Having a registered Trade Mark is an advantage in a dispute resolution procedure to maintain or to retrieve a similar domain name from another website registrant.
Consider the situation where a third party owns a domain name identical or similar to your Trade Mark. A number of Court actions are available to stop use of a domain name including:
- Trade Mark infringement;
- Breach of Sec. 18 of the Australian Competition and Consumer Act 2010 (Cth) – known as the CCA;
- Common law tort of passing off
It should be noted that the Courts have linked Trade Marks and Website addresses.
In Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 86 IPR 19, the use of websites offering services competing with the trade mark owner’s services, at domain names similar to the trade mark owner’s marks was litigated. The court found, that use of the domain names for the websites amounted to trade mark use and, hence, infringement rather than, as claimed by the defendant, use that merely described the location and the range of services offered. If use is upon or in relation to similar goods or services to a registered Trade Mark then there is trade mark infringement. It should be noted use must be in or directed at the jurisdiction of Australia.
Trade Mark infringement
Trade Mark infringement action brought before a Court (usually Federal Court of Australia). This can be expensive and protracted so therefore . If the domain name does not have an active website or is not being used to sell goods or services, it may be more difficult to prove that the trade mark is being “used in the course of trade”. However, compared to other actions such as passing off, Trade Mark registration is easily proved and extends certain exclusive rights to the owner.
Passing off/Sec. 18 of the CCA
The principles regarding passing off in domain names must establish three factors:
- That the trader has acquired a reputation in the trade name – it may be difficult to prove reputation/goodwill if the domain name is descriptive.
- There has been a misrepresentation by the domain name registrant which has led to confusion by the public – any evidence that the claimant has of the public being would greatly assist in proving confusion.
- That misrepresentation has caused damage, e.g. loss of profits or damage to trader’s reputation.
auDRP – Elements of a Complaint
The auDRP (the Australian Dispute Resolution Process) is an alternative domain name dispute resolution process, and as a general guide, a complainant’s grounds for disputation under the auDRP include the following:
- Respondent’s domain name is identical or confusingly similar to a name, trade mark or service mark in which the complainant has rights; and
- Respondent’s have no rights or legitimate interests in respect of the domain name; and
- 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.
- 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.
- 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
In ‘easyjet’, the UDRP panel consensus view was that a party cannot have registered a domain name in bad faith if the complainant’s rights had not even come into existence as of the date of the domain name registration. See paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Accordingly, for the reasons discussed above, the Panel Majority concluded that the Respondent did not register the Domain Name in bad faith. Separately, there was no evidence suggesting that its use of the Domain Name in connection with its online food services business was intended to, or did, in any way interfere with Complainant’s business. Accordingly, the Panel Majority found that Complainant likewise fails to show bad-faith use.
Set Up considerations
- undertake trade mark searches when starting a business
- undertake website searches.
- file trade mark applications
- register website addresses in the AU jurisdiction and other foreign jurisdictions as required.
By these steps you are obtaining enforceable trade mark rights and protecting your websites and any website dispute.
Trade marks are one way of using the auDRP website dispute resolution system to its economically effective ends. However other options exist.
BaxterIP can aid in trade marks and website resolutions.
Contact Warren Chandler Head of TM and Website disputes.