Announcements

Date of announcement : 12 March 2003 -

Second case handled by the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center - Complainant (GlobalCenter) Wins

On 5 March 2003, an administrative panel of the World Intellectual Property Organisation (WIPO) Arbitration and Mediation Center rendered its decision in the second dispute heard under auDA's new .au Dispute Resolution Policy (Policy) (Case No. DAU 2002-0001).

auDA is the Australian Government-endorsed industry self-regulatory body with responsibility for the regulation of domain names in the .au domain. The Policy became effective from 1 August 2002 with the objective of providing a more cost-effective and expeditious alternative to litigation for domain name disputes.

The Policy applies to all domain names which are open .au Second Level Domains (at present those that end with com.au, net.au, id.au, asn.au or org.au) issued or renewed after 1 August 2002. The policy applies strictly to disputes between domain name holders and parties which claim competing rights to the license for use of the disputed domain name(s).

Once the policy is applied, the domain name holders are subject to a mandatory administrative proceeding for complaints made on any of the specified grounds held at one of auDA's approved dispute resolution service providers.

To succeed in this proceeding, a complainant needs to establish that:

• the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the complainant has rights [4(a)(i) of the Policy]
  
• the holder of the disputed domain name has no rights or legitimate interests in respect of that domain name [4(a)(ii) of the Policy]
  
• The disputed domain name has been registered or subsequently used by the Respondent in bad faith [4(a)(iii) of the Policy].
  

The decision handed down in this case related to a dispute over the domain names 'globalcentre.com.au' and 'globalcentre.net.au'. The panel responsible for arbitrating the dispute comprised three members and included Mr Philip Argy (Presiding Panelist), Alan Limbury, and Alistair Payne. The Panel found that the complainant had proven all of the requirements of paragraph 4(a) of the Policy and ordered that the disputed domain names be transferred to the complainant.

The complainant, GlobalCenter Pty Ltd (www.globalcenter.net.au) commenced operations as a commercial data and ISP hosting centre in 1997. The complainant asserted that the respondent, Global Domain Name Hosting Pty Ltd (Global Hosting), had intentionally registered the confusingly similar domain names 'globalcentre.com.au' and 'globalcentre.net.au' in order to subvert business from the strong international and national reputation held by GlobalCenter in the industry.

GlobalCenter claimed that the domain names had been registered by Global Hosting in order to take advantage of both typographical errors and spelling variations existing between the US and Australia.

GlobalCenter also relied on the assertion that the Disputed Domains (as at the date of the Complaint) were inactive and made no bona fide offering of goods or services and had previously used the Disputed Domains as a means to re-direct traffic to the website of a competing data centre affiliated with the respondent.

On the facts and evidence submitted, the Panel found that there was no evidence that Global Hosting had a legitimate interest in the globalcentre domain names and that the domain names were either registered or subsequently used in bad faith.

While there is no appeal process for the decision, the registrar involved is required under the rules to wait for a period of 10 days before completing the transfer of the domain names to the complainant thereby allowing sufficient time for the commencement of any court proceedings.

GlobalCenter engaged the services of intellectual property specialists at Sydney based law firm Gilbert + Tobin who advised on and handled the dispute.

For more information, please contact:

Kate Harrison / Heather Tropman
Gilbert + Tobin
2 Park Street
SYDNEY NSW 2000
Australia
+61 2 9263 4000 (Office telephone)
E-mail: kharrison@gtlaw.com.au ; htropman@gtlaw.com.au