From: Matthew Swinn
Sent: Friday, 8 December 2000 6:21 PM
To: jo.lim@auda.org.au
Cc: David_King@corrs.com.au
Subject: Response to auDA review of policies in .au second level domains


Dear Ms Lim

Corrs Chambers Westgarth ("Corrs") wishes to respond to serveral recommendation of auDA's 
Review of Policies in .au Second Level Domains. Our responses are set out hereunder after 
each recommendation has been restated. Our responses also refer to the response made by 
Melbourne IT Ltd and received by auDA on 27 November 2000 (the "Melbourne IT Response"). 
Where we do not respond to a recommendation, that should be taken neither as our agreement 
with nor our disagreement with the recommendation.

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4.1.1 Eligibility to apply for a domain name licence
a. The proposed use of the domain name licence must fit the purpose envisaged by the relevant 
2LD - refer to Schedule A. b. There must be a declaration of a bona fide intention to use 
the domain name licence for the purpose envisaged by the relevant 2LD. c. A bona fide 
intention to use the domain name licence for the purpose envisaged by the relevant 2LD 
should be demonstrated in accordance with the rules applicable in that 2LD - refer to 
Schedule A. d. It is not considered bona fide to license a domain name for the sole purpose 
of selling it.
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Corrs supports all four parts of recommendation 4.1.1. We also agree with the Melbourne IT 
Response concerning recommendation 4.1.1(d).

In particular, Corrs supports the recommendation that a registered Australian trade mark 
should be sufficient to support a domain name licence.

Given that domain name applicants will often wish to begin using the domain name well before 
the process of registering a trade mark is complete, it is also appropriate to enable domain 
name licences to be supported by a trade mark application.

While there is potential for some abuse of this system (as a person may obtain and use a 
domain name on the basis of a trade mark application which does not ultimately proceed to 
grant) this is an unavoidable function of the conceptual and practical differences between 
the two systems.  We do not think it is appropriate to terminate a domain name licence which 
was first supported by a trade mark application. Any attempt to proceed in this fashion will 
perpetuate the improper registration of business names.

We acknowledge that there is an argument that a domain name system which permits 
registrations on the basis of trade mark applications which do not proceed to grant or upon 
improperly registered business names should be abandoned in favour of a system in which an 
entity may register any domain name it wishes regardless of any connection between the domain 
name and the applicant.  However, we think that the additional hurdles of a trade mark 
application or business name registration are sufficient to avoid the wholesale abuse of the 
domain name system by potential registrants.  This is borne out by the relatively few disputes 
that have arisen over .com.au domain names by comparison with other registries which impose 
no such requirements.


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4.1.2 One domain name licence per entity
The current rule of only one domain name licence per entity be removed.
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Corrs supports this recommendation. The present policy adopted for .com.au domains has led to 
a gross misuse of the various state business name registration regimes as companies and 
individuals alike have improperly registered business names in order simply to support the 
registration of additional domain names in the .com.au domain space.

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4.1.3 Direct derivation of a domain name from an entity name
a. There must be a connection between the domain name and the domain name licence holder. b. 
A connection between the domain name and the name of the domain name licence holder can be 
demonstrated by: i. an exact match between the domain name and the name or trade mark of the 
domain name licence holder; or ii. a direct semantic connection between the domain name and 
the name of the domain name licence holder.
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Corrs supports recommendation 4.1.3(a). One of the key benefits that the restrictive policy of 
the .com.au domain space has provided is (in most
cases) a strong connection between the entity registering a domain name and the domain name 
registered.  This has made it easier for Internet users to locate the web sites which correspond 
with any particular entity. It has also undoubtedly minimised the scope for cybersquatting in 
the .com.au domain space.

We disagree with the Melbourne IT Response that a subjective ruling would be too unreasonable a 
burden for registry operators and registrars to bear. Any subjective assessment required and the 
associated costs can be factored into the fees paid (possibly with additional fees only being 
payable by applicants whose applications require a subjective assessment).

Clearly, an exact match should be sufficient to demonstrate the requisite connection between 
the applicant and the domain name. We acknowledge that a direct semantic connection may be 
desirable, particularly in reducing the instance of improper business name registrations.  
Perhaps applications which are to be considered on the  basis of a semantic connection should be 
accompanied by a statutory declaration stating the nature of the connection.

Difficulties in applying and policing an otherwise desirable policy is not a good reason for 
abandoning the policy.

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4.1.4 Conflict between domain names and trade marks
Domain name licence applicants should acknowledge at the time of application that their 
entitlement to a domain name may be challenged by a third party with existing trade mark rights 
in the domain name.
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Corrs supports recommendation 4.1.4.

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4.1.5 Renewal period for domain name licences
All domain name licences should be subject to a specified renewal period, and domain name licence 
holders should be required to provide evidence of continued eligibility to hold the licence at 
the time of renewal.
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Corrs supports recommendation 4.1.4 and agrees with the additional comments made in the Melbourne 
IT Response.

