June 12, 2012
A battle between a Sydney barrister and an Australian association representing local barristers offers some important information for all would-be domain name registrants.
According to Lawyer Weekly, the Australian Bar Association (ABA) has threatened to sue the barrister for his use of the word "Austbar" in his domain name.
The ABA claims the www.austbar.com.au domain and web site is deceptively similar to its own - www.austbar.asn.au.
While "Austbar" isn't a registered trademark currently, the ABA apparently lodged a trademark application for the word Austbar after learning of the launch announcement of the barrister's site.
Other details of the case aside (and there are many), an interesting aspect that many registrants may not be aware of is just because a word or words considered a trademark may not registered, it doesn't mean it/they can't be defended.
"Common law trademark rights" apply in Australia and other countries and allow action to be taken to protect an unregistered trademark if it is in use. In the case of the ABA, its domain name has been registered for some years.
While common law trademarks offer the holder less legal protection than registered trademarks generally, it's probably something that should be considered when choosing a domain name in order to minimise the risk of potential legal headaches.
On the flip side, just because you've used a name for some time, it doesn't afford you total protection or necessarily legally exclude someone else from registering it under a different extension.
Regardless of who wins a domain name fight, there are losses all round as it can be an expensive and time consuming exercise. Even if a case is brought before WIPO for arbitration, the costs can quickly run into the thousands.
For example, under the .au Dispute Resolution Policy (auDRP), which was designed to be a more rapid and cheaper alternative to litigation; it can cost between $2,000 and $4,500 to have a case heard and a judgement made.
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