Trade Marks and the Internet – Domain Name Disputes

With the globalisation and commercialisation of the internet, domain names have taken on a new significance as business identifiers because when you trade on the internet you effectively have a global business which anyone in the world can access[1].  The advent of the internet has allowed a unique global market place to develop such that traders are no longer restricted to the mere display of their trade mark in their physical retail space or on their products.  A trader may now display their goods on websites which are now accessible worldwide.  For a trade mark owners, the ability to use their trade marks to generate traffic to their website using a variety of online tools and within a domain name is one of the most simplistic uses of a trade mark on the internet[2].      

However, with this evolution of a global market place and development of technologies and services which support it, comes jurisdictional conflict.  Trade marks are jurisdictional but the internet is not.  It appears two factors exacerbate this conflict.  First, domain names must be unique.  For example, one string of words can link to only one site while trade marks may overlap in different industries or different geographical locations.  Second, it is common practice for many internet users to guess website addresses based on their trade mark.  Therefore, domain names become a valuable corporate asset[3].      

Many claim that the domain name registration process has intensified the conflicts between domain names and trade marks.  In most cases, anyone can register a domain name as long as it has not been registered by someone else before them.  There are no searches conducted by domain name Registrars or systems in place that prevent a domain name using or incorporating a trade mark if the trade mark has not been registered as a domain name.  This process led to the practice of cybersquatting, which means registering a domain name of a trade mark hoping that the owner would eventually buy the domain name in order to use it as a link to his or her website[4]. 

Cases of cybersquatting often cause the most concern to trade mark holders and have been the subject of a majority of litigated disputes.  It is good to know that the case law in the area of cybersquatting in fairly settled.  With only one possible exception, no cybersquatter has won a court case against an intellectual property holder anywhere in the world.  However, despite this strong trend against cybersquatting, there are constantly new cases of cybersquatting which arise[5].    

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names.  The UDRP currently applies to all .aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .post, .pro, .tel and .travel top-level domains and some country code top-level domains.  Australia is a member of the World Intellectual Property Organization (WIPO) which establishes guidelines to protect trade mark owners who trade over the internet[6].

A complainant in a UDRP proceeding must establish three elements to succeed:

• the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
• the registrant does not have any rights or legitimate interests in the domain name; and
• the registrant registered the domain name and is using it in "bad faith".

In a UDRP proceeding, a panel will consider several non-exclusive factors to assess bad faith, such as:

• whether the registrant registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark;
• whether the registrant registered the domain name to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, if the domain name owner has engaged in a pattern of such conduct; and
• whether the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
• whether by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, internet users to the registrant's website, by creating a likelihood of confusion with the complainant's mark.

The goal of the UDRP is to create a streamlined process for resolving such disputes.  It was envisioned that this process would be quicker and less expensive than a standard legal challenge[7]. 

A recent case, Lancôme Parfums Et Beauté & Compagnie v. He Peng, highlights how simple it can be to have a domain name transferred to a trade mark owner when there is a clear case of cybersquatting.  

Lancôme Parfums Et Beauté & Compagnie v. He Peng

The Complainant is a subsidiary of L’Oréal, one of the world’s largest groups in the cosmetic industry.  The trade mark Lancôme was created in 1935 and achieved immediate international success.  Since then Lancôme has become well known all over the world and is the number one in anti-aging skincare.  The brand is intensively promoted in China.

The Complainant provided evidence of numerous trade mark registrations for the trade mark LANCÔME throughout the world including in China where the Respondent is located.  The Complainant also adduced evidence of many domain names including the trade mark LANCÔME such as, 1) lancôme.com and 2) lancôme.com.cn.

According to the Complainant, the disputed domain name ‘lancomes.com’ directs to a website displaying an imitation of the trade mark LANCÔME.  The website appears to distribute diet products and displays images of Penelope Cruz, who is one of the advertised ambassadresses of LANCÔME.  The disputed domain name was registered on 20 October 2013.

