31 March 2011

Over the past 10 years or so domain names, and their corresponding websites, have for many organisations become a crucially important part of their public presence and branding.

However, some owners (or registrants) of domain names do not appreciate that if one of their domain names expires, they run the risk that another party, whether it be a competitor or a company who specialises in harvesting domain names for profit, will register the domain name themselves.

There are a growing number of companies who wait for domain names to expire and then quickly register them in their own name usually at low cost. The purpose for doing so is to place paid advertisements on the site on the assumption that internet traffic will be drawn to it believing that it is associated with the original owner of the domain name. Secondly, they also wait for the former registrant of the domain name to offer to purchase it back from them for an inflated price. They are called “cyber-squatters”. Even though there are actions that the original owner can take against the cyber-squatter under Australian law, there are practical difficulties when the cyber -squatter is based overseas.

We recently acted for a client who fell prey to a cyber-squatter. They controlled multiple domain names as part of their marketing and branding and allowed an associated company to register one of them. Subsequently, through an oversight,one of the domain names expired and a cyber squatter based overseas re-registered the name within hours of it expiring. Even though our client had rights through ICANN (the organisation that regulates domain names worldwide) to require that the name be transferred to it, such an exercise would have been costly and may have taken several months to complete. Instead we helped the client negotiate more suitable terms upon which the transfer would occur.

We have the expertise and experience in all aspects of domain name management, including issues concerning intellectual property, trade practices and consumer law, and defamation.

For additional information please contact:

James Pergl Tel: 03 95100 366 or