Domain names and trade marks

A domain name is an address made up of letters or a combination of letters and numbers, where internet users can access a business’s website. A domain name registration can also function as a trade mark by distinguishing the source of goods/services from other traders.

Use of a domain name can be used to demonstrate first use or prior use of a trade mark so as to establish a common law claim to ownership of the corresponding trade mark. A domain name however does not provide a right to register that name as a trade mark. Conversely, a business name, company name or a registered trade mark does not provide a priority right to a domain name over another trader.

Registering a domain name does not give full rights to the name. Any party that registers a domain name does not own the name; the domain name can be used for a specified period according to certain terms and conditions. When filing a domain name request, the applicant automatically agrees to and is responsible for ensuring they are eligible to use the domain name.

A trade mark is a sign or symbol that functions to distinguish the source of origin of one traders goods and services from another trader. A registered trade mark gives the owner exclusive rights under the Trade Marks Act 1995 (Cth) to take an infringement action where an alleged infringer uses the mark as a trade mark which is:

  1. substantially identical, or deceptively similar, to the registered mark; and
  2. used upon or in relation to the same or closely related goods/services specified in the registered trade mark.

A domain name can be revoked in trade mark infringement situations through the .au Dispute Resolution Policy. If the domain name is registered but is not used in the course of trade then an infringement of the trade mark is unlikely to be sustained. Conversely, You may not be able to stop another party from using your preferred domain name even if it is identical to your trade mark if the goods/services are not the same or closely related in a trade sense. In this latter context the trade mark owner can still sue under s 18 of the Australian Consumer Law for ‘misleading and deceptive conduct’. Further, in Common Law, the trade mark owner can sue for Passing Off as long as the trade mark has reputation, the website domain name misrepresented your trade mark, and you, as the trade mark owner, incurred damage.

.au Dispute Resolution Policy

The .au Dispute Resolution Policy is established by the .au Domain Administration for arbitrating cybersquatting cases involving .au domains. The policy provides a quicker, more economical route to litigation.

auDRP – Elements of a Complaint

The auDRP is an administrative proceeding, and as a general guide, a complainant’s grounds for disputation under the auDRP include the following:

  1. Respondent’s domain name is identical or confusingly similar to a name, trade mark or service mark in which the complainant has rights;
  2. Respondent has no rights or legitimate interests in respect to the domain name; and
  3. Respondent has registered or subsequently used the domain name in bad faith.

In the administrative proceeding, the complainant bears the onus of proof of the above grounds.

Comments on Elements for Claimant

  1. Respondent’s domain name is identical or confusingly similar to a name, trade mark or service mark in which the complainant has rights
    • Generally, ownership of a registered Australian trade mark is sufficient to establish threshold requirement of the complainant having rights in a trade mark [TrueLocal Inc., Geosign Technologies Inc. and True Local Limited v. News Limited, WIPO Case No. DAU2006-0003 (2006), <truelocal.com.au>];
      • Panels have tended to take the view that a pending or even accepted trade mark application, which has not proceeded to registration, does not satisfy the requirement of the complainant having rights [GE Capital Finance Australasia Pty Ltd v. Dental Financial Services Pty Ltd, WIPO Case No. DAU2004-007 (2005), <carecredit.com.au>];
    • For unregistered trade marks, the complainant generally needs to establish it has an unregistered right in Australia;
      • For unregistered trade mark rights to exist in Australia, the complainant needs to have a reputation in Australia in respect of the unregistered trade mark – this is usually established by evidence of use in commerce such as sales and revenue data in Australia [GE Capital Finance Australasia Pty Ltd v. Dental Financial Services Pty Ltd, WIPO Case No.DAU2004-007, <carecredit.com.au>];
    • The test for identity is that there is “essential or virtual identity” between the domain name and the trade mark or name in which the complainant has rights.
      • The test for confusing similarity is typically undertaken by a comparison of the domain name with the trade mark or name alone, independent of the other marketing and use factors that might be considered in a trade mark infringement or a misleading and deceptive conduct case. Application of the confusing similarity test typically involves a straightforward visual or aural comparison of the trade mark or name with the alphanumeric string in the domain name, to determine the likelihood of internet-user confusion. In order to satisfy the test for confusing similarity, the relevant trade mark or name would generally need to be recognisable as such within the domain name. However, each case is judged on its own merits [GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001 (2003), <globalcentre.com.au>];
      • As figurative, stylised or design elements in a trade mark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing the identity or confusing similarity of a domain name with a trade mark [Lance John Picton v. KK Factory Seconds Online / Dean James Mackin, WIPO Case No. DAU2007-0005 (2007), <factoryseconds.com.au>];
  2. Respondent’s have no rights or legitimate interests in respect of the domain name
    • A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once a prima facie case is made, the burden of production shifts to the respondent, requiring the respondent to provide evidence or plausible assertions demonstrating rights or legitimate interests in the domain name [Jacuzzi, Inc. v. Wangra Pty Ltd, WIPO Case No. DAU2005-0001 (2005), <jacuzzispas.com.au>];
    • A respondent will be taken to have demonstrated rights or legitimate interests in a domain name where, before any notice of the subject matter of the dispute, it has bona fide used, or prepared to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services;
    • The key issue is whether the respondent’s use of the domain name is bona fide – i.e., is in good faith. To determine whether a respondent’s use of a domain name is in good faith requires a consideration of the respondent’s motivation for undertaking that use; which, in turn, requires an evaluation of all the facts and evidence. Relevant facts include: the degree of similarity of the domain name to the complainant’s mark; the respondent’s awareness of the complainant’s business conducted under its mark; the likelihood of customer confusion [PA Consulting Services Pty Ltd v. Joseph Barrington-Lew, WIPO Case No. DAU2003-0002 (2002), <paconsulting.com.au>];
  3. Respondent has registered or subsequently used the domain name in bad faith
    • Evidence of the registration and use of the domain name in bad faith can include the respondent registering the domain name in order to prevent the owner of a trade mark or name from reflecting that mark or name in a corresponding domain name;
    • A domain name will have been registered or used in bad faith where the respondent registered the domain name despite not meeting the applicable eligibility requirements;
    • From auDRP decisions it appears that in determinations of bad faith panels review evidence relevant to actual knowledge of the complainant’s trade mark or name, and draw conclusions about the respondent’s likely knowledge from that evidence. Where the complainant’s trade mark or name is extremely well-known, or where there is evidence indicating that the respondent would reasonably have been aware of the trade mark or name (e.g., where the complainant and respondent are competitors in the same industry, or where the respondent was previously a customer or business partner of the complainant) [Ink King v. CamerasDirect.com.au, LEADR Case No. auDRP01/05 (2005), <ink-king.net.au>];

