Australia: Joining The Dot Coms In The Legal Web Of Domain Names

Last Updated: 8 March 2000

Domain names, the unique strings of characters used to identify addresses on the Internet, are hot property. The recent high profile sales of domain names like, and for amounts reaching well into the millions has made this clear. While domain names do not fall into any of the classic categories of intellectual property, they are often equally valuable to companies and raise a complex set of legal issues which are only just beginning to come to the attention of courts and legislators in Australia and around the world.

All email addresses and world wide web addresses use domain names. Let's say there is a large American company called Largeco Inc. It has registered the domain name ‘’. The homepage of its website could therefore be at and the general manager's email address may be Like phone numbers, no two domain names can be alike, as the domain name identifies a unique site on the Internet. However, the value of securing a commercially important domain name is much more than having a catchy phone number. Whereas a consumer wanting to find Largeco's phone number could simply look in the telephone directory or call an operator service, there is currently no comprehensive equivalent listing of these services on the Internet.

The consumer could use one of the ‘portal’ sites (such as Yahoo or NineMSN) which arrange links to other websites into categories. The difficulty for the consumer here is working out which category to look under, particularly when looking for companies whose diverse operations cover everything from salami manufacturing to a booking service for professional clowns. Even if the consumer does know which category to check, there is no guarantee that the portal site will have a link to the company's website.

Alternatively, the consumer could try a ‘search engine’ (such as Google or Yahoo - the latter is an example of a site which is both search engine and portal) to try to find references to Largeco on the Internet. The trouble here is that these searches can generate an enormous number of ‘hits’, many irrelevant. The consumer may have to look through pages of links to news articles about Largeco or competitors' sites which have used technical means of tricking the search engine (which is simply a software program) into thinking it has found a site about Largeco or scientific sites discussing the new form of gum bacteria, largecophococcus, which just happens to be nicknamed ‘largeco’.

Faced with these inefficient means of locating the Largeco website, the consumer is likely to instead try typing in the address ‘’, in the hope that it is the correct site. Luckily it is. But now Largeco is wanting to set up another website for its Australian operations, and its searches find that the domain name of choice,, has already been registered. Largeco contacts the person to whom the domain name is registered, who asks for A$200,000 to give up the domain name.

This sort of scenario is all too common in cyberspace and has generally resulted from ‘cybersquatting’, the practice whereby people deliberately buy popular names and then attempt to sell them to interested parties. The situation where cybersquatters target other organisations' trading names (like Largeco's) will be the main focus of this article. Disputes can also arise where two or more companies which have a legitimate claim to the same name attempt to register similar or identical names, but this would not normally be classed as cybersquatting.

Allocation of domain names

Much of the reason for domain name disputes occurring has been the way in which the popular ‘.com’ domain names are allocated. The US organisation, Network Solutions Inc (NSI), allocates these domain names on a ‘first come, first served’ basis. This is regardless of whether the domain name has any connection to a trade mark or other trading name. This practice has meant that it has been possible for cybersquatters to buy up domain names on a grand scale.

However, the situation is different in for Australian domain names. The organisation which allocates names, Internet Names Australia, (‘INA’) has a more restrictive policy. Domain names usually have to be derived from a commercial entity name such as an Australian registered company or business name. The registrant must also be trading in Australia. This latter requirement can cause problems for foreign-based companies like Largeco. Notably, a registered trade mark is neither a requirement nor a guarantee of registering a domain name in the domain at present.

Can trade mark law assist?

Let's assume that ‘Largeco’ is a registered trade mark in Australia. In the case of trade marks registered in Australia, the Trade Marks Act (‘the Act’) offers some protection. Trade marks are defined in the Act as signs used to distinguish goods or services dealt with or provided in the course of trade. In the domain name context, the type of ‘signs’ at issue will be words.

The rationale behind the trade mark system is to protect ‘brands’ of goods and services. But as we have seen, domain names now operate in this same field, but without any formal alignment with the trade mark system. It is clear that registration of a domain name does not, of itself, give any rights against the holder of a registered trade mark. What protection does Australian trade mark law give to the trade mark owner who finds that the aligned domain name has been registered by another?

One difficulty is that trade marks have geographical restrictions since they are required to be registered in each country where they are used. The Internet is a global medium which does not recognise geographical boundaries. While this article focuses on Australian law, it is worth noting that the laws of other countries may also be of some relevance to domain name disputes with an Australian aspect and complex jurisdictional issues may need to be considered.

The Act prohibits the use as a trade mark of a sign that is substantially identical with or deceptively similar to, the registered trade mark in relation to any of the 42 categories of goods or services in respect of which the trade mark is registered. This may be a problem for Largeco if the person who registered ‘’ is not operating the website in relation to goods or services in a category for which Largeco has registered its trade mark.

Otherwise Largeco would need to show that its trade mark is ‘well known in Australia’ in order to obtain trade mark protection. The Act offers protection for well known marks where a substantially identical or a deceptively similar mark is used on unrelated goods. If this is likely to indicate a connection between the unrelated goods or services and the registered owner of the mark, and adversely affect the interests of the registered trade mark holder, then there will be a trade mark infringement, and the registered owner may enforce its rights.

