In Australia, domain names under the .au namespace are subject to stringent eligibility and allocation rules. Importantly, non-Australian commercial entities are only eligible for registration for an Australian domain if they have applied for or hold an Australian trade mark registration with an exact match to the relevant domain name.
In order to constitute an "exact match", the domain must be identical to one, some or all of the words or numbers of the trade mark. However, punctuation marks, articles such as "a", "the", "and" "or" "of" and ampersands are not included in any comparison.
We have recently observed foreign domain name registrars applying for trade marks on behalf of foreign companies for words with randomly inserted punctuation marks. Once the punctuation marks are removed, the remaining letters correspond exactly with recently filed domain names in the .au space and share the same registrant name as the domain name applicant. Many of these domain names are merely parked and do not appear to be in commercial use.
It appears the domain name registrars are filing the trade mark applications by on behalf of clients wishing to register .au domain names so that they can meet the applicable eligibility criteria. The insertion of random punctuation marks also a deliberate attempt to avoid the mark lacking distinctiveness or conflicting with earlier filed marks on the Register.
There are two issues with this practice:
- It circumvents the policy objectives of the .au registration system that domain names should only be available to businesses with a bona fide commercial presence in Australia.
- An applicant can only legitimately apply for registration of a trade mark in Australia if it uses or intends to use the trade mark for the claimed goods or services.
Here, the trade mark applications all claim "registration of domain names (legal services)" in class 45. It is clear that owner is not using the marks to register domain names on behalf of other traders. Rather, the trade mark corresponds to a name registered by the domain name registrar on behalf of the trade mark applicant. This name is not being used as a "trade mark" to indicate the trade source of any goods or services.
Furthermore, the trade marks are not the names actually in use, but corruptions of the actual domain name using interposed punctuation that satisfies exact matching rules specified in the .au eligibility criteria.
This potentially leaves the trade marks vulnerable to opposition, revocation or cancellation.
Foreign entities holding an Australian domain name must ensure they meet the eligibility and allocation requirements throughout the time they hold the domain, and not just at the time of its registration. This means maintaining a valid Australian trade mark. There are tricks being employed to meet the administrative requirement of having a trade mark, but these methods risk the invalidation of the mark. Best practice requires obtaining registration of a trade mark that is actually in use in the course of trade mark that corresponds with the domain name registration. This would then also provide all of the rights of a valid trade mark registration.
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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