Can Businesses Use a Trade Mark as a Domain Name?
Emily Young
Company websites have become the first place most consumers look to engage with a business. As a result, it has become increasingly vital that you consider the rights associated with domain name registration. Additionally, a trade mark enables you to protect and enforce your rights to your brand. This serves as legal protection and a marketing tool, increasing the overall value of your business by promoting your presence and differentiating you from competitors. This article will explain how trade marks and domain names interact and the implications for your business.
Domain Names and Trade Marks
With most businesses having an online presence, understanding the importance of domain names is critical to your business’ success. A domain name refers to your website name, which is how your potential customers will find and identify your business online. In addition, a domain name is accompanied by one of a number of extensions, such as .com, .net, .org, etc.
Australian companies license domain names through the .au Domain Administration Limited (auDA). auDA operates on a first-come, first-served basis, meaning that trade mark registration does not automatically entitle you to the domain name license for your business name, even if you have a registered trade mark for it.
However, if someone has licensed domain name the same as or similar to your trade mark, you can lodge a complaint with the auDA. Significantly, this only extends to Australian extensions, such as ‘.com.au‘ or ‘net.au’, which means you cannot lodge a complaint about an international country code or more generic domains such as ‘.com’.
Complaints About Domain Name Infringement
The auDA offers a Dispute Resolution Procedure that you can use if an unauthorised third party is using your trade mark. Again, this dispute only extends to complaints for the ‘com.au‘ extension.
Upon making a complaint via the auDA, your complaint will be reviewed for validity. If valid, it will be forwarded on to the unauthorised third party using your trade mark in their domain name. This third party will then have 20 days to file a response. A panel is then appointed to review this dispute and will then decide within 14 days of its appointment.
This is an expensive process. If you make a complaint to the auDA, you will have to pay $2000 to have a one-member panel hear your complaint. If you opt for a three-member panel, the cost is $4,500. As such, it is recommended that you assess the domain names you will need at the time of trade mark application and ensure that both your trade mark and domain name are available for use.
Remedies Available
Where you successfully lodge a complaint to the auDA, there will be one of two outcomes, being:
- the unauthorised third party must cancel the domain name; or
- the licence is transferred to you.
Recent Updates
In April 2021, changes to .au registration procedures became more strict. Previously, if you were relying on a registered or pending Australian trade mark to meet the eligibility requirement, the domain name had to be an exact match, abbreviation, or acronym of the trade mark or be closely and substantially connected to the owner.
However, the changes to these rules now mean that you cannot rely on the ‘closely and substantially connected ’ provision. Instead, the domain name must be an exact match of the Australian trade mark. This means the domain name must:
- be identical to the words that are the subject of the trade mark (e.g., words such as ‘the’ and ‘a’ may be omitted);
- appear in the same order as the trade mark; and
- not include any additional words or numbers.
Ultimately, you should ensure that you can obtain domain name matches for your trade marks at the time of registration to avoid any issues.
Key Takeaways
As company websites have become the first place most consumers look, it has become more vital that you consider the rights associated with domain name registration as well. To ensure you have the best protection for your brand, you should ensure that:
- your trade mark is available for registration; and
- this trade mark is for your business name, and the domain name is also free.
If you need assistance registering a trade mark for your business or understanding domain names, our experienced IP lawyers can help. Give them a call on 1300 657 423 or fill out the form on this page to get in touch.