Australia: Is Your Domain Name Protected?

Last Updated: 26 February 2009
Article by Eugene Reinboth

The Importance of Domain Names

In today's modern technological age consumers are constantly turning to the Internet to purchase (and obtain information on) a large array of goods and services; from on line shopping (such as grocery and e-bay), to on-line financial services (banking and insurance), and much more.

Consequently websites and domain names have become vital in the marketing of most businesses.

A domain name is simply the distinct name or address (such as, which is recognised by all networking protocols, systems and servers that support the Internet. The unique part is the segment "telstra".

Choosing the right domain name is critical to establish on-line branding and marketing. With an easy to remember domain name, customers will be able to easily access information 24 hours a day.

The need for Protection

With the knowledge of the crucial importance of domain names, some people have begun to register domain names of high profile companies in an attempt that they may be able to sell those domain names to the companies concerned.

In the case of British Telecommunications plc v One in a Million Ltd 1 the defendant had registered a number of well-known business names such as Cadburys and Spice Girls, as domain names, and then threatened to offer them for sale to any interested parties including the traders themselves. It was held that such actions constituted passing off under common law and the domain names were transferred back to Cadbury and Spice Girls.

The practice has also involved the registration of domain names of high profile sporting personalities (such as Australian cricket icon Ricky Ponting2 and British soccer star Wayne Rooney3) in an attempt to extract benefit from their personal commercial value.

These practices are commonly known as "cybersquatting", and are illegal under both Australian and International law.

Another form of cybersquatting has involved individuals and companies registering domain names similar to that of their competitors, in order to divert potential customers away from competitors.

More recently businesses have been misusing "meta-tags" (the hidden HTML tags that search engines use to index, rank, and display information about websites in search results) to divert Internet traffic away from high profile and successful competitors to their own websites4.

Ways to Protect Domain Names

It is possible to protect against this sort of behaviour and ensure the value of your domain name, and your business is maintained.

There are three principle avenues to stop domain name infringement:

1 Proceedings in the Federal Court An action can be bought in the Federal Court based on a breach of Sections 52 and 53 of the Trade Practices Act 1974 (Cth) and also for trade mark infringement under the Trade Marks Act 1995 (Cth).

This avenue may be appropriate in the following circumstances:

  • Misleading or deceptive conduct/ misrepresentation
  • Where the representor engages in conduct, which "misleads" or "deceives" people to believe there is an association with another entity, which the representor does not have.
  • Passing Off
  • Where the representor tries to "pass off" their goods and services as those of another potentially causing confusion amongst consumers.
  • Trade mark infringement under the Trade Marks Act 1995 (Cth)
  • Use of a mark or sign that is substantially identical with or deceptively similar to another entity's registered trade mark.

2 A complaint under the Uniform and Domain Name Dispute Resolution Policy (UDRP)

The Internet Corporation for Assigned Names and Numbers (ICANN) is a regulatory body established to manage domain names. The UDRP is the vehicle used to resolve domain name disputes through ICANN.

A complaint issued through the UDRP can only be made for a domain name infringement claim for generic top level domains such as .com, .org, .net)

This avenue may be appropriate in the following circumstances:

  • the domain name is identical or similar to a trade mark to which the Complainant has rights
  • the Respondent has no rights or legitimate interests in the domain name
  • the Respondent has registered and used the domain name in "bad faith" (inaction, i.e. not using the domain name is considered within the meaning of bad faith5)

3 A complaint to .au Domain Administration Ltd (auDRP).

auDRP is the "Australian arm" of the UDRP.

A complaint to auDRP can only be issued for a domain name infringement involving country code top-level domain names such as ".au".

The grounds for making a complaint under the auDRP, are predominately the same as those under the UDRP.

It is vital to choose the appropriate avenue when dealing with potential domain name infringements to maximise the prospect of a successful claim. There are advantages and disadvantages in using each of the above protection methods, and depending on the circumstances of a claim, one method may be more appropriate than another.


1 [1999] 1 WLR 903

2 Ricky Thomas Ponting v Kevin Leonard Consulting Pty Limited (ACN 087 382 858) & Anor

3 WIPO Arbitration and Mediation Center - Stoneygate 48 Limited and Wayne Mark Rooney v. Huw Marshall Case No. D2006-0916

4 Road Tech Computer Services Ltd v Mandata (Management & Data Services) Ltd [2000] ETMR 970; [2001] EBLR 17 (Ch).

5 WIPO Arbitration and Mediation Center - Telstra Corporation Limited v Nuclear Marshmallows D 2000-0003

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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