Do you have a unique or interesting domain name that is readily identifiable with your business? Did you know that without a trademark in place for your domain name, anyone can use it without permission?
Often neglected when setting up a business, taking steps to trademark your domain name is as essential as registering your business logo or phrase as a trademark.
At IP Guardian, we offer businesses, both big and small, comprehensive legal advice and support in protecting their business from infringing behaviour. This includes the registration of your domain name as a protected trademark.
For clarity, a domain name is quite simply your internet address or where customers can find your website. To be able to use a domain name, you are required to pay an annual fee and register with the domain name registrar.
Unfortunately, the simple ownership of a domain name or web address does not stop anyone else from using it however they see fit.
It is incredibly easy for cyber pirates, counterfeiters and other unscrupulous individuals to imitate your business via the creation of similar-looking domain names.
Absolutely. The only way to gain exclusive ownership over your domain name is to trademark it.
By pursuing a legally recognised avenue for ownership of your domain name you are better positioned to fight back against infringement activity. Trademarking your domain name also acts as a deterrent to those who would try to imitate your business.
No, and the same goes for the reverse. The trademark in place for your goods and services is marked for your exclusive use, however, this does not extend to domain names. When it comes to business name vs domain name trademarks they are mutually exclusive.
Trademark registration does not automatically generate an exclusive license for your domain name. It does, though, give you the right to lodge a complaint against any Australian-owned site that has licensed a domain name similar to yours.
It will not offer any protection against sites not marked with the .au country code or those ending in .org or .com which are regulated by other international bodies.
So what exactly does domain name trademark infringement look like?
There are four recognised categories of domain infringement, namely:
Arguably the most common type of domain name infringement and one that causes the most concern, cybersquatting is as it sounds. An individual purposefully goes about registering a domain name with the intent of stopping the trademark holder from using it.
They then make money by selling this back to the trademark holder at an inflated rate or by diverting genuine traffic away from the trademark holder's actual site to their own. The latter allows them to make money through advertising.
This involves the registration of a frequent misspelling of a business's domain name as a new domain. For example googl.com instead of google.com.
This tricks users into visiting the incorrect site and diverts them instead to a malicious website that may steal their personal data or download malware to their devices.
Complex and easily engaged in, competing use can allow separate entities to use the same domain as their trademark without actually being considered infringing behaviour. Though it is recognised this can cause customer confusion - in cases where intentional imitation is clear, this will be classed as infringing.
Competing use can involve the use of geographic names or commonly used words that are difficult to trademark. An example of this would be the word pharmacy, which is duplicated across millions of domains, though only one person would be able to trademark pharmacy.com.
Should a trademark holder attempt to secure a domain name from another interested party with an equally compelling claim, this is considered hijacking. Not all instances of this would be marked as infringement as it could come under the banner of competing use.
If you’re thinking all of this sounds quite serious, you’re right. Trademark infringement is a considerable problem that robs businesses of valuable revenue and their reputation.
Perhaps the biggest problem aside from the potential for lost sales due to customer confusion is the damage domain name infringement can cause to your reputation. A business's reputation plays a vital role in its success, growth and longevity.
If customers are repeatedly confronted with imitation websites seeking to steal their information or block them from finding your business, they will simply give up.
From the outset of your business, you should seek to develop and secure every aspect of your unique brand ideas - including your domain name.
Part of this is performing the proper checks to see if your preferred name is available to trademark both as a business name and a domain name. This ensures you are not unknowingly engaging in infringing behaviour yourself while also guiding your decisions.
It's understandable that most business owners will be unfamiliar with domain name law and how to check if a domain name infringes a trademark. This is why it is highly recommended to engage the services of a qualified trademark and patent attorney such as IP Guardian.
Legally trademarking your domain is only part of the process for protecting against domain name trademark infringement. You will also need to be diligent in taking steps to:
Track down and detect instances of misuse. This could mean following up on customer feedback alerting you to issues or performing your own searches and checks. Regardless of whether you feel the infringement is intentional or not, you should keep records and pursue action to resolve the issue.
Address and resolve the issue. This may involve contacting the auDA and sending a domain name trademark infringement letter asking the domain owner to cease and desist. You may also request them to turn the domain over to you for your use. We will go into this step further a little later on.
Assess and correct. Any instances of infringement represent opportunities to assess your current protective measures and identify gaps. You should review probable causes for infringement, management of your domain portfolio (this could involve buying up similar domain names globally to prohibit use), how you negotiate with infringers, your resolutions process and more.
Should it be determined that a legal conflict exists between your trademarked domain and another domain there are a few steps you can take.
