Intellectual property: 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 and from which it runs property portals. It also owns trademarks which feature the domain names and, 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 and 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, 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 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 as a mark was deceptively similar to 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.