What can you do if a competitor is using your trademark in their domain name?
In this article, we focus on a case that looked specifically at this issue to help answer the important question of whether a trademark owner has the right to prevent the use of their trademark in the domain name, website banners or headings of a competitor’s site.
If you can’t be bothered reading through the facts of the case, we have summarised the take-away points for you:
- 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.
If you are interested in the details of the case, then read on!
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.
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.[i]
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.
The take away message is, therefore, that trade mark registrations can create useful armour to stop competitors misusing your marks in their URLs, metatags or source code.
We provide specialist advice in relation to trademark registrations and protection. Contact us here to find out how we can help you protect your business.
[i] Note that this decision did not address the question of whether use of trademarks in meta tags is in itself trademark infringement, but here this sort of conduct was used to show that Tailly couldn’t rely on the defence of good faith use of a trademark under section 122(1)(b) of the Trade Marks Act 1996 (Cth). In a more recent decision of the Federal Court in Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd [2011] FCA 1319 Justice Kenny considered that using certain words as a metatag did not amount to use as a trademark as users could not see the metatags. But such conduct on its own might amount to passing off or breach of the Competition and Consumer Act 2010 (Cth), but Justice Kenny did not address the use of the metatags in this context. So these issues have not been resolved by the courts.
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