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Trade Mark Traps: Registering a dot.com.au Domain Name |
In Australia, dot.com.au domain names are allocated by Internet Names Worldwide. Searches of registered dot.com.au domain names can be conducted free of charge at this site. Domain names may also be registered via the INWW web site, provided they match the business name of a commercial entity which is registered and trading in Australia. INWW will conduct searches of company and business name databases before registering a new dot.com.au domain name. |
Although a specific domain name can only be registered once, there is no online directory of domain names or procedure for ensuring very similar domain names are not registered. More over, provided different suffixes are used, two essentially similar domain names may be registered. For example, the domain name "clarks" may be registered by a number of parties using different generic top level domains (for example, clarks.com and clarks.net) and/or different country code top level domains (for example, clarks.com.uk and clarks.com.au). |
However, care must be taken when registering very similar domain names. Although confusion between names may lead to increased traffic to your site, it can also create problems. |
In relation to .com.au registration, a registrant still needs to be an Australian registered company or trading under a registered business name in any Australian State or Territory. |
Trade Mark Issues |
When an application for domain name registration is lodged, INWW does not conduct searches to ensure that matching trade marks and domain names have the same registered owner. More over, when applying for a dot.com.au domain name, the registrant must warrant that the registration and/or use of the domain name does not breach any third party's rights (such as those of a registered trade mark owner). Therefore, when you register your dot.com.au domain name, you must check that the requested domain name does not infringe another person's trade mark. |
Although ownership of a trade mark alone will not necessarily entitle a trade mark owner to obtain a domain name which incorporates their trade mark, it is prudent to conduct a trade mark search (of registered and unregistered trade marks) to avoid potential trade mark disputes. Online trade mark searches of Australian trade marks can be conducted at the web site of IP Australia. You may also wish to register your domain name as a conventional trade mark as it may give you more power to prevent future registration of similar domain names. |
If you already have a registered Australian trade mark (or a pending application), you are able to register a com.au domain name which is based on your trade mark. |
Furthermore, whilst your domain name will have a global reach, trade marks are limited to a particular jurisdiction. Therefore, you may also wish to conduct trade mark searches and consider the effect of trade mark laws in other jurisdictions. |
- Trade Marks and Passing Off Disputes
Passing off disputes can arise where trade marks are registered as domain names in an attempt to mislead the public. Registering trade marks as domain names in order to trade off the goodwill associated with the mark or damage the reputation of a trade mark has been frowned upon by the courts.
- Twin Disputes
Trade mark disputes may also arise where two parties with a legitimate claim to use a particular trade mark both attempt to register the same domain name. Case law in this area suggests that the party with a stronger claim to the trade mark will not always be awarded the domain name if they have not registered the domain name first.
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| Non-legal Issues |
It is important to note that non-legal problems may also arise from registering similar domain names. If the goodwill of a company holding a particular name is damaged (for example, if site security is compromised), the reputation of an unrelated company owning a similar name may also be adversely affected by the strong name association. |
