The regulations surrounding business, company and domain name registrations differ from trade mark registrations, and each type of registration is administered by a different body. Each type of registration also serves a distinct purpose.
All legally incorporated entities will have a company name. However, a company may choose to trade under a name other than its registered company name.
Business names are trading names registered with the Australian Securities and Investments Commission.
Domain name registration provides an exclusive right to use a website address. Registration of a domain name does not give the owner any proprietary rights to that name separately from the website address.
It is important to ensure a domain or trading name (whether company name or a separately registered business name) does not infringe a registered trade mark.
A trade mark registration provides its owner with the exclusive right to use or licence use of the trade mark in respect of the goods or services identified in the registration. A valid trade mark registration can be used to stop other traders from using the same or a similar name in respect of the same or similar goods as are covered by the trade mark registration. A trade mark registration is also a saleable asset.
A name may be available for registration as a company, business or domain name, but a trade mark owner can act against a company, business or domain name owner if it uses a name in relation to goods or services that are the same as or close to those covered by a trade mark registration.If a domain name registration infringes on your trade mark, you may be able to initiate proceedings under the Uniform Dispute Resolution Policy (UDRP) or the Australian Domain Name Dispute Resolution Policy (.auDRP) to dispute it and have the issue resolved. Possible outcomes of this include having the infringing domain name cancelled or transferred.
Alternately, you can initiate legal proceedings to have the infringement settled in court.
The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is used worldwide to solve disputes for top level domains (e.g. .com, .net, .org, etc.)
The Administrative Procedure normally should be completed within 60 days of the date the WIPO* Arbitration and Mediation Center receives the Complaint. It is, generally, a quicker and cheaper option than going to court to solve a dispute (although you can still go to court).
Paragraph 4(a) of the UDRP Policy states that the UDRP Administrative Procedure is applicable only to disputes concerning alleged abusive registration domain names which meet the following criteria:
(i) the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and
(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
(iii) the domain name has been registered and is being used in bad faith
Further information can be found here: WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP)
*WIPO is the global forum for intellectual property (IP) services, policy, information and cooperation. The WIPO Center acted as technical advisors to the ICANN drafting committee charged with finalizing the UDRP Policy and Rules
For disputes involving Australian .au domains, the auDRP can be used. This procedure is a variation of the UDRP which differs from it in two main respects:
a) to take account of the policy rules that apply to .au domain names, that do not apply to gTLD domain names; and
b) to improve the clarity of expression and address practical constraints that have become apparent since arbitrations under the UDRP began in 1999.
For more information, see the .au Domain Administration’s website here: Dispute Resolution | auDA
If you have any questions about the information on this page, or you feel your trade mark registration has been infringed by another’s business name or domain name, contact our trade marks attorneys for advice. Our attorneys can also assist with preparing and filing a domain name Complaint on your behalf.