With the increasing importance of a web presence for businesses, so too comes the increasing risks associated with competing domain names. Whilst you may have taken steps to ensure that you hold the .com or .com.au domain names for your business, what can you do to stop your competitor down the road from registering a .net by the same name? And how can you get it off them if they do?
Domain name dispute procedures
In order to register a top level domain name (those domains that end in .com, .net, .org etc) you must first enter into an agreement with a domain name registrar. Part of that agreement incorporates the Uniform Domain Name Dispute Resolution Policy which as the name suggests has a specific mechanism for dealing with domain name disputes. If you wish to register a .au domain (relating to domain names like .com.au), the domain name registrar agreement incorporates the Australian Domain Name Dispute Resolution Policy. Both policies are quite similar.
Under the policies, if you want to be able to take back a registered domain name, you must establish that:
- The domain name you are complaining about is identical or confusingly similar to a trademark or service mark(or in Australia, a business, company or trading name) that you have rights to,
- The respondent has no rights or legitimate interests in the domain name, and
- The domain name has been registered and is being used in bad faith
Now whilst the last one can be quite a difficult one to prove, there are some things you can do from the start to put yourself in the best position possible to ensure that no one else is stealing your website thunder:
1. Register a number of domain names for your business rather than simply the .com or the .com.au – think about some obvious variations of your name that you should hold. If your domain name could be easily misspelt, you might want to register a domain name for those obvious misspellings.
2. Take a proactive step in registering your rights in the ownership of your name by getting a registered trademark. As well as providing a vital piece of evidence in establishing your right to the related domain name, a trademark registration makes it easier to stop other businesses in Australia from trading with a name similar to yours.
If a business has a domain name that is the same as your trademark, and they are using their website in relation to goods or services that your trademark protects, then you probably also have a good case against them for trademark infringement. Not to mention your possible rights against them under other avenues such as misleading and deceptive conduct, and possibly even passing off.
Protecting your business from being stripped of a domain name
If on the other hand, you are in the position of wanting to ensure that a domain name is not ripped away from you and your business – here’s what you need to show to prove you have a “legitimate interest” if you are challenged:
- That you used (or are about to use) the domain name or a name corresponding to it in connection with a “bona fide” offering of goods or services, or
- That you have been commonly known by that domain name, or
- You are making a legitimate non-commercial or fair use of the domain name, without intending to create commercial gain on the basis of misleading or diverting innocent consumers, or tarnishing the trademark at issue.
The proactive steps that you can take on this side of the fence are somewhat similar to the advice for the other side – get a registered trademark to prove you are serious.
Having evidence of a registered trademark can be a killer move in proving that you have a legitimate interest in a mark.
On the flip side, using a domain name that is a registered trademark belonging to someone else can be a very dangerous move.
So perhaps the best advice of all is to get advice before you start using a name or domain name, to ensure you aren’t unwittingly wandering into a legal battle that could divert your attention and resources.
Trademark protection services
If you would like a advice about a new name or domain name that you are considering using, or advice about registering your trademark, call us on 02 8006 0830 or send us an email enquiry to [email protected] and we will organise a time to talk with you about your mark and to answer any questions you might have.