Home – New Forums Tell me straight… Legal Advice needed ASAP Reply To: Legal Advice needed ASAP

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Hi Tony,

It sounds like a similar question to one I fielded today. A company had registered Aust. domain names for two of its trademarks. They accidentally let the domain names expire this year and someone grabbed them. The trademark owner made an offer to the new domain name owner but was rebuffed for more money.

I’m no lawyer but this is what I could tell the registered trademark owner.

The Aust domain name authority is aUDA and they have a bunch of policies relevant to domain ownership. You probably want: “Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (2008-05)” (http://www.auda.org.au/policies/auda-2008-05/)

You should also check out “Dispute Resolution Policy (auDRP) (2008-01)” (http://www.auda.org.au/policies/auda-2008-01/)

Amongst other things these policies tell you that if you own a registered trademark and if someone else registers an Aust domain based on this trademark, you can dispute ownership of the domain.

Here is another piece of the puzzle based on an Aust High Court ruling in Apr 2010:

“Focus: ‘Fast tracking’ domain name and trade mark disputes”

“In brief: A recent Federal Court ‘Fast Track List’ decision confirmed that use of a trade mark in a domain name, along with use of the trade mark on associated web sites, can constitute trade mark infringement. This list is an increasingly important part of a trade mark owner’s arsenal in dealing with trade mark infringement and misuse of domain names.”

Another relevant article – record of an auDA domain name dispute based on a trademark claim that was resolved in favour of the trademark owner: http://www.leadr.com.au/auda/Decisions%202010/Decision_auDRP_10_05.pdf

As I said, I’m no lawyer…

You will see that there are fees involved in initiating a dispute claim via auDA and no doubt a bunch of other costs associated with preparing a dispute claim, if legal advice is sought. You could try negotiating a fee to pass the domain names over to the claimant for a lesser amount or you could chose to fight it out with them.

Make your own mind up about the value of the domains currently in your hands.

PS As others have said, make sure you are not dealing with a scam claim.