Nowadays, a business’ online presence is often crucial to its success. For this reason, using the correct domain name is necessary so that your customers can identify your business. However, while your trade mark can comprise your domain name, you will likely encounter issues if you use someone else’s registered trade mark in a URL or encounter a similar domain name. This article explains how you can avoid these issues and some strategies for registering your trade mark if you have not already done so.
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Do Not Use Someone Else’s Registered Trade Mark
To begin operating their website, business owners must register a domain name through a registrar or reseller listed on the .au Domain Administration Ltd (.auDA) website.
However, if your domain name contains someone else’s registered trade mark, you could be committing trade mark infringement. You can infringe a registered trade mark if you use a sign:
- that is substantially identical with, or deceptively similar to, the trade mark; and
- in relation to goods and services that are the same or closely related to the goods and services that the trade mark protects.
Furthermore, merely registering a domain name does not amount to infringement. However, the continual use of the domain name could constitute infringement.
Therefore, you should not use someone else’s trade mark in your URL, as this could amount to trade mark infringement. Before registering a domain name, you should search the Trade Mark Search and the WHOIS Service to ensure your domain name is unique and does not contain a registered trade mark.
Similar Domain Names
Domain names are licensed on a ‘first-come, first-served’ basis. This means that if you register a one-of-a-kind domain name, no one else can register that domain name. However, suppose someone else has registered the domain name you wish to register. In this instance, you may need to contact the licensee of the domain name if their WHOIS information is public and offer to purchase the rights to use the name.
Alternatively, there are some exceptions to using similar domain names. Namely, similar domain names can exist simultaneously since internet domain names can exist at different domain levels.
Two web addresses with similar-looking or sounding names can also exist in the same domain. For example, ‘www.domainnames.com.au’ and ‘www.d0mainname.com.au’ look relatively similar. However, they are different web addresses. If both websites operate in different and unrelated industries, they could coexist.
Continue reading this article below the formTrade Mark Registration
If you use a trade mark in your domain name and wish to register that trade mark with IP Australia, there are a few strategies you should keep in mind to increase your chances of successful registration.
Identical Ownership
If you wish to register your domain name as a trade mark, IP Australia will cross-check that you are the authorised domain name user. If a trade mark applicant does not own the domain they are attempting to register, IP Australia may reject the application because the trade mark may confuse consumers.
However, this is not to say that only you can own the trade mark. Instead, your agent or employee can own the internet domain name where they operate the domain on behalf of the company that owns the brand name.
Evidence of Authorisation
If IP Australia rejects your application, you will receive an examination report from your trade mark examiner. This report will specify the reasons why they rejected your trade mark. For example, suppose this rejection stems from the domain name owner and the applicant being different people. In that case, you must prove to IP Australia you have the authority to use the domain name.
You can prove your authority over the brand by obtaining a letter of consent from the person owning the domain name. In addition, you must notify your IP Australia examiner that you have obtained consent to complete registration.
Alternatively, you may have to transfer domain ownership to the trade mark applicant. After completing the transfer, you should notify your IP Australia examiner to finalise your trade mark registration.
Account for All Possibilities
Before filing your application, you should consider registering trade marks for all the domains and subdomains that require protection. For example, a single business may protect the various domains and subdomains under its brand, such as:
- www.domainname.com;
- www.domainname.com.au;
- domainname.net;
- domainname.com/find_it_here; and
- http://www.domainname.net.au/.
Once you register your trade mark, you can begin branding and marketing your business under the domain name.
Key Takeaways
When registering a domain name that comprises a trade mark, you should not use someone else’s trade mark since this can constitute trade mark infringement. Furthermore, you should consider whether you can register a similar domain name if someone else holds the right to use an identical domain name. Ultimately, if you wish to register your domain name as a trade mark, you should ensure that you also hold the rights to use the domain name.
If you have further questions about registering your trade mark, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
A domain name is part of a network address that identifies it as belonging to a particular domain. For example, domainname.com is a domain name.
While registering a domain name will prevent others from having the same domain name, it will not prevent someone from using the name to start their own business. You can prevent someone from using your business name to start their business by registering your business name as a trade mark.
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