Domain Name

What is a Domain Name – etiennelawyers.com

A domain name is a human-friendly internet address identifying a computer site on the web. It is like a telephone number. It’s unique and connects us to a global network. A domain name is a mask for an internet protocol (IP address). It consists of a string of four sets of numbers up to three digits from 0 to 255, for example, 207.91.131.30. It is easier to remember “etiennelawyers.com” than 207.91.131.30. No two organisations can have the same domain name, and no two people can have the same telephone number.

There is no law which governs domain names.

Domain Names are legal rights but not assets.

Internet Corporation for Assigned Names and Numbers (ICANN)

A ‘registry operator’ or ‘sponsor’ operates the registry of domain names. There is are agreements with ICANN to allow this.

The domain registry owns the name. A contract allows (licenses) others to use the name so long as the person pays the yearly license fee.

You cannot get a domain name if you are not associated with the name. Establishing a link between the name owning a trademark and a domain name is very useful. If you do not have a registered trademark then if challenged, you need evidence:

  • of the number of customer interactions you have had using the “name”
  • showing how much you have spent in advertising
  • promoting your business with the featured name
  • showing that consumers recognise you with the featured name, and if available
  • media reference to tour association with the featured name
Domain name extensions

Benefits of having a Registered Trademark To Protect Your Domain Name

Lorimax believed Tolling Customer Ombudsman registered a domain name too similar to theirs. They made a complaint to auDRP.

Lorimax V Tolling Ombudsman Pty Ltd

Some toll road operators engaged Lorimax to provide services to their customers. They offered a free complaint and alternative dispute resolution process.

www.tollingombudsman.com.au

Lorimax claimed it had provided such services since 2008 using its domain name.

www.tollingcustomerombudsman.com.au 

Registration of Tolling Customer Ombudsman Pty Ltd (TCO) occurred on September 2 2016. On the same day they registered the domain name. The site with the new domain name was for complaints against Transurban Limited. Individuals filed complaints free of charge.

On 12 September 2016 Lorimax filed Australian trademark applications for the

  • wordmark “TOLLING CUSTOMER OMBUDSMAN” (No. 1795768) and 
  • for a composite trademark featuring these words (No. 1795772) 

On 19 September 2016, Lorimax filed a complaint under the .au Dispute Resolution Policy (auDRP).

When auDRP issued the decision Lorimax’s Trade Marks were awaiting examination.

To succeed under the auDRP, Lorimax had to establish each of the following elements:

  1. the Domain Name was identical or confusingly similar to a name or a trademark in which Lorimax has rights; and
  2. Tolling had no rights or legitimate interests in respect of the Domain Name; and
  3. Tolling registered the Domain Name or subsequently used it in bad faith.

The Panelist found filing the trademark was not enough to establish the rights in the trademark. Element 1 was not satisfied.

Did Lorimax establish common law or unregistered rights in the trademarks?

Lorimax addressed the issue of unregistered trademark rights in its complaint:

“The Complainant has invested a significant amount of time and resources to develop and promote the Trade Marks and Services under the Trade Marks. As a result of this extensive use, the Complainant has acquired a valuable and exclusive reputation and goodwill in the Trade Marks in Australia, in relation to the Services”.

Unregistered Trademarks Did Not Protect The Domain Name

The panellist found that Lorimax had not established common law or unregistered rights.

The panelist noted Lorimax must provide clear evidence to support common law right.

The panellist provided some guidance for this:

  • the number of customer interactions provided by Lorimax under Lorimax’s Trade Marks; or
  • advertising used to promote Lorimax which featured its Trade Marks; or
  • surveys showing consumer recognition of its Trade Marks; or
  • media references to its Trade Marks

The Panelist decided that there was no evidence filed by Lorimax.

“that would suggest that a consumer would come to associate “Tolling Customer Ombudsman” with the Complainant”.

Lorimax did not succeed as it failed to establish the first element of the complaint.

Upon registration of the trademarks, the panellist said there might be grounds to consider a refiling.

Learn more about Intellectual Property from Steven Brown at Smart Thinking Parramatta