There can be some confusion when it comes to ownership rights of trade marks and domain names. Domain names are obtained separately from trade marks. They are issued by private internet companies and registered by the .au Domain Administration. The purpose of a domain name is to secure the web URL only, so when a person registers a domain name, they do not take ownership of it. Rather, they are granted a license to use the domain name. This license can be terminated in certain situations.
Domain names typically contain a trade mark of importance to a business. Not all domain names can be registered as trade marks. However, provided that eligibility requirements are met; domain names can be registered by anyone on a first-come, first-served basis. For this reason, you should register a domain name or perhaps a suite of domain names containing your important trade mark as soon as possible.
Merely registering a domain name that includes a third party’s registered trade mark does not necessarily constitute trade mark infringement under the Trade Marks Act 1995. Something more is needed. If a website linked (either directly or through redirection) to the domain name is offering goods, services or similar goods or services for which the trade mark is registered, then there is likely to be trade mark infringement.
Registering and using a domain name that includes a third party’s trademark (whether registered or not) may constitute misleading and deceptive conduct or passing off, particularly in cases where the trade mark is well known. In common-law countries such as Australia and New Zealand, passing off is a common law tort which protects the goodwill of a trader from misrepresentation.
You should not use a competitor’s registered trade mark in your domain name, even for website redirection, as this may constitute trade mark infringement. Likewise, you should not use a competitor’s unregistered trade mark in your domain name in the event that the competitor commences legal action (eg. under common law) or ultimately obtains registration of that trade mark.
We get numerous enquiries each year from brand owners complaining that someone else has registered a domain name containing their brand.
If a competitor has registered a domain name that contains a trade mark of importance to your business, domain name ownership can be contested outside of the courts, under a domain name dispute resolution policy such as the Uniform Domain-Name Dispute-Resolution Policy (UDRP) or .au Dispute Resolution Policy (auDRP). This can be a cost-effective way of gaining ownership of a domain name containing your trade mark.
Information on auDRP: https://www.auda.org.au/blog/audrp/