- One of the most common issues with trademarks and domain names on the internet is their use on websites and in domain names.
- For instance, an activity known as ‘cybersquatting’ involves somebody registering a domain name which is a registered trademark of somebody else, with the intention of profiting from that trademark’s goodwill.
- Cybersquatters will often attempt to sell these domain names to the trade mark owners for an inflated price.
- Organisations may similarly use competitor’s trademarks in bad faith in order to mislead customers online.
- Therefore, it is important to know whether you can prevent somebody else from using your trademark in their domain name and/or other parts of their website.
This matter was addressed in a recent Federal Court decision- Mantra Group Pty Ltd v Tailly Pty Ltd  FCA 291
Australian Trademarks and Domain Names Case
In this case, the trademark CIRCLE ON CAVILL was owned by a property management and accommodation company, the Mantra Group (“Mantra”). Circle on Cavill is the name of an apartment complex situated in Surfers Paradise on the Gold Coast. Tailly sublet apartments in the Circle on Cavill property but did not have any rights to the Circle on Cavill trademark. Despite this, Tailly heavily used the Circle On Cavill trade mark in their internet marketing campaign. This included:
- Registering domain names containing the phrase ‘Circle On Cavill’ or misspelt variations of the term. (e.g. circleoncaille.com.au)
- Using the trade mark in their website graphics and throughout the text contained on the website- over 250 times.
- Using the words ‘Circle on Cavill’ in their websites’ source code. Search engines such as Google.com scan this source code and use it to determine the rankings of its search engine results. The result of this was that Tailly’s websites were ranked highly in searches related to ‘Circle on Cavill’.
- The words ‘Circle on Cavill’ were also used as an advertising keyword for Google Ads, meaning that Circle on Cavill-related search results would be accompanied by advertisements for Tailly.
Mantra claimed that this was a clear case of trademark infringement and that Tailly’s use of ‘Circle on Cavill’ for its online marketing was a deliberate and unfair attempt to exploit the Mantra-owned trademark for Tailly’s own benefit.
Tailly claimed that it was not using the words as a ‘badge of origin’ but argued it only used those words to describe the name of the apartment complex in which the apartments it sub let were situated.
These arguments were, however, rejected by the court, who stated that, although the words were used in a descriptive manner some of the time, for the most part, they were used as trademarks and domain names, and such use were illegal.
The court’s decision may have been different if the words were not used excessively in the websites’ source code in order to unfairly acquire search engine traffic.
The Court ordered that Tailly transfer 10 of its domain names to Mantra and required Tailly to cease use of the words ‘Circle On Cavill’ and similar words in its online marketing. This was as a direct result of Mantra registering their trademarks and domain names.
The moral of the story is to ensure that your trademarks and domain names are registered! Having your trade mark registered makes it extremely difficult for your competitor to get away with exploiting your trade mark in their internet marketing like Tailly attempted to do. Had Mantra not registered the Circle on Cavill trade mark the court’s decision would undoubtedly have been different.
On the other hand, if you have registered a domain name, do not be mistaken into thinking that this registration alone absolutely secures your rights to use that domain name and the terms it contains on your websites. If for example, you are establishing your own web-based business (such as a professional blog) and you don’t register the business name as a trade mark, but somebody else does, your rights to use that name may be compromised.
Quick Off the Mark® is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.
In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.
Disclaimer – The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs.