Your business’s domain name is an important asset. It is the most visible way to establish your online presence and will allow you to develop and design a website as the face of your business. Similar to business name registrations, domain names are granted on a first come first served basis. However, unlike business name registrations, anyone with an Internet connection can register a domain name instantly with a credit card.

Most importantly, just because you have registered a domain name for your business, it does not mean you are entitled to use it as your business name or trade mark – you must ensure you are using the domain name correctly and not in breach of any intellectual property. Under the Trade Marks Act, it is not permissible to use another’s registered trade mark as part of a domain name if the domain name links to a website which uses the registered mark to advertise or market goods or services in respect of which the trade mark is registered.

Licensing of Domain Names

Domain names are not owned by registrants but rather licensed from a domain name registrar. A domain registrar is a website where you can register a domain name for a set period of time (ranging from a year to 10 years). This period can be renewed. If you want to register a domain name ending in .au, you can access an accredited registrar through the Australia Domain Name Administrator. This is the only method to obtain a .com.au domain. The auDA offers a Dispute Resolution Procedure (auDRP) that brand owners can use when their brands, marks and IP are registered by unauthorised third parties. International registrars such as Name and GoDaddy cannot register .com.au domains directly. Foreign companies can register .com.au domain names so long as they possess an Australian registered trademark or have applied for one. Costs for registering a domain name vary depending on the type of domain chosen and the registration term. Once a licence is granted, the registrant has the exclusive right to use the name. However, it is important to note that there is no property right in a domain name.

Property Rights

A trademark is defined as: “a sign used, or intended to be used, to distinguish goods or services provided in the course of trade by a person from goods or services provided by any other person”. The Internet Corporation for Assigned Names and Numbers (ICANN) is in the process of expanding significantly the range of available domain names, which could possibly allow registrants to register protected trade marks. This could lead to domain names such as .sydney or .apple. Domain names will not automatically be reserved for trade mark owners but trade mark owners will have means to make objections to a given domain name.

Conclusion

In protecting your business’s domain name, you should ensure there are no potential infringements of your registered business name or trade mark registered as a domain name. If you find a domain name infringing on your rights, you can require the cancellation of the domain name or the transfer of the domain name registration. LegalVision has a team of IP lawyers who can assist you with protecting your domain name. Please call our office on 1300 544 755 and our Client Care team will happily provide you with an obligation-free consultation and a fixed-fee quote.

Lachlan McKnight

Next Steps

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