1. Identical or Confusingly Similar

The Complainant submitted that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.  In support of the Complainants contention that the domain name is identical or confusingly similar to its trade marks, the Panel found that the absence of the circumflex accent on the letter “o” on the disputed domain name does not have any material impact on the likelihood of confusion. The other distinction between the disputed domain name and the trade mark LANCÔME is the addition of the letter “s” in the disputed domain name.  On the facts of this case, the Panel found that the use of the letter “s” as a suffix is insufficient to distinguish the disputed domain name from the Complainant’s trade mark LANCÔME.

2. Rights or Legitimate Interests

In the Panel’s view, the Complainant established that the Respondent is not affiliated with the Complainant in any way nor was the Respondent authorised to register and use the Complainant’s trade mark nor seek registration of any disputed domain name incorporating the said trade mark.  It followed that the Complainant established that the Respondent had no rights or legitimate interests with respect to the disputed domain name.

3. Registered and Used in Bad Faith

The Complainant submitted that the Respondent knew or must have known of the Complainant’s trade mark at the time of the registration of the disputed domain name.  It relied upon the fact that the trade mark is well known throughout the world in respect of its products and services.  The Panel accepted this argument that it is unlikely that the registration of the disputed domain name would be coincidental.  As a result, the Panel found that the disputed domain name was registered and was being used in bad faith.

The Panel ordered the disputed domain name ‘lancomes.com’ be transferred to the Complainant[8].

When it comes to protecting international trade mark in the .com.au sphere, it is well known the .au country code Top-Level Domain is Australia’s home on the internet.  The effective regulation and registration policy reforms implemented by the .au Domain Administration (auDA) more than 10 years ago have helped to make the .au a trusted and secure namespace for both registrant’s and internet users.  This is especially true for trade mark holders who take comfort from the fact that their trade marks are protected under the .au policy.  As discussed above, this is not the case in some national country codes or generic Top-Level Domains such as .com, .net or .org.  There are no preconditions for registering domain names in .com or .net, meaning anyone can register a name that is similar or identical to an Australian registered trade mark.  As a result, this has caused significant grief to trade mark holders[9].

However, in .com.au or .net.au, domain names must exactly match or be an acronym or abbreviation of the registrant’s company or trading name; organisation or association name or trade mark; or be otherwise closely and substantially connected to the registrant.  This policy is designed to prevent trade mark abuse and protect companies from rampant cybersquatting. 

One issue that has arisen from the .au policy is whether only Australian businesses can register .com.au domain names.  According to the .au policy outlined by auDA, a business with an Australian registered trade mark or foreign company which is licensed to trade in Australia is allowed to register .com.au domain names via an accredited .au registrar.  Simply put, foreign companies can register .com.au domain names so long as they possess an Australian registered trade mark or have applied for one[10].           

Because of the increasing popularity of the internet, companies have realised that having a domain name that is the same as the company or product name can be an important part of establishing an internet presence.  To obtain a domain name, an application must be filed with an appropriate registrar.  However, when companies attempt to obtain their desired domain name, they may discover that it is already taken.  When this happens, the company can either choose a different name or fight to get the domain name it really wanted.  In domain name disputes, the party seeking to obtain the domain name typically relies on their trade mark rights.  In most cases, the domain name was identical to the company's well-established trade mark.  In practice, complainants in UDRP proceedings are mostly successful. 

The internet raises particular issues and challenges for the enforcement of Intellectual Property rights.  There is no principle that material available on the internet is in the public domain.  Electronic material and data can be protected by copyright, branding elements by a registered trade mark and processes used on the internet can be protected by patents.  As the internet is a constantly changing environment, you should make sure you are aware of developments that could have an impact on your business.  More than ever, the message to brand owners in Australia and overseas must be: if you value your brand, you need to take both commercial and legal steps to protect it.  This includes the early registration of not only trade marks but also of domain names.