 0.5% of Respondent filings against them. There is a lower level of economic activity in New Zealand due to its smaller population but, per capita, they still appear to be less annoying, which is anomalous empirically.

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 In Macquarie Bank Limited (ACN 008 583 542) and Another v. David Seagle [2008] FCA 1417(19 September 2008), the presiding Justice Jagot of the Federal Court in Sydney (unsurprisingly) held in favour of the applicants, a well-known Bank in Australia against the respondent, David Seagle, aka “Mr. Macquarie Westpac Bank”.

Macquarie had made an application for default judgement pursuant to Order 35A rule 3(2)(c) of the Federal Court Rules (Rules). The applicant had also successfully brought, inter alia, claims against the respondent under s. 52 of the Trade Practices Act 1974 (Cth) for engaging in misleading and deceptive conduct.

The respondent is a notorious cybersquatter in the Australian ‘domain name’ and intellectual property sector who has ‘priors’ for similar disputes in the Federal Court. There are a number of WIPO Arbitration and Mediation Centre Administrative Panel Decisions against him, for example see: Macquarie Bank Limited v Seagle [2005] FCA 1239 (15 August 2005) and the WIPO decision Westpac Banking Corporation v Sir Oxford University aka David Seagle Doc Seagle and Mr Oxford University WIPO Case No. D2003-0250. See also WIPO cases D2003-0374 and D2003-0890 (where Seagle was ordered to transfer the domain names macquarie-bank.com and macquariebank.net to the bank), Harvey Norman Retailing Pty Ltd v Oxford University, WIPO Case No. D2000-0944, The Chancellor, Masters and Scholars of the University of Oxford v DR Seagle t/a Mr. Oxford University, WIPO Case No. D2001-0746 and Imperial Chemical Industries PLC v. Oxford University, WIPO Case No. D2001-0292. There are others and I cannot be bothered, but somehow Mr Seagle can.

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In an act guaranteed to pick a fight with two 800 pound gorillas, an attempt to register the mash-up name ‘GOOGLEBAY’ as a trade mark in Australia has failed. This follows a WIPO Panel decision that the same applicant transfer the domain name <googlebay.com.au> to Google Inc.

Trade Mark Opposition

In Google, Inc v Dmitri Rytsk [2008] ATMO 40 (28 May 2008), an Australian Trade Marks Office Decision published on 8 July 2008, an opposition under section 52 of the Trade Marks Act 1995 (Act) by Google, Inc to registration of trade mark application 1118972 for GOOGLEBAY in class 35 was upheld with both section 44 (deceptive similarity of the mark in respect of similar services or closely related goods) and section 60 (trade mark deceptively similar to a mark with a reputation in Australia in respect of both related and unrelated goods) grounds were established. Registration was therefore refused.

The Hearing Officer’s analysis was fairly conventional but there are two points of interest to note.

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In Facebook, Inc. v. Callverse Pty Ltd, (Case No. DAU2008-0007) an Administrative Panel Decision of the WIPO Arbitration and Mediation Center handed down on 4 June 2008, the Complainant was U.S. company Facebook, Inc. (Facebook) which operates a popular online social networking website at www.facebook.com/ and has five registered trade marks for the word FACEBOOK in Australia, two of which were registered prior to the commencement of this proceeding.

The Respondent, Australian company Callverse Pty Ltd (Callverse), at the material time, operated “an established click-to-call service” that was “launching soon” at the website www.facebook.com.au/

An all Australian Panel comprising John Swinson (Presiding), Warwick Rothnie (the barrister behind the IPWars blog) and James Barker, found for the Complainant on the basis that the three elements enumerated in paragraph 4(a) of Schedule A of the .au Dispute Resolution Policy (auDRP), were satisfied, namely:

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The Managing IP World Intellectual Property Survey 2008, which publishes detailed rankings of the leading firms practising intellectual property in each country, has listed Nicholas Weston for the first time since the firm was founded in 2005.

The firm is ranked in two categories: for Trade Mark Prosecution in Australia and for Trade Marks Contentious in Australia. Rankings are based on surveys of clients and recommendations from clients and other practitioners.

According to Managing IP magazine:

"The World IP Survey is not simply a list of the biggest firms, or a list of those that have the biggest case load or are the oldest. Instead it is a qualitative ranking of the leading firms in each category and reveals which firms are rated by their peers for the strength of their expertise and the depth of their ability to service clients."

The IP Handbook 2008, published by Managing IP, includes full results of the survey, stating:

"Clients noted the thoroughness of the firm's paperwork and "attention to detail" ".

No firm can vote for its own inclusion or purchase a listing in the MIP World Intellectual Property Survey 2008 or the IP Handbook, which lists the leading firms in trade marks prosecution and contentious work in 65 jurisdictions. The survey is described by its publisher as “the world’s most detailed and authoritative survey of the IP market."

Details of the survey methodology can be found HERE

Survey results for Asia can be found HERE .

About Managing IP

Managing Intellectual Property is the leading international magazine for IP owners, with more than 8,000 readers across the globe. About two-thirds of readers are senior in-house counsel in multinational companies.

Published 10 times a year, Managing IP provides news, comment, data and analysis. Managing IP is part of the Euromoney Legal Media Group, with offices in Hong Kong, London and New York.

About Nicholas Weston

Founded in 2005, Nicholas Weston is small but mighty Australian law firm delivering trade marks and other commercial legal services to clients worldwide in core sectors of disputes, technology, and brands.