Comments on Elements for Respondent

Under principles set out in Oki Data [Oki Data Americas, Inc.v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data principles”)], a reseller or distributor such as APV Safety Products Pty Ltd can be making a bona fide offering of goods and services, and thus have a legitimate interest in the domain name, if its use meets certain requirements including:
the respondent must actually be offering goods or services related to the trade mark in respect of which the domain name is confusingly similar;

  1. the respondent must offer only those goods or services in connection with the disputed domain name;
  2. the respondent must have disclosed its true relationship with the owner of the trade mark to which the domain name is identical or confusingly similar, prior to notice of the dispute; and
  3. the respondent must not have attempted to “corner the market” in domain names that reflect that trade mark.

auDRP panels have tended to recognise that a respondent’s registration of a trade mark corresponding to the disputed domain name will normally, but does not necessarily, establish that the respondent has rights or legitimate interests in that domain name [PayBurst Financial Technologies and Gregory Fx Iannacci v. Virgin Blue Airlines Pty Ltd, WIPO Case No. DAU2006-0001 (2006), <velocityrewards.com.au>].

Summary

To bring an auDRP action, the complainant first needs to establish a priority claim to ownership of a trade mark in Australia – a priority claim can be established by:

  • Obtaining a registered trade mark which is identical or confusingly similar to the relevant domain name; or
  • Where the complainant does not have a registered trade mark, the complainant needs to establish that it has an unregistered right in Australia

For unregistered trade mark rights to exist in Australia, the complainant needs to have a reputation in Australia in respect of the unregistered trade mark – this is usually established by evidence of use in commerce such as sales and revenue data in Australia.

A second aspect of bringing an auDRP action, is whether the respondent’s use of the domain name is bona fide, i.e., is in good faith, needs to be established. This requires a consideration of the respondent’s motivation for using the domain, which, in turn, requires an evaluation of all the facts and evidence. Relevant facts can include:

  • the degree of similarity of the domain name to the complainant’s mark; and
  • the respondent’s awareness of the complainant’s business conducted under its mark and the likelihood of customer confusion.

Another relevant consideration in an auDRP action is whether the respondent has a legitimate claim to ownership – for example, a reseller or distributor of a product (for example, “imported from New Zealand” marked with the trade mark). These parties can be making a bona fide offering of goods and services in Australia and thus have a legitimate interest in the domain name if their use meets certain requirements, including:

  • the respondent must actually be offering goods or services related to the trade mark in respect of which the domain name is confusingly similar;
  • the respondent must offer only those goods or services in connection with the disputed domain name;
  • the respondent must have disclosed its true relationship with the owner of the trade mark to which the domain name is identical or confusingly similar, prior to notice of the dispute; and
  • the respondent must not have attempted to “corner the market” in domain names that reflect that trade mark.

Examples of cases involving domain names and trade marks

Generally, ownership of a registered Australian Trade Mark is sufficient to establish threshold requirement of the complainant having rights in a Trade Mark [TrueLocal Inc., Geosign Technologies Inc. and True Local Limited v. News Limited, WIPO Case No. DAU2006-0003 (2006), involving the domain name <truelocal.com.au>]. As shown in the case GE Capital Finance Australasia Pty Ltd v. Dental Financial Services Pty Ltd, WIPO Case No. DAU2004-007 (2005), <carecredit.com.au>, marks that are in the intermediate stages in their timelines prior to registration are considered not to satisfy the requirement of the complainant’s trade mark rights. For unregistered trade marks in Australia, the claimant needs to provide evidence of use in the market, such as sales and revenue figures.

In Sports Warehouse, Inc v Fry Consulting Pty Ltd, one party used a registered trade mark as a domain name. Sports Warehouse has been in the tennis apparel and tennis gear business since 1994 and has made the majority of its sales through their website called www.tennis-warehouse.com. Sports Warehouse registered the mark TENNIS WAREHOUSE. Fry Consulting, a wholesaler and retailer of tennis apparel and tennis gear, runs most of its operations off of its website called www.tenniswarehouse.com.au. This website was established after Sports Warehouse’s business had extended to Australia. In this case, it was concluded that the use of the domain name www.tennis-warehouse.com constituted use of the mark TENNIS WAREHOUSE, which did not affect the identity of the registered mark.

In Architects (Aust) Pty Ltd t/a Architects Australia v Witty Consultants Pty Ltd, the domain name was registered as a trade mark (not by the owner of the domain). In this case, Architects (Aust) Pty Ltd owned the registered trade mark for the words “Architects Australia.” On the other hand, Witty Consultants Pty Ltd had a domain name called architectsaustralia.com.au. It was decided in this case that Witty Consultants Pty Ltd did not have the right to the use of this domain name because Architects (Aust) Pty Ltd had registered the words “Architect Australia”.