These provisions require that the trade mark be used in connection with goods and services. Therefore, to protect a domain name, the domain name would have to be used in this context. That is, the domain name would have to be associated with the goods and services (eg it could be part of the advertising for the goods and services). However, where a domain name is merely used as an address label, these provisions may not be effective.

Passing off

Passing off is the longest-standing and most established cause of action in this area internationally. In fact, the system of registered trade marks developed out of the principles of passing off. To successfully bring an action for passing off, a plaintiff is generally required to prove three key elements:

  • that reputation or goodwill exists in the name;
  • that the defendant (cybersquatter) made a misrepresentation as to affiliation or endorsement under that name; and
  • that damage to the value of the plaintiff's name and reputation resulted.

As far as domain name disputes are concerned, the greatest hurdle of these three tends to be the element of misrepresentation. Typically, the cybersquatter may post a disclaimer on the website, explicitly rebutting any implicit representation of endorsement which may be raised by the use of the domain name. Thus, there is no misrepresentation as to the identity or affiliation of the defendant's website, and the plaintiff therefore has no recourse under passing off.

However, the recent UK decision in the One in a Million case may foreshadow a shift towards a relaxation of the technical rules of passing off in this context. The defendants in that case admitted to registering a collection of domain names, including '', '', '' and ''. These domain names were not in use as active websites (and thus there could be no misrepresentation to the public at large), but the defendants did admit to offering the domain names for sale at a substantial sum to the trade mark owners. The plaintiffs were successful and obtained orders that the defendants take steps to have the disputed names assigned to the plaintiffs. In relation to passing off, the Court held that the mere existence of the domain names created a risk of deception to consumers and stated that:

‘Any person who deliberately registers a domain name on account of its similarity to the name, brand name or trade mark of an unconnected commercial organisation must expect to find himself on the receiving end of an injunction to restrain the threat of passing off and the injunction will be in terms which will make the name commercially useless to the dealer.’

This injunction, ordered pre-emptively to restrain the threat of passing off, constitutes a significant expansion of the doctrine and may be used more often in the resolution of cybersquatting disputes.

Domain name laws and dispute resolution procedures

NSI's laissez-faire approach to domain name allocation has given rise to a multitude of cybersquatting and other domain name disputes. In an attempt to equitably and expeditiously resolve these disputes, the Internet Corporation for Assigned Names and Numbers (‘ICANN’) recently adopted a Uniform Domain Name Dispute Resolution Policy (October 24, 1999) for names in the top-level .com, .net and .org domains. The Policy, together with its associated Governing Rules, prescribe a set of principles and procedures which are to be applied in resolving disputes between domain name registrants and aggrieved third parties. Essentially, the Policy allows for a complainant to institute mandatory administrative proceedings with an administrative panel appointed by an ICANN-authorised dispute resolution provider. The proceedings would require the complainant to establish that:

  • the registrant's domain name is identical or confusingly similar to a trade mark belonging to the complainant;
  • the registrant has no legitimate interests in respect of the domain name; and
  • the domain name has been registered and is being used in bad faith.

If successful, the complainant may be assigned the domain name by order of the panel.

The first case decided under this policy was delivered on 14 January 2000 in the case of World Wrestling Federation v Michael Bosman. Bosman, a resident of California, registered the domain name with Melbourne IT. Melbourne IT provides registration of top-level domain names in Australia. Melbourne IT was directed to transfer registration to the World Wrestling Federation because Bosman showed bad faith by registering the name and then attempting to sell it at a price that exceeded his investment of time and money.

In addition to these independent proceedings provided for by the ICANN Policy, the United States Government late last year passed the Anticybersquatting Consumer Protection Act, to make any person who registers, traffics in or uses in bad faith a domain name which is identical or confusingly similar to a registered trade mark, civilly liable to pay the owner of that mark damages in the range of US$1,000 to US$100,000.

While the Australian Government recently participated in an international workshop on cybersquatting, there is no such legislation currently effective or proposed in Australia. However, INA's Allocation Policy for names does provide for a dispute resolution procedure. The procedure requires the complainant to first send notice of the dispute to the administrator, then proceed to negotiation and conciliation with the administrator and any third parties and finally, if necessary, to refer the dispute to a commercial disputes centre (all parties agreeing to be bound by the ruling of the arbiter). The INA procedure is far less detailed than ICANN's and is not specifically limited to disputes relating to trade marks.

Both the ICANN and INA dispute resolution procedures outlined above do not have exclusive jurisdiction, and either party may still reserve the right to prosecute the matter through the traditional court system.


Given the lack of both legislation and case law in Australia, the law relating to domain names remains uncertain. As the number of disputes rises with the soaring popularity and commercial significance of the Internet, constant new developments are likely and will need to be closely monitored. Meanwhile the rush to register domain names will continue and companies should be mindful that if they do not register their desired domain name first, there may be no easy legal recourse. For greater certainty companies should ensure that their domain names are supported by appropriate registered trade marks.


This article provides a summary only of the subject matter covered, without the assumption of a duty of care by Freehill Hollingdale & Page. The summary is not intended to be nor should be relied on as a substitute for legal or other professional advice.

For further information please contact us.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions