COMPANIES SHOULD CONDUCT AUDITS OF DOMAIN NAMES

PRESS RELEASE

CALL FOR COMPANIES TO CONDUCT AN AUDIT OF THEIR DOMAIN NAME STABLES TO AVOID FRAUD AND DAMAGE TO THEIR GOOD NAMES


A leading international domain name arbitrator has called on Australian companies to conduct an audit of the domain names they have.

The arbitrator, The Hon Neil Brown QC, a former Federal Government Minister, said that it was important to do this:

*to ensure that companies have all possible domain names registered; and

* to reduce fraud and other improper uses of domain names that can damage a company’s good name.

Mr Brown was speaking just after decisions had been handed down by arbitrators at WIPO (the World Intellectual Property Organisation) in two domain name cases where separate cybersquatters had tried to capture the name of the ANZ Bank in the domain names anzcard.com and anzcards.com.

THE FIRST CASE - anzcard.com

“ The first domain name that someone registered was anzcard.com, an obvious one to register”, Mr Brown said, “as it is well known that all banks issue credit cards.

In fact, it is such an obvious one to register that you would think the ANZ Bank would have registered the name itself.

“But in the actual case of anzcard.com, it was registered by someone in Vietnam, but had not yet been linked to a website, so the ANZ Bank saved the domain name by the skin of its teeth and retrieved the domain name before it had been used.

The arbitrator who decided the first ANZ Bank case on 17 August 2007, found that the domain name anzcard.com was likely to confuse people with the real ANZ name, that the person who registered it in Vietnam had no legitimate interest in the name and that he had registered and used it in bad faith. On the bad faith aspect the arbitrator said:

“In the circumstances of this case, (the cybersquatter’s) lack of active use of the domain name is likely to disrupt the business of (the Bank) since it could give those Internet users that will look for information on (the Bank) … the impression that (it) is not present on the Internet. By registering the domain name (the cybersquatter) further prevents (the Bank) from being present (on the internet) under a domain name that seems to be a natural domain name to use for (the Bank). … there appears to be no conceivable good faith use that could be made by (the cybersquatter) of the disputed domain name. “

So the ANZ Bank won and the domain name was transferred to it.

Other companies have not been so lucky. By the time some companies get hold of domain names, they have been linked to dodgy financial or pornography sites or, worse, the websites of their competitors. Indeed, this has happened to the ANZ Bank as will now be seen from the second case.


THE SECOND CASE –anzcards.com

In the second ANZ Bank case, decided at WIPO on 25 September 2007, someone in Mumbai in India had registered the domain name in the plural form, anzcards.com.

The arbitrator found in this case that the ANZ name and trademark must have been adopted to create the impression of an association with the ANZ Bank, its products and services.

Secondly, the arbitrator found there was bad faith because the domain name had been linked to financial services websites of a whole series of doubtful providers, giving rise to confusion with the ANZ and trading on that confusion to divert consumers away from the bank and into the arms of those rival sites.

Indeed, that is how the domain name has been used and apparently is still being used, even although the case has been decided. If you go to www.anzcards.com , you go into a new world of credit cards and other financial products, some of which are apparently links to rivals of the ANZ Bank.

If you put the word ‘adult’ in the search engine on the site, an even more exotic array of offerings is presented.

The danger, of course, is that some internet users will think that whatever is offered on a website with the name www.anzcards.com, comes with the approval or endorsement of the ANZ Bank.

The ANZ Bank succeeded in the second case as well as in the first and had the domain name transferred to it. But in the meantime, who knows what damage had been done or how many internet users had bought financial or other products through the site, believing they were using an official ANZ site.

THE LESSONS

So the lessons are: companies should try to prevent these problems from arising by making sure they have as many of their company names and services covered by domain names as possible - the registration fees will turn out to be a good investment.

But if the company’s name has been improperly used as a domain name, it should take legal advice quickly on how you can get it back where it belongs – with its rightful owner.

Companies should therefore conduct a regular audit of

* what domain names they have;

* what ones they could have;

* whether any possible names with misspellings, like ‘yarhoo’ or ‘cokacola’ have been registered, as is often the case.

Companies now just have to recognise that the costs of registering multiple domain names, even names that they will never use, is just one of the costs of doing business.

Mr Brown sits on panels in Geneva, the USA, Prague, Hong Kong and Kuala Lumpur to arbitrate on domain name disputes.


The Hon Neil Brown QC
(03) 9534 5436
0400 123 254
nabrownqc@yahoo.com