Questions

This page is under construction. For the moment it deals with some naming questions.

   what's cybersquatting and the UDRP?

A discussion of the UDRP, a global process for resolving disputes about domain names (usually in favour of trademark or other intellectual property owners) is here.

   Someone's using my trademark as a domain name

If a business has a domain name identical to your trademark but is selling a product/service in a separate trademark class/classes to yours and is not attempting to 'pass off' trading on your mark, you may not be able to compel them to cease using the domain name.  

For example, if you own Smiths Bookshop but Smiths snackfoods registers 'Smiths' first, you may not be able to stop them using that domain name. As we noted in our discussion of Domain Names and auDA, in Australia the name is generally allocated on the "first in, best dressed" model. 

It is important to remember that owning a trademark or a trading name does not give exclusive rights over use of the word/s used in the trademark.

   Can I stop use of my trademark as a domain name?

If someone else has a domain name identical to your trademark, and is selling a product/service in the same trademark class/es as yours it is likely that under existing Australian trademark legislation you can compel them to stop using the domain name. The jingle about no law in cyberspace ignores the reality that law continues to operate very effectively in particular jurisdictions.

We'll be providing more information shortly.

   What about trademarks, trade names and domain names?

Domain names are unique names issued to any entity that satisfies the rules for the allocation of names within the particular domain (eg dot com or dot com dot au). Unfortunately there's sometimes inconsistency in the interpretation of those rules. Australia has been more rigorous than many other domains.

Owning a registered trademark - ie authorised by the Australian Industrial Property Office (AIPO) -  or using a trading name doesn't automatically entitle you to the corresponding domain name. 

That's because trading names and trademarks are not unique. In Australia there are 42 trademark classes. That means, in theory, it's possible for 42 different entities to use the same word/s as a trademark and as a trading name.  For example, both Apple Computers and Apple Records use the 'Apple' trademark.  

Trademark owners do not have absolute control over the word/s in their trademark. Unrelated businesses thus operate under the trading name of Apple Cakes, Apple Supplies and Sweet Apple Costumes. And of course you're free to use Apple as your surname. 

Australian courts are still getting to grips with the rights of domain name owners versus trademark owners. That's business as usual; Richard Branson's Virgin conglomerate and Cartier have recently gained publicity over its aggressive attempts to stop long established businesses using the words Virgin or Cartier.

In practice, depending on the circumstances Australian courts may require a business to stop using (or to transfer rights to) a domain name.

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