Lessons on protecting your trade mark online

Today we have a guest post from Nicole Murdoch from Australian law firm Eaglegate Lawyers who writes of the importance of protecting your domain name. Murdoch writes “the first and primary rule must be to never ever let the Domain Name that corresponds to the name everyone knows you by, or which corresponds to your Trade Mark drop.”

Learn lessons from Bill Clinton himself.  Don’t fall asleep at the wheel.

There are some strict do’s and don’ts when it comes to protecting a Trade Mark online. The first and primary rule must be to never ever let the Domain Name that corresponds to the name everyone knows you by, or which corresponds to your Trade Mark drop. By drop we mean expire and become eligible for other traders to register.  This is online trade mark protection 101.

If you let the domain name drop your opposition might register it and use the domain name to divert traffic and business that would have gone to you, to it. Now that activity might constitute trade mark infringement or it might not. And you might think that would put you in a bad place in terms of having to take action for trade mark infringement. However, it could be worse, much worse …  your opposition might use the domain name as tool to embarrass you, chastise or negatively review you. 

To do so, all your opposition needs is to be eligible to reserve the Domain Name. Domain names within the .au domain space are governed by a system of eligibility rules. These rules govern who can and cannot register the various second level domains in the .au space.

.com.au domain names can be registered by any Australian eligible person where the domain name in question is either an exact match, abbreviation or acronym of the registrant’s name or trademark (sic) or otherwise closely and substantially connected to the registrant. You can read the full policy here.

Problems can arise when the domain name is either really generic or is an acronym – particularly when the domain name is short and the acronym can literally mean just about anything.

So if your competitor reserves the domain name for the purposes of reviewing your business, it would likely be eligible to register the domain name in its own name.

But, it gets worse still. You might not be able to take the domain name off the trader. To be successful under the .auDRP (the policy that governs disputes over .au Domain Names and allows for transfer to another trader) the complainant must satisfy all of the following:

(i) the domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights; and

(ii) the new registrant has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered or subsequently used in bad faith.

So if your competitor is reviewing your business, it would argue that is legitimate use and the second element is not made out. It would also argue that it is not using the Domain Name in bad faith as it is providing a review service. Whether it would succeed or not, depends on the facts of each case.

The LNP (Liberal National Party) is waking this morning to the very sobering news that it not only let the domain LNP.com.au drop but it has now been registered by another legitimate business with no political position. This means that it is free for Labor to approach that registrant to ask for access to the Domain Name and to possibly use it for the purpose of reviewing the LNP. The LNP use LNP.org.au but why give anyone, particularly a competitor, a free kick?

The LNP is unlikely to successfully win a dispute against the registrant given that Domain Names can be an acronym of a number of businesses and can stand for just about anything.

Bill Clinton found himself in exactly that position many years ago where others reserved his Domain Names and he failed in his attempts to retrieve the Domain Names.

This article was published with the permission of Eaglegate Lawyers in Brisbane Australia. For assistance with Domain Names or if someone has reserved a Domain Name corresponding to your Trade Mark or trading name contact Eaglegate here.

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