General 

Dispute over domains

Neddy 1354 Views

An interesting dispute over two Australian domain names was recently resolved via auDRP (.au Dispute Resolution Policy).

The domains in question were schoolinterview.com.au and schoolinterview.net.au. Two generic words.

The Complainant is the registrant of the “plural” name – schoolinterviews.com.au; and provides a school interview booking service, such service being used for parent-teacher interviews, enrolment interviews etc. They are licensed to use the brand name, images and booking system for schools in the Asia Pacific region. Such services are identical in appearance to those offered by licensees in U.K, New Zealand and Canada.

The Respondent is a competitor that provides a school based interview booking service for Parent-Teacher interviews only under the “brand name” Parent Teacher Online Lite or PTO Lite which are accessed via the “disputed domain names”. The names are re-directed to their site parentteacheronline.com.au.

Making a complaint

What a lot of people don’t know is that there are “three legs” to making a complaint, and that the Complainant has to win all three for the complaint to be upheld.

Paragraph 4(a) of the Policy provides that a person is entitled to complain about the registration or use of a Domain Name where:

i) the Domain Name is identical or confusingly similar to a name, Trade Mark or service mark in which the complainant has rights; and

ii) the respondent to the complaint has no rights or legitimate interests in respect of the Domain Name; and

iii) the respondent’s Domain Name has been registered or subsequently used in bad faith.

So who won and why?

The single member Panelist decided in favour of the Respondent, and dismissed the complaint.

The Panelist said this:

It is unfortunate that this dispute has arisen due to the generic words of the various Domain Names. There is obvious vigorous business competition between the Complainant and the Respondent. However, I do not find that the Domain Names were registered or that they were being used in bad faith.

Here is a link to the case – it’s worth a read.

Conclusion

The following is my opinion:

Making a complaint over domains that contain solely generic words (particularly where they are being properly used) is very “brave” and unlikely to succeed.

What do you think?