November 23, 2013 Cogent Lawyers

Disputed territory – protecting domain names

A recent court decision highlights the difficulties of protecting domain names from exploitation by competitors.

REA Group Ltd (REA) owns the domain names realestate.com.au and realcommercial.com.au from which it runs property portals. It also owns trademarks which feature the domain names realestate.com.au and realcommercial.com.au, along with the tag-line “Australia’s No.1 property site” and a logo.

Real Estate 1 Ltd (RE1) owns the domain names and operated property portals out of realestate1.com.au and realcommercial1.com.au. REA sought findings that RE1 had engaged in trademark infringement, passing off and acted illegally.

The key question was whether people were misled or deceived by RE1’s conduct. The court found that an ordinary person wouldn’t be misled or deceived by the closeness of the domain names. The judge indicated that if consumers were looking for realestate.com.au, a Google search for that domain name would lead to that particular site, while if consumers were looking for “real estate”, and were led, through a Google search or sponsored link to realestate1.com.au then there was no proof they were misled, as it wasn’t clear that they were actually searching for REA’s site.

REA was more successful when arguing that RE1 had infringed its trademarks. The court found that realestate1.com.au as a mark was deceptively similar to realestate.com.au. A real danger of confusion arose because in the scanning process which may occur on a search results page, some consumers would miss the indistinctive “1”.

When disputes around domain names occur, companies can choose to commence proceedings either in Australian courts or under the Uniform Domain Name Dispute Resolution Policy; or, for domain names that end in .au, the .au Domain Name Dispute Resolution Policy. For advice on which route is the best to take in your circumstances consult your solicitor.