The auDRP and the UDRP are Dispute Resolution procedures available to prevent “cybersquatting”. The auDRP is specific to “.au” domain names, and the UDRP covers generic top-level domain names (.com, .net, .info, and similar).

While the auDRP is patterned after the UDRP, there are certain distinctions. One of the more important is the type of rights that you have to have to bring a claim.

The respective requirements are as follows:

auDRP - The domain name is identical or confusingly similar to a name, “trademark” or “service mark” in which the complainant has rights.

UDRP - The domain name is identical or confusingly similar to a “trademark” or “service mark” in which the complainant has rights.

The key difference here: the auDRP requirement is broader, and easier to satisfy.

Why? It’s the inclusion of the word “name”. The UDRP requires a “trademark” (or “service mark”, which is essentially another word for “trademark”). “Trademarks” in the UDRP are viewed as legal rights: either registered trade marks, or common law rights than can only be established through demonstrating reputation in a particular name. Reputation requires use of the name. So if you don’t have a registered trade mark, and you don’t have substantial use of your name in the marketplace, your chances of succeeding at the UDRP are probably low.

The auDRP’s gatekeeper is more generous: it is open to argue that a registered business or company name is sufficient, regardless of whether it has been used or can be called a “trade mark”. Your own personal name could also meet the test, regardless of whether you have a commercial or other widespread reputation.

By way of example, last week a UDRP panel refused to transfer the domain names “heberry.com” and “sheberry.com” to the owner of the well-known BLACKBERRY mark, because the owner of the BLACKBERRY mark did not have sufficient reputation or use of the name BERRY by itself. This takes a “hard line” approach to establishing trade mark rights sufficient to support a UDRP case.

By contrast, a Panel hearing a matter under the auDRP found that the Complainant had rights in the name 1300homeloan, even though it had no registered trade mark reflecting this name, had never used the name in the marketplace, and had no relevant registered business or company name. All the Complainant could show was that it had purchased “1300homeloan” as a “Smart Number” at a government auction. Under the UDRP the Complainant would have failed the first hurdle, as it had no trade mark rights in “1300homeloan” (no registration, no use). Under the auDRP it could proceed with the rest of its claim.

The point: if you want to protect your brand from cybersquatters in the all-important top-level domain name arena (which includes .com domain names), best to register a trade mark.

- Aaron Newell

Read more about cybersquatting and domain name disputes.