The PBL Key 5 for Protecting your Domain Name

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The PBL Key 5 of protecting your domain name:

It is common knowledge that registering a domain name with one of the IT providers? does not necessarily create any intellectual property rights. However taking the next step and having the name registered as a trade mark or part of a mark can give much greater protection. In addition it may be possible to seek redress against a “cybersquatter” either via the traditional method of going to court or alternatively looking at using the dispute resolution procedure available through the World Intellectual Property Organization (WIPO).

In a recent case involving two real estate agents,one agent was successful in seeking redress on the basis that the other agent, who had ownership of the domain name realestate1.com.au, infringed its trade mark which incorporated the domain name realestate.com.au (REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559.)

Certain principles arise from a consideration of the use and ownership of domain names following this case:

  1. Always consider going the next step by making application to register the domain name as or part of a trade mark to ensure you can seek redress under the Trade Marks Act 1995.
  2. You will only be able to seek redress for trade mark infringement if an offending domain name relates to similar goods and services as your domain name.
  3. The test is whether the other party is using as a trade mark a domain name which is substantially identical or deceptively similar to your mark (subject to any available defences).
  4. It may be possible to seek redress against the other party for misleading and deceptive conduct under the Competition and Consumer Act in circumstances where there is clear proof of a course of conduct by the other party particularly where no website is involved.
  5. Obtaining redress against another party may be by way of litigation where you can seek orders for injunction to prevent further infringement, damages, passing off or an account of profits. However as an alternative, consider bringing an action under the Uniform Domain Name Depute Resolution Policy through WIPO if you only wish to have another domain name transferred to you to prevent further infringement. It is both a cheaper and quicker alternative.

If you are interested in pursuing your rights in this area you may wish to contact us on 4305 3500.

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Director Lawyer, PBL Law Group

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Jye Hall
Anita Bradley has been an absolute dream to deal with. Anita's conveyancing skills and knowledge knows absolutely no boundaries along with her effective communication skills which has made selling and buying a completely stress free exchange for us. We recommend PBL Law to everyone looking for outstanding service. We will definitely be returning clients.
Kushlan Aluwihare
PBL Law Group were fantastic. Anita from PBL worked with us closely during our property search and made the exchange and settlement process smooth and stress free. Highly recommended.
Gail Whitford
PBL handled my late mothers estate, they were very obliging and patient with any and all questions that we had, thank you to David , Sharon and the other staff that we dealt with, everyone was so easy to talk to and friendly .David came to the home where my Mother was living and helped her to get her will in order, Sharon helped us through the process of executing her wishes when the time came even doing a house call which was so much easier, thank you all so much
S M
I have experienced an excellent service from PBL (especially from Anita) during the sale of my recent property on Central Coast, and during the purchase of our current property in Sydney. Throughout many challengers, especially with the sale, Anita presented her very professional and knowledgeable conveyancer, positively solving all obstacles. "Above and Beyond" Award going to Anita!!! :-)
Amanda Reitzin
The five-star reviews are well-deserved. I needed a motion and a bylaw drawn up for urgent repairs of my strata unit and the AGM was in two weeks' time. My solicitor was friendly, efficient, knew what documents to ask for, and had all the paperwork prepared well within the timeframe. She also took the time to run through all the legalese and the different possible scenarios with me to make sure I understood. I am so glad to have found this firm and I will not hesitate to use their services again in future if the need arises.
Ricky Cooper
Anita is amazing! So attentive, approachable and communicates everything every step of the way. I have now bought and sold property with Anita and I cannot recommend her highly enough.
Ron Thomsen
Our Commercial Property conveyancing was handled very professionally. Anita’s experience and responsiveness was an asset in this transaction.
Trace M
I am so grateful for Anita Bradley from PBL Law Group helped me with this property settlement, she has went above beyond to ensure I understand everything because of our deafness. I will recommended Anita or their team. Thank you so much for all the hard work you have done for us.
Tricia Wheatstone
For almost 18 months I have been a client of Alex Ilkin. Alex is very knowledgeable and professional and has consistently provided me with thorough, honest and well set out advice, including steering my case through appeal proceedings. He always worked for my best interests with integrity and compassion. I recommend Alex and his team at PBL.