White SW Computer Law
|Intellectual Property, Information Technology & Telecommunications Lawyers|
Melbourne Office - PO Box 452, COLLINS STREET WEST Victoria 8007 Australia
Sydney Office - GPO Box 2506, SYDNEY New South Wales 2001 Australia
Telephone: Melbourne Office - +61 3 9629 3709 Sydney Office - +61 2 9233 2600
Facsimile: Melbourne Office - +61 3 9629 3217 Sydney Office - +61 2 9233 3044
Email: email@example.com Internet: http://www.computerlaw.com.au
Each country that allocates domain names will have its own rules about who may register a domain name. In Australia, to register most “.com.au” domain names, you must have a registered business name or a company name that includes the words used in the domain name. The “.com” domain names are allocated with almost no restrictions.
Use of domain names commonly overlaps with the use of a well known trade mark as it makes the domain name easy to guess, rather than having to find it using a search engine. In some cases, the domain name owner may have purchased a domain name before the owner of a similar trade mark. There have been many instances where the trade mark owner has decided to purchase the domain name from the domain name owner, without commencing legal action.
As a result, some individuals (commonly referred to as cybersquatters) have registered multiple domain names which resemble well known trade marks with the hope that a trade mark owner will pay a substantial fee to purchase the domain name from them. Not all trade mark owners adopt this commercial approach.
The likely legal actions which may be taken against a domain name holder vary depending upon the location of the domain name owner and the party suing them. In Australia, if your use of a domain name is challenged, you are likely to be taken to Court for claims including:
The US case Playboy Enterprises Inc v Calvin Designer Label & Ors Playboy sued Calvin for, amongst other things its use of Playboy's trade marks “Playboy” and “Playmate” as part of Calvin's domain names www.playboyxxx.com and www.playmatelive.com. The Court ordered that Calvin be barred from using the Playboy and Playmate trade marks as part of their domain name; as part of the name of their web site service; in meta tags on their web site; or in connection with the advertising or promotion of their web sites.
The US Court of Appeals matter of Data Concepts, Inc v Digital Consulting, Inc considered whether Data's use of the domain name “dci.com” and trade mark “DCI” constituted a trade mark infringement. The Court considered issues such as the strength of Digital's trade mark; the similarity between Data and Digital's goods or services; evidence of actual confusion; and Data's intent in selecting the trade mark. The Court questioned whether Data's use of a domain name was merely a means of communication, or whether the domain name was used to identify its goods and services and found that the District Court did not, amongst other things properly assess the significance of other instances of use of the DCI, for example into over ninety web sites.
This article is a guide only and should not be used as a substitute for proper legal advice, readers should make their own enquires and seek appropriate legal advice.