The Internet can best be described as an international network of networks, providing the communications architecture that forms the basis of other services, such as the World Wide Web. Every computer directly connected to the internet holds its own personalized identifying number, known as an IP (Internet Protocol) Address, an address consisting of a code of numbers, simplified into a ‘people friendly’, alphanumeric reference term, also known as a domain name.
Domain names, unlike trade-marks, are not recognized by local statutes as intellectual property, and therefore are not protected against use by another party in the same way as a trademark. This becomes problematic in the information age as the high volume of client or customer research completed online provides an intelligent competitor an opportunity to target the client or customer that mis-strokes the keyboard. The issue of competitors registering similar domain names is one that is becoming increasingly prevalent and one that the courts have recently overviewed.
The tort of passing off prevents people from representing their goods or services as being the goods and services of another, protecting the goodwill of a trader from a misrepresentation that causes damage to their goodwill. Recently the issue of the registration of comparable domain names breaching passing off regulations came to a head in REA Group Ltd v Real Estate 1 Ltd  FCA 559, where competing real estate agencies registered the domain names “realestate.com.au” and “realestate1.com.au” respectively. Whilst REA Group’s domain name www.realestate.com.au was already well established in the marketplace upon Real Estate 1’s registration of their domain name, Justice Bromberg stated that the decisive factor was not the history or public notoriety of the domain name, but rather whether the conduct of the competing firm would mislead or deceive the public. In this case the court found that an ordinary person would understand that an organic search result is likely to be more relevant to the information searched for than a sponsored link. Justice Bromberg also found that REA had not established that a substantial number of ordinary or reasonable persons were likely to be misled or deceived by the closeness of the domain names.
This approach differs significantly from the approach taken by the panelists under the UDRP, who in previous case law recognized the concept of “initial interest confusion” or the idea that “by the time a user reaches the website identified by a domain name any registrant objective of attracting visitors for financial advantage to a website through a confusingly similar domain name will generally be achieved”. Therefore it is seems that the ability for an entity to combat an intelligent competitor is becoming more difficult.
The REA case established a test for trademark infringement by claiming the differences between trademark infringement and misleading and deceptive conduct by indicating that a mark will be deceptively similar to another mark if there is a “real tangible danger” of confusion occurring and that allowance must be made for the imperfect recollection of a trademark. The test for trademark infringement is different to that required to establish misleading and deceptive conduct, with the courts in trademark infringement matters considering the use of the respondents mark alone, whereas the test for misleading and deceptive conduct focuses more on the ability to create confusion within the mind of a consumer. Therefore it is arguable that in its current state, as a domain name is not seen as a mark of a corporation that an entity will find it hard to protect.
An entity does currently have a claim against the registration of a similar domain name under the UDRP if the case involves “clear cybersquatting” (bad faith registration of a domain name in which another entity has rights), at which time an entity can make an application to have the name cancelled or transferred to it if the applicant can convince an independent panelist that:
- The domain name is identical or confusingly similar to a trademark or service mark in which the applicant has rights;
- The registrant has no rights or legitimate interests in respect of the domain name;
- The domain name has been registered and is being used in bad faith
UDRP proceedings usually take two to three months to conclude. Whilst the REA case has narrowed the issues in a claim against a similar domain name, Australian courts will still consider claims when:
- Domain name holder is registered in Australia or the domain name is registered with an Australian registrar;
- The rights holder is seeking a remedy other than mere transfer of the domain name (for example, if the domain name holder is engaging in conduct in addition to the registration and use of the disputed domain name;
- The domain name holder has some rights to the domain name; or
- The domain name is not used for similar goods and services but there is a clear risk of confusion and damage to the applicant.
The UDRP is useful for cases where the client is looking for a simple, quick and cheap way of recovering the domain name, although all options should be considered before embarking down this path as these matters are far from a home run.