One of the first steps you can take is to contact the .au Domain Administration (auDA) which regulates all domains registered in Australia. They will assess your claim and work to resolve the dispute with the other domain holder. This could involve the transfer of the competing domain into your name.
Secondly, you can send a cease and desist letter requesting the domain owner to stop all operations via their site.
Should they fail to comply with any of the above, you then have the option to take legal action.
As per the governing bodies of Australian Government IP law, you must first ensure you have a “sufficient factual and legal basis before making a complaint”.
The best legal basis you can have in this instance is a trademarked domain name.
If you prefer to avoid legal proceedings, the faster and cheaper route is to seek out Alternative Dispute Resolution (ADR). Typically this involves a mediator, arbitration or expert determination to secure a result.
ADR is available both in Australia and across international borders with the World Intellectual Property Organization (WIPO) providing a range of ADR services for those in need of support internationally.
The consequences for engaging in infringing behaviour vary, though they most often include compensation for the affected party. In Australia, domain name trademark infringement is illegal and covered under several Australian laws, including:
Bringing action against an individual for breaching any of the above can lead to serious criminal charges being laid. They may be ordered to pay compensation, and legal fees, perform community service or even face jail time for significant or repeat offences.
At IP Guardian we have close to two decades of experience in trademark law. During this time we have consistently remained engaged in technological advancements and how they impact the application of trademark law.
Highly skilled at supporting businesses to protect themselves, we offer services in all aspects of intellectual property, and trademark registration whether for domains or business names/logos and phrases.
We perform the necessary checks for domain name availability in Australia, how to claim a domain name and trademark it for optimal protection. Should you have discovered infringing behaviour or have been accused of it, we can also represent you in legal proceedings as needed.
No matter your needs surrounding domain name trademark infringement, we’re here to help. Contact IP Guardian today to learn more on 02 9071 0130.
Registered Patent and Trade Mark Attorney with significant experience obtaining all forms of registered intellectual property. I hold a Bachelor of Science in Engineering, a Masters of Business Administration and a Masters of Intellectual Property. I’m passionate about showing my clients how they can protect their brands through trademark registrations.
I found them online and initially I was bit hesitant to talk to them about my problem but when I spoke to Barry, I felt more comfortable, and he gave me all the information and advice I wanted without even thinking that I am going to give him business or not. Finally, I went with them, and they made the entire process so smooth and easy for me. john was keeping us updated with each step he was doing. I would recommend these guys for any patent or trademark related service.
I would like to express my thanks to Barry and his team at IP Guardian in Sydney for their assistance with our recent Trademark application. Barry was highly professional, readily available throughout the process and clearly communicated expectations. Barry even helped us refine our application so that we had a greater chance of success which was very much appreciated to avoid extra costs. I would highly recommend Ip Guardian for all your Trademark and Intellectual Property needs.
Barry, last week, you and your professional team, made my year (or probably my next 21 years). So thank you so much for your executive, calm yet very effective actions under extream pressure. Elias Hajjar, Director, TROLLEYON PTY LTD
Informative, understood the business, what it needed and answered questions in a friendly and approachable manner. Easy decision to continue working with IPGuardian for future trademarking
From the day I contacted Barry Meskin until now with my silly amateur questions, he has been nothing short of amazing. I actually NEVER leave reviews anywhere, but I felt the need to do so for Barry and his team. I myself am a tradie, so I felt intimidated speaking to an attorney. But the second I spoke to him on the phone, he made me feel right at home. Never pressured me into any decisions, yet when I decided to go ahead with him, he delivered what I needed much quicker than what I was expecting. I cannot speak highly enough of him and recommend his services 100%.
The team at IP Guardian have made the process extremely straight forward and easy for us to understand exactly what was required. I will highly recommend to our clients who need help with IP.
I have dealt with Barry over the years, his advice and experience has helped me greatly. Looking for to working with him and his team again. Maher.
IP Guardian helps protect words, symbols, letters, numbers, names, signatures, phrases, sounds, shapes and smells. Yes, I said smells.
We've had the pleasure to work closely with Barry for many years. He has been exceptional to deal with and has a keen focus in providing a commercial led IP "go to market" strategy for start-ups and well known brands. Makes it easy and always advises on different ways to navigate through the IP process.
Barry Meskin @ IP Guardian is an experienced and extremely knowledgeable expert in the domain of intellectual property, patents and trademarks. In addition he has been extremely responsive and very professional in all our dealings. I wholeheartedly recommend Barry's services to any business or anyone seeking advice in this area - great quality and great value.
