Domain Names — And Other People's Intellectual Property
Author: Maddocks Solicitors
What is a domain name?
A domain name is the unique address that identifies the location of a website on the internet. As you will have noticed, domain names can have a variety of different endings which can refer to different types of organisations - such as, .net.au, .edu.au, or .org.au, or to different registration localities, such as, .com.au (Australia) or .co.uk (United Kingdom).
There are specific rules of registration for each type of domain name ending. If these rules are satisfied, then domain names are allocated on a first come, first served basis.
The holder of a license to use a domain name is known as a registrant. The seller of a domain name license is known as a registrar.
While registrars can issue domain name licenses, the cost of registration charged by each registrar varies depending on the type of domain name being issued and the length of its registration period.
Domain names and trade marks — the domain gives little protection
No-one has an automatic right to a domain name. It is important to realize that there are different systems for registering domain names and trade marks.
The rights arising from registering a domain name are far more limited than those arising from registering a trade mark. A domain name registration is a license that entitles you to have the exclusive right to use the domain name for the duration of the license period. However, you cannot rely on domain name registration to stop another business from using the same or a similar name, or from registering a similar domain name.
In contrast, a registered trade mark is personal property and the registered owner has the exclusive right:
• to use the trade mark in relation to the goods and services to which relates, and
• to prevent other traders from using trade marks that are identical with or deceptively similar to the registered trade mark.
Consequently, if you use a domain name that is identical with or similar to another person's registered trade mark, then you risk infringing the trade mark — particularly if the domain name relates to the same or similar goods or services.
Choosing your domain name
There are four steps you should consider as part of the process of registering your domain name.
Availability of the domain name
First, check the status of an existing domain name to find out whether you can register it. Registered business or company names
Second, you should also check that the proposed domain name:
• is not the same as a registered business name in your state or territory (check with consumer affairs in your state or search the National Names Register Index at www.asic.gov.au); and
• is not the same as a registered company name (again, you can check the National Names Index).
The reason for this is that if you conduct a business through your website then the law in your state or territory will require you to register the relevant business name — registering a domain name will not exempt you from this requirement. Also, these checks will alert you to whether any other business is already trading under a business name similar to your proposed domain name.
Trade marks and common law marks
Third, be careful that the proposed domain name does not infringe an existing trade mark in Australia, or in overseas markets if you intend to trade overseas. You can check the Australian trade mark register, ATMOSS, by viewing IP Australia's website at www.ipaustralia.gov.au. However, you need to be aware that not all common law marks are registered as trade marks. If you register a domain name that is similar to a common law mark, then the owner of that common law mark may be able to stop you from using that domain name if it successfully establishes that your domain name passes off its common law mark.
Finally, consider which form of domain name ending is best suited for your business. For instance, if your business trades only in Australia, it may be preferable to register a .com.au domain name. But if you trade internationally, then it may be appropriate to consider registering a .com domain name. Ultimately, the choice of domain name ending will depend on your particular business and marketing needs.
About the author: Cleardocs is an Australian provider of legal documents for SMSF creation, company registration, family trust deeds and more. Cleardocs provide an automated online document creation process which is completely online and easy to use with documents ready within minutes.
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