‘Fast tracking’ domain name and trade mark disputes in Australia

A recent Australian Federal Court ‘Fast Track List’ decision confirmed that use of a trade mark in a domain name, along with use of the trade mark on associated web sites, can constitute trade mark infringement. This list is an increasingly important part of a trade mark owner’s arsenal in dealing with trade mark infringement and misuse of domain names.

Partner Tim Golder and Senior Associates Jesse Gleeson and Mark Williams from the Australian law firm Allens Arthur Robinson report on this.

How does it affect registrants of .AU domain names?

The article examines the following points:

  • It is unlikely that mere registration of a domain name incorporating a trade mark will constitute trade mark use under Australian trade mark law; however, when coupled with use of the trade marks on websites linked to the domain name, the use of the trade mark in the domain name can constitute trade mark use.
  • The meaning of ‘geographical origin’ has been read narrowly. Accordingly, traders who use the name of a building or complex (which is the registered trade mark of a third party) in relation to their own goods or services, may not be able to rely on the ‘geographical origin’ defence to trade mark infringement.
  • The narrow interpretation of ‘generally accepted within the relevant trade’ means that it may now be more difficult to have trade mark registrations cancelled by the court for genericism.
  • This case is an example of how the Fast Track List in the Federal Court can be used to resolve disputes efficiently and pragmatically, and how additional relief can be granted to that available under the Uniform Domain Name Dispute Resolution Procedure (UDRP) and the Australian Uniform Domain Name Dispute Resolution Procedure (auDRP) (which are limited to transferring or cancelling domain name registrations).

To read the full article on the Allens Arthur Robinson website, see:
www.aar.com.au/pubs/ip/foipapr10_01.htm