Each professional is a dual qualified lawyer and registered trade marks attorney. Nicholas Weston claims practical implementation of thought leadership. The firm is located on Collins Street, Melbourne in the historic Assembly Hall.

For further details contact Nick Weston or Lea Lewin.

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As of 1 June 2008, a new and more flexible registrant transfer policy comes into effect, allowing domain name registrants to transfer their domain name licence to another eligible entity for any reason. The new policy has been approved by the Australian domain name administrator .au Domain Administration Ltd (auDA) - the policy authority and industry self-regulatory body for the .au domain space.

Key Features of the New Policy

Exact details and wording of the new policy is not yet available. However, the following key features of the policy are available here and can be summarised as follows:

• .au domain names can not be registered for the sole purpose of resale;
• a 6 month holding period for newly registered .au domain names applies;
• after 6 months domain names may be offered for sale/transfer by any means;
• standard transfer forms will be used for processing transfers; and
• auDA will ask parties for voluntary and confidential disclosure of the sale method and price.

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The Board of the Internet Corporation for Assigned Names and Numbers (ICANN)  has approved a new provider of domain name dispute resolution services. It is the Czech Arbitration Court (CAC) in Prague.

The decision was made at a Special Meeting of the ICANN Board of Directors on 23 January 2008 and has just been released.

ICANN effectively runs the internet and is responsible for policies on the registration of domain names and the resolution of disputes about them.

The significance of the decision is global, in that the ICANN Uniform Dispute Resolution Policy (UDRP) provides that complaints about the ownership and registration of domain names must be brought before ‘one of the administrative – dispute-resolution service providers’ approved by ICANN.

At the present, the approved providers are:

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The Hon. Neil Brown QC has just returned from the US where he delivered a paper outlining the process for the arbitration of disputes over internet domain names under the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP scheme essentially deals with complaints by trade mark owners that someone else is trespassing on their trade mark by registering a domain name.

A copy of the paper can be downloaded here.

The paper may be of particular interest to legal practitioners representing clients in proceedings under the UDRP that concern generic Top Level Domains or gTLDs, (eg: .com, .net, .org, .coop, .aero, .biz, .info, .museum, .name, and .pro).

Neil Brown, a contributor to this blog, is a member of the World Intellectual Property Organisation (WIPO) Domain Name Panel and the WIPO Arbitration Centre's List of Neutrals.

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It is a golden rule that all businesses should conduct regular audits of the domain names they have - and those they should have.

In other words, companies should regularly:

• ensure they have all important domain names registered; and
• ensure no-one is making improper use of the company’s business or product names through registering unauthorised domain names.

There are now literally thousands of cases where names have simply been taken, improperly registered as domain names and then used to divert internet traffic to competitors or held hostage until the victim pays up and buys the name back.

And, of course, these cases are in addition to those where the name is used to make money by linking it to a pornography site or a shopping mall selling every imaginable range of goods and services- and some that are unimaginable! That, of course, is a very bad look for your company name to be used in that way.

Just how companies can get into trouble - and get out of it - is shown by two recent cases concerning the ANZ Bank.

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Nicholas Weston, Lawyers & Trade Marks Attorneys is pleased to announce that Professor Mark Davison has joined the firm as a contributor to the Australian Trade Marks Law Blog.

Mark is currently Associate Dean (Undergraduate Studies) at Australia’s Monash University, and the author of several major works relating to intellectual property and competition law. He is the co-author of the third edition of Shanahan’s Australian Law of Trade Mark and Passing Off, the leading reference work on Australian trade mark law and has written The Legal Protection of Databases, a book published in the intellectual property series of Cambridge University Press. He has also published two casebooks dealing with competition law and aspects of consumer protection. In addition to his doctorate on sui generis protection of databases, he has a diploma in Indonesian language and studies and he is the winner of three Australian Research Council large grants.

Besides teaching Contract Law, Intellectual Property, Trade Marks and Commercial Designations and Copyright in the postgraduate and undergraduate courses at Monash, he has taught in various projects in Thailand, Vietnam and Indonesia.

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Nicholas Weston, Lawyers & Trade Marks Attorneys is pleased to announce that The Hon. Neil Brown QC has joined the firm as a contributor to the Australian Trade Marks Law Blog in his capacity as an expert in domain names.

The Hon. Neil Brown, QC is a member of the World Intellectual Property Organisation (WIPO) Arbitration Centre's Domain Name Panel and its List of Neutrals following on from a long and distinguished career in Government and the law. He has been actively involved in Australian politics as a Minister, Shadow Minister, legislator and as a delegate to the United Nations and other international organisations.

Neil has also been appointed to the Panel of Conciliators at the International Centre for the Settlement of Investment Disputes (ICSID) at Washington, USA.

Amongst other positions, Neil has served as:

• Member of Federal Parliament; Commonwealth of Australia, 1969-91;
• Shadow Minister for Communications, 1990-91;
• Shadow Attorney-General, 1988-90;
• Shadow Minister for Justice, 1988-90;
• Shadow Minister for Employment and Industrial Relations, 1985-87;
• Deputy Leader of the Opposition, 1985-87;
• Shadow Minister for Foreign Affairs, 1985-87;
• Minister for Business and Consumer Affairs, Australian Government, 1982;
• Minister for Communications and Minister Assisting the Attorney-General, 1982-83;
• Minister for Employment and Youth Affairs, 1981-82;

In recent years he has also conducted two significant inquiries for the Commonwealth Government. You can read more about Neil’s background here or e-mail Neil here.