Domain Names
A domain name is a URL or website address.
Domain names usually fall into two different categories, either:
- descriptive of the business that owns the domain name, or
- consisting of a trade mark/trading name/company name/business name belonging to the business.
Some businesses opt for both types of domain names.
The domain name forms part of the intellectual property owned by your business. If you sell your business at a later stage, the inclusion of a useful domain name can increase the sale value.
It is generally advisable to conduct a trade mark search before using the domain name. If someone else has the same or similar name registered as a trade mark, for the goods or services that you intend to trade in using that domain name, then your use of the domain name would likely amount to trade mark infringement.
The mere fact that you might have registered the name as a company or business name will not assist you in overcoming trade mark infringement. The Trade Mark Register is not checked before company or business names are approved by ASIC. Trade mark registration gives much stronger rights and overrides company or business names (even if that company or business name was registered first). For example, if you have registered and use the domain name www.flyinghorsepress.com to publish or sell books, and somebody else has already registered “Flying Horse” as a trade mark for publication services or books, then your use of the domain name will amount to trade mark infringement in the country in which the Flying Horse trade mark is registered (assuming your services are aimed at or intended for recipients in that country). There is somewhat of a tension between trade marks and domain names.
HOT TIP : Remember to register your trade mark as a domain name early in your planning process. Depending on the business, if you cannot secure the domain name, you might want to choose a different trade mark. It is best to know if the domain name is unavailable, as early as possible in your planning process.
Trade mark protection is limited to the country in which the trade mark is registered. On the other hand, a website and its associated domain name can be accessed from almost any country in the world.
Business owners sometimes worry whether their domain name might infringe a trade mark which is registered in some obscure country. Certainly, if your website is targeted at people in that country, then there is a chance of trade mark infringement in that country.
Your use of the domain name will generally not infringe a trade mark if your main market is Australia and New Zealand, and you have ensured that the domain name is not registered as a trade mark by someone else in these countries. The best way of doing this is to get the trade mark registration in your name.
If someone registers a trade mark which is identical to your domain name, but after the date that you registered your domain name, you will be technically infringing their registered trade mark (if you are in the same or similar industry). The only way to prevent this problem is to register the name as a trade mark yourself. If you do not register the name as a trade mark before someone else does, you may have to enter into a legal battle for the right to continue using your domain name, and that could be very costly.
When registering domain names, it is not necessary to try and register every top-level domain (TLD) that there is. Eg. acacialaw.com, acacialaw.co.nz, acacialaw.com.au, acacialaw.biz, acacialaw.net, acacialaw.xxx, acacialaw.tv. The list is virtually endless.
With the introduction of new top-level domains, there are now thousands of domain name suffixes (the part after the first “dot” in your domain name), and more are continuously being added.
I recommend that you register the main ones of interest to you.
There is an entity known as the Trade mark Clearinghouse. It is possible to provide this entity with details of your trade marks. The benefit of this is that validated trade marks will get priority registration for domain names that become available in new TLDs.
Also, trade mark owners are notified if their names are registered as a domain name in any of the new TLDs (this excludes pre-existing domain name registrations, and pre-existing TLDs such as .co.nz, .com.au, .com, .biz), giving them the opportunity to object to such registrations if they wish.
HOT TIP: Avoid checking to see if a domain name is available, and then coming back to register it later. This can result in your first choice of domain name being registered by someone else, who tries to sell it back to you for an exorbitant price. (This happened to my brother). In some instances, you may be able to prove that the domain name should not have been registered in the name of the other party, but this can be expensive and time-consuming with no guarantee of success.
