Brand Strategy: Trade Marks, Business Names and Domain Names

Guest post by Sophie Glover,  Lawyer at LegalVision  

Launching a new website for a business opens up an online communication channel to engage with customers. Every website has a domain name, allowing visitors to identify with the business' name and brand easily. As such, domain names are an important component of brand protection and building a presence online.

In an ideal world, your domain name should match your business name and trade mark; however, this may not be possible when names are registered on a first-come, first-served basis. This article sets out:

1. The difference between a trade mark, business name and domain name
2. The benefits of securing a descriptive domain name
3. Monitoring for domain name infringement
4. A lesson from the case of REA Group Ltd v Real Estate 1 when a domain name is a trade mark

Difference in Naming Rights

A business name is the name your business operates under and you need a business name if you conduct business under a name other than your own name. In Australia, having a business name does stop other traders from registering a similar name. It is important to note that a business name does not provide you with exclusive trading rights or ownership over the name. To search the business name register, search on ASIC.

Registering a trade mark is the best way to protect your brand name and intellectual property. A trade mark ensures your business name is protected and does not infringe on the rights of others. The Australian Trade Mark Register can be searched on the IP Australia website.

Owning a domain name prevents other brands using the same domain name but does not prevent other businesses from using the name as a trade mark, business name, or a registered company name. A domain name can be secured from an ICANN-accredited registrar on a first-come, first-served basis.

Benefits of Securing a Domain Name

A highly descriptive domain name provides a significant advantage to a business. For example, if you run an online business selling holiday packages called www.holidaydeals.com, this domain name will provide you with a competitive edge as this is a highly searched key phrase. It is also descriptive of the services you provide.

It is a good idea as part of your brand strategy to secure a .com or .com.au top-level domain. This will prevent other domestic and international traders from also securing your domain name.

Monitoring for Domain Name Infringement

As a business trading online, the onus is on you as the business owner to monitor whether other registered domain names infringe on your trade mark. In some instances, you may seek to challenge domain name registration. This may be appropriate if you have trade mark rights to a name. It is important to note that mere registration of a domain name does not constitute trade mark infringement. To prove trademark infringement, you will need to consider the following:

• The infringing trade mark is being used in respect to similar goods and or services in relation to the trade mark you have registered; and
• The infringer's sign or trade marks are sufficiently similar to your trade mark and may, in fact, be the source of confusion for the origin of your product.

If you are unable to make a claim for trade mark infringement, you may consider making a claim in misleading and deceptive conduct or passing off. There are certain threshold requirements you will need to make for both of these claims, and there are higher threshold requirements to prove bother claims. A trade mark infringement may be easier to enforce as you have a clear statutory right.

A Lesson from When a Domain Name is a Trade Mark

In the 2013 case of REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559, REA Group operated two property search portals, realestate.com.au, which deals with residential properties and realcommercial.com.au, which deals with commercial properties.

The applicant, REA Group, argued that the combination of the "real estate" element with ".com.au"? prefix created a term that distinguished their brand from other traders. This created a deceptive similarity with the respondent's (Real Estate 1) domain realestate1.com.au, which lists residential properties and realcommercial1.com.au which lists commercial properties. REA argued and brought action against Real Estate 1 for misleading and deceptive conduct and trade mark infringement.

Did Real Estate 1's conduct amount to misleading and deceptive conduct?

The Judge considered the descriptive nature of the phrase "realestate.com.au"? when whether the domain names were substantially identical or deceptively similar. The court found that the use of the domain name realestate1.com.au did not constitute misleading and deceptive conduct in relation to the search engine realestate.com.au. In coming to this conclusion, the following factors were considered:

• the descriptive nature of the term "realestate.com.au"? when taken as a whole it describes a real estate portal and a small difference in a competitor's trade name will likely prevent consumer confusion;
• a consumer searching for a portal, recalled by the consumer as "real estate something" and ends up at realestate1.com.au would not have been mislead or deceived;
• the natural applicability of the phrase "real estate"?, consumers are likely to be more vigilant in the context of a market where close variants of "realestate.com.au"? are common on a search results page; and
• consumers would likely recognise that the use of "realestate" as a central feature in many domain names reflects the natural applicability of the term to a real estate portal.

Was Real Estate 1's conduct trade mark infringement?

REA argued that the use of realestate1.com.au constituted a trade mark infringement of their trademark realestate.com.au. It was argued that the use of "realestate1"? was no trade mark infringement when used alone, however the when used in conjunction with .com.au this constituted infringing uses.

The court found:

• a claim for trade mark infringement required the use of the .com.au, as the use of realestate by itself does not have the ability to distinguish a brand identity and is considered highly descriptive in nature;
• Real Estate 1's logo did was not deceptively similar to REA's logo;
• However, the domain names "realestate1.com.au"? was deceptively similar to realestae.com.au and would constitute trade mark infringement.  When consumers scan domain name search results, the "1"? does not prove distinctive or provide the ability to distinguish from REA's trade mark realestate.com.au.

The same result was found for the use of realcommerical and realcommercial1 infringement of the domain name and logo.

What remedies are available for domain name infringement?

Typically when someone has your domain name, and they should not be using it there are a few courses of action you can take;

• You may like to commence dispute resolution through the auDA, the Domain Administration Ltd, the policy authority and industry self-regulatory body for Australian domain names. The auDA offers a dispute resolution procedure for trade mark/intellectual property owners when third parties infringe their IP.  This dispute resolution process is often more efficient and cheaper than resolving a domain dispute through the courts. The end outcome of this process is that the complainant may demand the cancellation or transfer of the domain name in question.
• Settlement: After issuing a demand is another way in which you can take action. You may like to negotiate with the infringing party outside of court. This will ensure that costs are kept to a minimum, and you stay in control. Step 1, would be issuing a letter of demand.
• You can seek final orders in court. After issuing a demand unsuccessfully, you may like to take matters to court. Possible outcomes include an interlocutory injunction, injunction, domain name transfer, domain name cancellation or the award of damages.

Key Takeaways

The REA Group case provides some useful guidance in relation to the use of domain names as trade marks:

• Domain names may be used as a trade mark when they can be shown to be a sign used to distinguish goods and or services from other traders.
• Mere registration of a domain name does not constitute use of a sign as a trade mark.
• Using another's registered trade mark as part of a domain name which links to a website which uses the registered trade mark constitutes a trade mark infringement.
• Holding a domain name that infringes another trade mark may constitute misleading and deceptive conduct or passing off.
• Remedies available through the courts include injunctions and restrain the use of domain name, metatags and search engine keywords.

If you have any questions about trademark registration, protecting your brand or applying for a business name, get in touch with our IP lawyers and business lawyers. Call LegalVision on 1300 544 755 or get in touch through our website.

About the Author: Sophie Glover is a Lawyer in LegalVision's Intellectual Property team. Sophie has a passion for innovation which is harnessed by her work in the tech-driven legal space. In her current role, Sophie is responsible for assisting LegalVision's clients to create and protect their intellectual property. Sophie has a particular focus on trade marks and brand protection, and recognises that Intellectual Property represents an important asset for clients at all times in the business lifecycle.