What can you do if a competitor is using your trademark in their domain name?
The Federal Court[i] recently dealt with the important question of whether a trademark owner has the right to prevent the use of the trademark in the domain name, website banners or headings of a competitor’s site.
As a result, we now have more clear guidance on what sort of behaviour will be found to be trademark infringement – and what you need to be on the look out for.
The case in question related to a Surfers Paradise apartment complex by the name of Circle on Cavill owned by the Mantra Group (“Mantra”). Mantra is in the business of property management and accommodation services, and held trademark registrations for the CIRCLE ON CAVILL element in relation to these activities.
Tailly Pty Ltd (“Tailly”) sub let apartments in the Circle on Cavill property to holiday makers. And in competition with Mantra, had a large number of websites that used parts of the CIRCLE ON CAVILL trademark. As party of Tailly’s marketing strategy, these websites:
- had domain names that were similar to, or contained a misspelt variation of the CIRCLE ON CAVILL mark, eg circleoncavile.com.au, and ecircleoncavill.com
- contained the words CIRCLE ON CAVILL in the banner on the website, in the title and in the body of the websites in the text – sometimes as much as 250 times on the website
- contained the words CIRCE ON CAVILL in the metatags on the websites, ie the source code in the website that is used by search engines to produce search results. The result was that Tailly achieved high rankings for its website, as high as number 4 on the first page of organic search results, which meant high exposure for the Tailly websites.
The words CIRCLE ON CAVILL, and similar words, were also used as keywords for Google advertisements so that if someone was searching for CIRCLE ON CAVILL, searchers were presented with advertisements for Tailly.
Mantra brought a case against Tailly for trademark infringement and for misleading and deceptive conduct in breach of the Trade Practices Act. Mantra claimed that Tailly were deliberately infringing their trademark and had set up the websites in an attempt to gain more bookings for Tailly’s business.
Tailly admitted to using words that were substantially identical with or deceptively similar to the CIRCLE ON CAVILL trademarks. However, Tailly argued that it was not using the words CIRCLE ON CAVILL as a trademark or as a “badge of origin”, because its use of those words was merely describing the name of the apartment complex.
This argument provides a very useful insight into the complexities of trademark law. It is not simply enough to register a trademark, and assume you then have the right to stop anyone from using that mark.
Luckily for Mantra (and for trademark owners as a whole) the court rejected Tailly’s arguments. Although the Court accepted that there was some descriptive use of the words, most of the use was as a trademark, and therefore illegal. It is noteworthy that in rejecting Tailly’s argument, the Court appeared to be swayed by the fact that the words CIRCLE ON CAVILL had been used over 250 times as metatags in the source code for the Tailly website, and the web designer had used the same words numerous times on the Tailly websites to increase search engine results.[ii]
Tailly was ordered to transfer 10 domain names to Mantra, and was forced to stop using the words CIRCLE ON CAVILL and similar words as a trademark in its advertising, including its domain name, metatags, and as search engine keywords.
What are the important take-aways from this case?
Get your trademark registered. Pronto! You will be in a much stronger position to restrict competitors from this type of behaviour if you have a registered mark.
If a domain name incorporates your registered trademark, especially where the services advertised on the website are the same as for which your trademark is registered, you might be in a strong position to prove that there has been trademark infringement. The registration of a domain name by your competitor generally isn’t enough in itself to constitute trademark infringement, however if it is coupled with use of the mark on the website – then you are likely to have an arguable case.
If you are using someone else’s registered trademark on website banners and headings, even if the trademark is used descriptively in other places on the website or is used in combination with other trademarks, you might be at risk of a trademark infringement action.
We provide specialist advice on trademark registrations and protection. Contact us on 02 8006 0830 for a confidential discussion if you suspect that someone else is using your trademark in this way, or if you are currently exposed with a trademark that hasn’t been registered.