In this day and age in the business world your domain name is a crucial tool in informing customers of your product, securing work and/or using it in the day to day running of your business.
Some domain names are the most powerful marketing product that you can have so we ask ourselves, can you protect our domain from competitors?
In short, yes. We will use the well known and well visited site of www.realestate.com.au as our example. Did you know that this domain name is actually registered as a trademark?
Recently we saw a case brought by the REA Group Limited, being the registered proprietors of www.realestate.com.au against another Australian business, Real Estate 1 Ltd being the registered proprietor of www.realestate1.com.au alleging misleading and deceptive conduct contrary to section 52 of the Trade Practices Act 1974 (Cth) and trade mark infringement under section 120 of the Trade Marks Act 1995 (Cth). The claim in short was that the domain name registered by Real Estate 1 Ltd was not dissimilar to that of REA Group Ltd’s domain of www.realestate.com.au. (REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559). The court found that Real Estate 1 did not constitute misleading or deceptive conduct, but was an infringement on the trade mark for the REA Group Ltd.
In determining whether the domain was misleading, his Honour mentioned that the “1” was not very distinctive and was likely to be overlooked as being deceptively similar to realestate.com.au however not enough to be considered misleading or deceptive conduct.
By registering a trade mark, you are effectively giving your domain as much protection as possible against any infringements by other parties as well as possible grounds for alleging misleading conduct.
On the contrary, you should take careful steps to consider how your domain name appears and how it will be different from other domain names to avoid any cause for concern with your own domain. The public are able to access the IP Register to view all registered trademarks and thus, are able to scanning through any similar domain results.
So, we see the lesson learnt is:
• Be as creative and innovative as possible;
• Ensuring that your domain stands out;
• Register your domain name as a trademark to take all steps possible to protect it;
• Regularly search domain names that are also registered.
IP Australia offers a search portal to search all the registered trademarks – https://www.ipaustralia.gov.au/get-the-right-ip/trade-marks/search-for-a-trade-mark/
If you would like more information or want to obtain the best possible chance of a successful outcome in your dispute, please contact our Commercial Litigation Department Manager, Amanda Heather on direct line 07 5506 8245, email aheather@attwoodmarshall.com.au or free call 1800 621 071.
We have an experienced dedicated Commercial Litigation team that practices exclusively in these areas.
