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THIS WEEK
Internet Success: Registering Winning Domain Names
ALSO IN THIS EDITION
Internet Success: Registering Winning Domain Names |
This week's lead article comes from expert IT laywer Kay Lam-Beattie. I met Kay last year at a networking event and was impressed to finally find a lawyer who fully understood the unique needs of businesses with an internet presence ... believe me they are as rare as hen's teeth!
With the recent changes in Australia allowing people the right to sell and transfer domain names to other people, I thought it a great opportunity to ask Kay about what that means for "regular" internet users, as well as the link between trademarks and domain names.
A good name is hard to find
Clients often complain to me about how hard it is to name their new business. They rack their brains for something catchy and clever, only to find again and again that someone else has already grabbed the domain name.
It seems as if all the ‘good’ domain names taken. Dot com names (i) were snapped up years ago, and now even a good .com.au is hard to find. A couple of my clients have resorted to buying licences for existing Australian domain names because it’s simply too hard to come up with something new.
AuDA (ii) (the body that administers .com.au) relaxed its policies last year, to allow Australian domain name licences to be sold for any reason. To discourage ‘domain parking’ by people who snap up thousands of speculative generic domains, AuDA’s policies state that domain name licences cannot be purchased purely for resale, and cannot be resold within 6 months.
All applicants also have to pass the eligibility criteria – to show that they have a business which has a close and substantial connection with the proposed domain name – for example, they have some related product name or type, business name, company name or even a trade mark application (iii). The same policy applies to anyone who buys a domain name from someone else (iv).
 And now the bad news.
Armed with their domain name, a neat logo and perhaps a registered business name, they come to see me. And inevitably I ask, ‘so, do you also have the registered trade mark?’
You see, a domain name registration gives you control over what people see when they enter your domain name in their browser. It does not give you any other inherent rights to stop anyone else using a similar domain name or business name, though of course you can dispute their registration of the domain name.
In the same way, others can challenge your domain name licence if they think you aren’t entitled to it, or if you are infringing on their rights.
Domain name disputes are dealt with under AuDA’s dispute resolution policy. You can challenge a domain name on the following grounds:
- the domain name is identical or confusingly similar to a name, trade mark or service mark in which you have rights; and
- the registrant has no rights or legitimate interests in respect to the domain name; and
- the registrant is using the disputed domain name in bad faith.
One of the many examples of domain name disputes arose when Callverse Pty Ltd registered the domain name www.facebook.com.au and used the landing page to advertise a service that was ‘coming soon’. They held the site for a couple of years in this way.
The owners of social networking site Facebook.com, who own several registered trade marks in Australia, disputed Callverse’s registration of the domain name.
Not surprisingly, the dispute resolution panel found in favour of Facebook, as all three parts of the test had been satisfied (vi). In June 2008 the panel ordered that the domain name be handed over and it now points to www.facebook.com.
The panel looked at a number of factors:
- Callverse claimed they’d never heard of Facebook. The panel didn’t believe them.
- Callverse never offered any actual goods or services even remotely connected with the name ‘facebook’.
- Callverse provided no evidence - not even a telephone book listing – to back up its claim that it had spent substantial money to develop a business plan or software to launch on the disputed website.
- Facebook owned a number of registered Australian trade marks and had a considerable online presence.
- The panel didn’t accept the argument that because ‘face’ and ‘book’ are common English words, ‘facebook’ is therefore a generic term and up for grabs, and
- The panel concluded Callverse had registered the domain name in bad faith to create confusion and divert Facebook’s traffic onto its own website, to make money.
Yikes, I just bought a domain name! Should I be scared?
If you’ve bought a .com.au domain name licence or are thinking about it, there are a few things you should ask yourself:
- Have I confirmed that I meet AuDA’s eligibility criteria of trading as a company, registered business name, partnership, sole trader (etc) or at least having a registered or pending trade mark associated with the domain name?
- Have I checked whether my domain name might be confusingly similar to anyone else’s (and in particular, domain names belonging to well known large corporate giants with lots of money and a small army of lawyers in its pockets)?
- Do I have a business or products that have some kind of connection to the domain name? At the very least, even if I am using the domain name only to run an advertising website containing links to businesses, do those businesses have some connection to the domain name?
- Do I have a genuine interest in the domain name – that is, can I show evidence that I didn’t buy the domain name purely to park it and sell it later at a profit?
- If it is not a generic name (eg law.com.au is generic, idealaw.com.au is a cool IT law firm ;-) then do I have the registered trade mark or at least checked that it doesn’t infringe someone else’s trade mark (vii)?
- If buying a domain name licence from someone else, have they owned it for more than 6 months?
If you have answered NO to any of these questions, your domain name registration could be at risk.
Keep in mind that domain name registrations are on a first come, first served basis, so generally if you already have the domain name, no one else can come along later and start using that name, register a trade mark and use that to force you to hand over your domain name.
At the same time, as part of your due diligence process, you should be checking that you have a good claim to your domain name before investing further time and money in building and promoting your website. This is especially true if your entire business model hangs off your domain name.
Naturally, while this article has some general guidelines, you should seek specific advice for your situation rather than relying only on this article.
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(i) Note that very different rules apply to .com as opposed to .com.au
(ii) http://www.auda.org.au/
(iii) Just how closely connected does your business and proposed domain name have to be? That’s another whole topic. But as well as your literal business name, your domain name can be some shortform or nickname, either of your business or your products/services. You can also register domain names under the close and substantial connection rule for the explicit purpose of domain monetisation – that is, your entire website is advertising space about the subject matter of the domain name.
(iv) You can find all of AuDA’s policies at http://www.auda.org.au/policies/current-policies/
(v) http://www.auda.org.au/pdf/audrp.pdf
(vi) See the full decision at http://www.wipo.int/amc/en/domains/decisions/html/2008/dau2008-0007.html
(vii) What’s a registered trade mark, and how is that different from a registered business name? Another whole topic, but take a look at www.ipaustralia.gov.au as a great starting point.
Kay Lam-Beattie graduated in the early 90s with a Bachelor of Business (Accountancy) and an honours degree in Law. To obtain more specialised skills, Kay also completed a Masters in Law concentrating on the areas of intellectual property (IP) and IT- related legal issues, as well as a Graduate Certificate in IT.
She has been the principal of IDEALAW (and its predecessor Legal Capital Lawyers) since 2005.
Kay’s broadly based academic qualifications and practice experience places her in an ideal position not only to understand the intricacies of her specialist areas of IT and IP related law, but also the surrounding technical IT and business issues.
She also speaks conversational Japanese, having lived and worked in Japan for a number of years.
To learn more about how Kay can help your business visit
www.idealaw.com.au
| HR Tip of the Week - Ask your team for feedback on your website |
Most businesses have a website ... but how successful is it really? If you have a team of employees you can use them to help you refine your website.
Ask them:
- How easy is it to find their way around the site
- What impression do they get when they look at your site
- What feedback have they heard from clients about your site
- What information is missing from the site
- What questions are they often asked by clients that you could put on your site
You can also run a competition and offer $5 for every spelling, typo and grammatical error they can find on the site. This helps you to proof-read your site, as well as makes your team familiar with the content on your site.
| Product of the Week - Article Marketer |
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In this post I debriefed some of my learnings from the World Internet Summit and how the different speakers used testimonials to great effect during their speeches.
Sales Success with Long Copy
exuberantly yours
Ingrid
Heart Harmony
PS: This week's Small Business Tips blog also included posts about Viral Marketing with Sheep, My Cubicle and the Web 20 years on (and my 20 year Net Anniversary).
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