Protect your web domain: register a trademark!

money-tug-war-concept-competition-illustration-featuring-cartoon-business-woman-meg-business-man-bob-competing-334385071 (2)Four good reasons why relying merely on a licence from a domain registrar and rights under the consumer law might be inadequate legal protection of your domain name.  The answer: register a trademark!

  1. Mantra Group Pty Ltd v Tailly Pty Ltd [2010] FCA 291. The plaintiff was the registered owner of the trademark “Circle on Cavill” and was successful in claiming trademark infringement by a competitor who not only registered numerous domains incorporating the “Circle on Cavill” trademark at the secondary domain level but also used the trademark in the source code of its websites in order to try to achieve better search engine optimisation.
  2. REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559. The licensee of the domain “realestate.com.au” brought a case against the licensee of the domain “realestate1.com.au”. The claim was made on two alternative grounds: a misleading and deceptive conduct claim as well as a claim for trademark infringement. Ultimately, the court held that there had been no misleading or deceptive conduct as the names were sufficiently different, but that there had been trademark infringement. The court explicitly noted that: “the threshold for trademark infringement is lower than that required to establish misleading or deceptive conduct.” Without a registered trademark, it may well have been the case that the plaintiff would have had no ability to prevent the use of “realestate1.com.au” by its competitor. This case illustrates the importance of considering registration of the domain name itself as part of a branding strategy, particularly where the secondary level of the domain is unlikely to be registrable as a trademark.   It should be noted that a recent attempt by REA Group Ltd to register the domain “realestate.com.au” as a word only mark (as contrasted with the word and image mark sued upon in the proceedings) has been opposed by no less than eight parties.
  3. Bob Jane Corporation Pty Ltd v ACN 149 801 141 [2013] FCA 1255. In a battle between Bob Jane and his son, Rodney Jane’s plaintiff company (and the owner of the trademark “Bob Jane”) was successful in preventing the use by Bob Jane of the trademark in, amongst other things, the domain names “bobjaneglobal.com” and “janetyres.com”.
  4. Kosciuszko Thredbo Pty Ltd v Thredbonet Marketing Pty Ltd (2014) 106 IPR 434. In a recent decision of the Full Federal Court, the plaintiff (being the owner of the Thredbo ski resort) attempted to prevent a competing accommodation bookings service from using the word “Thredbo” in its domain name. The plaintiff’s misleading and deceptive conduct and passing off claims were unsuccessful on the basis it had not demonstrated a right to exclusive use of the word “Thredbo”. Notwithstanding that “Thredbo” was a geographical term and might not have been registrable on its own, had the plaintiff attempted to trademark the entirety of its domain or as part of an image mark (as occurred in the REA case above), the plaintiff might have stood a better chance of preventing the competing use of the term in a domain name.

Peter Moran is a commercial lawyer at Norton Gledhill with a particular focus on Intellectual Property and technology law.

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Google photo

You are commenting using your Google account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s