In this post we take a look at yet another complaint directed at the Australian Vaccination Network inc (AVN). It’s from the usual suspects. This time, they want some of AVN’s domain names.
The website you are now viewing was recently the subject of a complaint about its name.
Why? Because of the terms ‘Australian’ and ‘sceptics’. As you can see, both these terms appear in the domain name. And two organisations took exception to that. They jointly complained to ICANN, which is the international body regulating domain names, saying we had no entitlement to use these terms in our domain names.
How did they work that out? Well… it’s a long story. First of all, lets get acquainted with the two organisations who made the complaint:
- NSW Assoc. Y0133609 – otherwise known as Australian Skeptics Inc. and publishers of a magazine called ‘The Skeptic’, with approximately 2,000 subscribers.
- VIC Assoc. A0026705U – otherwise known as Australian Skeptics (Victorian Branch) Inc.
In a nutshell, the two groups figured that since their names indicated they were Australian and sceptics (although with different spelling) they should have exclusive use of the terms. To argue this, they proposed that calling themselves Australian sceptics for many years, and selling a magazine and other merchandise sporting one or both terms, meant they had procured the equivalent of a trademark. And according to them, we had infringed that trademark by registering a similar domain name.
Click here to read the Complaint.
They thought they had a trademark
To begin with, we need to note that neither of the two organisations have a registered trademark. No big deal there. It is possible to have what’s known as a common law mark. By way of explanation, that’s what people claim when they find someone using a mark they’ve also been using themselves. Perhaps they neglected to register it but now feel they should have. In that case they can retrospectively declare it to be a common law mark in order to pursue legal action against the other party. In other words, it’s basically the equivalent of a trademark but without registration.
But this all assumes the mark (in this case, ‘term’) is actually registrable. There were two serious problems with this approach.
First, trademarks are for the exclusive use of a single entity. Yet in this instance, there were two separate entities (the two organisations) claiming a common trademark. They were not formally related, despite the fact one group had the word ‘branch’ in its name. In fact, as far back as 1996, they went to great lengths in the magazine ‘The Skeptic’ to make it clear that not only was there no formal branch structure in their organisation, but there was NO relationship between the different groups. Today they self-describe as “a loose confederation of groups across Australia”.
So our first task was to get clarification regarding who was claiming the trademark. Unfortunately, the ICANN process didn’t allow ‘pre-hearing’ questions and clarifications. You get a few thousand words to make your case by way of a response, and that’s it. So we incorporated this query into our response.
The second serious problem the complainants had was that the term ‘Australian sceptics’, either spelling, is simply not registrable as a trademark. Trademarks have to be distinctive and not merely generic. You can’t just pick a couple of words out of the dictionary and trademark them. This might explain why, in approximately 30 years of existence, neither association has been granted one.
These two fundamental problems meant they had precious little to go with. But there is more. Please take the time to read our full response to the complaint. It reveals some rather interesting facets about this collection of would be ‘sceptic police’ (or should that be ‘thought police’?).
Click here to read our Response
For further reading please see our Annexe
This was an interesting exercise because of some of the information we uncovered in the process. If you want to understand more about those who support the abusive attackers trying to bring down the AVN, please read our full response, linked above.
We received the complaint just before Christmas day and the deadline for response was January 9. Great timing. We quickly assembled a small team and told our family members to enjoy their holiday without us. At the same time, we received a directive from NSW Fair Trading to change our name. No reasons given nor any hints as to what might be an acceptable new name. The deadline if we wanted to ask questions was, again, January 9. Again, great timing.
We have no idea if these complaints were coordinated and designed to overload our resources. It is more than a little suspicious that two formal complaints fell into our lap at the most inconvenient time of year, with professionals and volunteers away or not contactable.
The decision was, of course, in our favour. In fact the adjudicator didn’t even get past first base. The complainants had no trademark nor, in the opinion of the adjudicator, common law mark. So there could be no infringement.
“The Complainants provided a bald statement that they were founded in 1981 and that “AUSTRALIAN SKEPTICS is a common law mark that can be continually associated with goods and services provided by the complainants.” In terms of evidence, very little was provided which fell way short of what is needed to prove secondary meaning in the mark.
…As Complainants have not succeeded on the first limb of the Policy, namely paragraph 4(a)(i), it is not necessary for the Panel to make a further inquiry into or reach a decision on the issues of paragraphs 4(a) (ii) and (iii).”
Click here to read the full judgement.
Some more reading for those who are interested
We requested ‘pre-hearing’ clarifications on the process and some other things. They can be read here:
As mentioned above, these queries were never answered, which is one way to discover the ICANN process. They were however on file when the adjudicator sat to consider the complaint. Also on file was an absence of response to them.