Thanks Erezy for the name. Now we can have some more fun.
I can't help myself but to comment further, as I love getting into the nitty-gritty of protecting domain name ownership. Especially from silly people who lose their names and then want them back for free with bullying tactics.
First let me state:
I am not a lawyer, these comments of mine are personal opinion. I recommend seeking legal council and not acting on my advice alone.
That said, I consider myself a pretty good domainer/domain broker who understands auDA policy. I've had some recent legitimate wins, put it that way.
Firstly; in terms of the complainants "common law property rights".
I cut and paste the following excerpt so I don't have to re-invent the wheel, which directly relates to your case.
"There are no such proprietary rights arising from the registration of Australian domain names. A party that registers a domain name does not own the name but holds a
licence to use it for a specific period, subject to terms and conditions that include restrictions on the transfer of the licence. A .au domain requires a registered trademark, company or registered business name corresponding to the domain name. They are registered in Australia and regulated by .au Domain Administration Limited (auDA)."
So, their "common law property rights" statement wields no power. You are holding a
license. Not their property rights. It's nothing but a puff of wind. (personal opinion).
Secondly; a trademark search for "mineral makeup" in Australia shows 6 companies who have indeed trademarked "mineral makeup" after their name. Notice how no one has been allowed to trademark "mineral makeup" on its own? Because it is two generic words. (Just like RealEstate.com.au is not allowed to trademark "Real Estate" on its own.
Thirdly; I notice your parking page "mineralmakeup.com.au" is spot-on in terms of adhering to auDA's
2012-04 - Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs which clearly states:
SCHEDULE A - ELIGIBILITY AND ALLOCATION RULES FOR ALL OPEN 2LDS
First come, first served
1. Domain name licences are allocated on a ‘first come, first served’ basis. It is not possible to pre-register or otherwise reserve a domain name.
This is you. They lost the name and you were "first come" when it became available on the drops. They lost it. They didn't bother trying to secure it first again on the drops. You grabbed it fair and square (assuming your ABN is up to date).
Registrants must be Australian
2. Domain name licences may only be allocated to a registrant who is Australian, as defined under the eligibility and allocation rules for each 2LD.
I am assuming you pass all the normal qualifications for owning the names (such as valid ABN etc).
I am assuming you were not registering this domain name for "sole purpose" of selling it.
Then we come to how you have legally "parked" the two generic-words domain name:
SCHEDULE C - ELIGIBILITY AND ALLOCATION RULES FOR COM.AU
The com.au 2LD is for commercial purposes.
The following rules are to be read in conjunction with the Eligibility and Allocation Rules for All Open 2LDs, contained in Schedule A of this document.
1. To be eligible for a domain name in the com.au 2LD, registrants must be:
a) an Australian registered company; or
b) trading under a registered business name in any Australian State or Territory; or
I'm not going to go and check this, but again, I assume you meet these requirements...
And here is the big one for you:
Schedule C - contd...
3. A domain name may also be registered in the com.au 2LD under paragraph 2(b) for the purpose of domain monetisation, in accordance with the explanation of “domain monetisation” set out in the Guidelines on the Interpretation of Policy Rules for the Open 2LDs, provided that the following conditions are met:
a) the content on the website to which the domain name resolves must be related specifically and predominantly to subject matter denoted by the domain name; and
On my testing of your name, you meet this requirement, as I can clearly see on the parked page for domain monetisation:
Matte Mineral Makeup, Cream Mineral Makeup, etc...
b) the domain name must not be, or incorporate, an entity name, personal name or brand name in existence at the time the domain name was registered*.
"Mineral Makeup" is not an entity name, personal name or brand name. It is two generic words.
* Definitions:
- “entity name” means the name of an Australian registered company or incorporated association as listed with the Australian Securities and Investment Commission (ASIC), or the name of an Australian government body. It does not include a registered business name;
- “personal name” means the given name(s) and/or last name of a person; and
- “brand name” means the name of an identifiable and distinctive product or service, whether commercial or non-commercial.
This
brand name part is interesting. Because auDA are saying a
brand name means an
identifiable and distinctive product... I don't think it should have been worded that way at all when this sentence was created for policy. If you literally take this meaning, this would mean the word "computer" would be a
brand name, because it is an
identifiable and distinctive product. Which would mean we are all not allowed to monetise a domain name with the word
computer in it.
Basically, no one owns the
brand name "mineral makeup" as it is two generic words, as you said initially in your post. And you were right.
So, as far as auDA policy goes, it looks like to me that you have parked the name correctly to meet Domain Name Eligibility and Policy Rules (using the Schedule C domain monetisation clause.)
So...
I must state again.
I am not a lawyer and I am not giving you legal advice. This is just my personal opinion.
But if I were in your position, I would
retract my offer. They didn't accept it. You made them an offer and they said they will think about it for 5 days.
If you want to retract your offer, I would do so immediately, and this is exactly what I would say:
###########
Due to you not immediately accepting my offer, I have had time to seek further opinion from fellow professional associates in my industry and have researched this matter more thoroughly.
Although I believed on your first contact that I was not in breach of auDA policy of owning this domain name, I believed you when you said I was not allowed to own the name.
I now believe you are wrong. I now believe beyond doubt that I am allowed to own the name mineralmakeup.com.au under auDA policy.
I also believe you do not "
have common law property rights to it as a trademark that has been used in the public domain for over 11 years" because there are no such proprietary rights arising from the registration of Australian domain names. A party that registers a domain name does not own the name but holds a
licence to use it for a specific period, subject to terms and conditions that include restrictions on the transfer of the licence. A .au domain requires a registered trademark, company or registered business name corresponding to the domain name. They are registered in Australia and regulated by .au Domain Administration Limited (auDA).
I hereby officially withdraw my intention of selling mineralmakeup.com.au to you.
I legitimately registered the name when you allowed your license to expire on it.
If you would like to make a more realistic offer for it in the future, I may consider it.
For now, I am currently considering developing the name with my girlfriend who runs makeup workshops. In the meantime, I am entitled the license for the name according to auDA policy and am currently correctly obeying policy regulations.
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Again, don't do anything because I've gone ahead and written something in an open forum.
I'm just saying... This is what
I would do