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4.2.1 Restriction on licensing of generic, geographic or objectionable names Retain the current 
policy restricting the licensing of generic, geographic and objectionable domain names and apply 
it across all open 2LDs. Adopt the following 'reserved list' approach: a. clear definition of 
'generic', 'geographic' and 'objectionable' will be developed with reference to appropriate sources 
(eg. Yellow Pages Index); b. domain names that have to date been rejected by the current registrars 
for being generic, geographic or objectionable will be placed on a reserved list; c. new 
applications for domain names that may be considered generic, geographic or objectionable may be 
referred to auDA; d. if the domain name is determined by auDA (according to the definition) to be 
generic, geographic or objectionable, then it will be added to the reserved list; e. applicants 
can challenge domain names on the reserved list, and auDA will determine whether the name should
remain on the reserved list or whether changed circumstances mean the name can be licensed; and 
f. restrictions in relation to the registration of generic or geographic domain names should yield 
if the applicant seeking domain name registration can provide evidence of trade mark rights in the 
domain name.
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Corrs supports recommendation 4.2.1.  Despite historic anomolies which have resulted in the 
registration of certain generic domain names, the recommendation proposed is consistent with our 
view concerning direct derivation referred to in relation to recommendation 4.1.3.  We do not think 
that the difficulties inherent in this recommendation are insurmountable.

In relation to geographic names, there may be scope for the restriction to yield if the applicant 
seeking registration can provide evidence of some other entitlement (not a trade mark) to the name. 
For example, regional representative bodies, municipal authorities and so on may wish to register 
their regional/municipality names as domain names as part of the community resource provided by 
such entities.

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4.2.2 Licensing of generic and/or geographic names
Relax the current policy and enable licensing of generic and geographic domain names using an 
appropriate licence allocation system, such as a market-based one.
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See our comments in relation to recommendation 4.2.1.

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4.3.1 Introduction of new .au 2LDs
Introduce new 2LDs in the .au domain space, subject to the ICANN experience of introducing new gTLDs.
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Corrs supports recommendation 4.3.1.

We think that special purpose second level domains can be helpful in locating a particular entity, 
particularly if, like the Yellow Pages, the 2LDs are divided up by category in order to help users 
find a particular entity.  So, for example, McDonald's Restaurants might be found at mcdonalds.restaurant.au 
and McDonalds Engineering, would be found at mcdonalds.engineering.au.

The formation of new categories would avoid the problems experienced by companies with the same name 
under the present .com.au regime where "the first in, best dressed" principle means that the "second-
in-line" firm has to apply for a domain name with a name that may not be the same as that under which 
it trades, which can cause confusion.

The one proviso to new 2LDs is that they be "closed" with entry limited only to those parties that can 
demonstrate that they qualify for registration in a particular 2LD. Any prospective registrar of a new 
2LD under the .au ccTLD should, like prospective registrars for gTLDs under ICANN's new TLD program, be 
required to demonstrate that they will meet minimum standards concerning, for example, "sunrise" periods 
for registered trade mark owners, the possibility of removing a domain name registrant which cannot 
prove its eligibility for registration and an ability to implement a satisfactory dispute resolution 
policy.

One of the advantages of a restricted or closed 2LD is that applicants would have to prove qualification 
thus making cyber-squatting less possible and less attractive.

The administration of numerous 2LDs ought not to be beyond the capability of a small number of operators 
provided that the 2LDs are "closed" and subject to strict controls.

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4.3.2 Introduction of a system of gateways
Consideration be given to the introduction of a gateway structure, following consultation, along the 
lines of one or more of the possible models.
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Corrs supports recommendation 4.3.2.


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4.5.1 Retrospectivity and prospectivity
Changes to domain name eligibility and allocation policies will not have retrospective effect for current 
domain name licence holders, and will only apply to existing domain name licences at the time of 
re-registration.
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Corrs supports recommendation 4.5.1.

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4.5.2 Dispute resolution procedure
a. Dispute resolution procedures should apply to:
i. all open 2LDs; and
ii. closed 2LDs on an opt-in basis, with appropriate modifications if necessary. b. There should be two 
levels of dispute resolution procedure: i. the first level should deal with due process - ie. where an 
applicant wishes to contest the implementation of a policy within a domain by a registrar; and ii. the 
second level should deal with bad faith registration and/or use of a domain name - ie. referral to a 
dispute panel for enforcement of third party rights. c. At the first (due process) level: i. there 
should be a first appeal initially to the registrar; ii. there should be a second appeal to an independent 
arbitrator; iii. the arbitration should be compulsory and binding on the applicant, the domain name 
licence holder and all registrars; iv. the domain name should be frozen pending arbitration; v. only an 
eligible applicant should have access; and vi. the remedy should be restricted to registration of the 
domain name. d. At the second (bad faith) level: i. there should be an appeal to an independent arbitrator; 
ii. the arbitration should be binding on the applicant, the domain name licence holder and all registrars; 
iii. it should be restricted to bad faith registration and/or use of a domain name; iv. the domain name 
should be frozen pending arbitration; v. only eligible applicants should have access; and vi. the remedy 
can be cancellation of the registration or transfer of the domain name to a successful applicant.
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Corrs supports recommendation 4.5.2 and recommends the adoption of the ICANN UDRP in relation to the 
second (bad faith) level of disputes. This policy has been successful to date in the gTLD name space and 
we think that there are strong advantages to a policy which can be used in relation to all domain names, 
not just those in the gTLD name space.

In addition to consulting the World Intellectual Property Organisation in order to formulate a policy 
taking Australian law into account, as suggested in the Melbourne IT Response, we would also recommend 
consulting the Intellectual Property Society of Australia & New Zealand (IPSANZ) and the Law Council 
of Australia, Intellectual Property Committee. _____________________________________________

Enquiries about this response may be directed to:

Matthew Swinn
Solicitor
Corrs Chambers Westgarth