Domain Names and Your Business

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It goes without saying that for most of today’s businesses, an internet presence is a fundamental part of any marketing strategy. It often helps to have the right domain name. This article investigates the proprietary rights associated with domain names in Australia.

There are no proprietary rights or ownership rights to domain names. If you register a domain name (for example www.osbornjensen.com.au) then you hold a licence to use the domain name for a certain period of time. You do not “own it”.

If you wish to use a “.au” domain name then in order to register the domain name you will need to show that you have a corresponding trademark, company or registered business name.

However, just because you register your business name or a trademark does not give you an automatic entitlement to use the domain name of your choice if someone else already has the licence to use it. Domain names are allocated on a first come, first served basis.

Registration of a trademark gives you the right to take legal action against a third party for an infringement of your trademark if it is being used for goods or services similar to those covered by your trademark registration. If another company is using your trademark as part of a domain name in respect to goods or services that are not the same as the goods or services covered by your trademark registration, then you will be unable to bring an action against them for infringement of your trademark either as part of a domain name or otherwise. Similarly, common law actions for passing off or actions for misleading and deceptive conduct will also be difficult if the domain name being utilised has absolutely nothing to do with the goods and services you are offering your clients.

By way of example, Osborn Jensen Pty Limited owns a registered trademark in class 45, Legal Services. If another party registered www.osbornjensen.com.au in connection with a mechanical repairs business, called Osborn and Jensen mechanical, Osborn Jensen Pty Limited will have no rights against the mechanical repairs business to force it to cease using the domain name or to have it transferred to Osborn Jensen Pty Limited.

The moral to the story: check to ensure that the domain name of your choice is available prior to registering your business name and trademark. Attend to register your domain name, business name/company name and trademark all at the same time as part of your initial company or business set up.

If you require further advice in relation to registration of your business name, trademarks or domain names, please do not hesitate to contact Tim Osborn or Alison Garland on 02 4925 2077.

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