A recent decision under the .au Dispute Resolution Policy (auDRP) serves as a timely reminder that even though they are ‘administrative proceedings’, domain name disputes are won and lost on evidence.
In Mark Kingsley Williams v BBhinds Pty Ltd (WIPO Case No DAU2013-0010), the Complainant, a UK trade mark attorney, alleged that the Respondent, an Australian company, had registered a domain name that was identical to the Complainant’s trade mark in bad faith.
This was rejected by the Respondent who asserted that it had never heard of the Complainant, provided evidence of its own good faith preparations to use the domain name in connection with its long-established business and attacked the Complainant’s lack of evidence.
Under the auDRP, a Complainant must prove three things:
- that it has a right or legitimate interest in a trade mark that is identical or confusingly similar to the disputed domain name,
- that the Respondent does not have a right or legitimate interest in the disputed domain name, and
- that the Respondent registered or is using the domain name in bad faith.
All three elements must be proven in order for a Complainant to be successful.
In the present case, the Panel found that the Complainant failed to prove any of the grounds (reported by leading domain name news site, Domain Name Wire, as a ‘rare trifecta loss’) largely due to inadequate evidence.
Interestingly, in addressing the first element under the auDRP, the Complainant asserted that it had an Australian trade mark registration but failed to provide evidence of the registration. As the Complainant bore the burden of proof, the Panel held that because of the lack of sufficient evidence, it failed to establish the first element required under the auDRP.
The Complainant also failed to establish the second element required to be proven, again because of a lack of evidence.
On the third element (the crucial ‘bad faith’ element), the little evidence the Complainant filed actually worked to its detriment. In emails annexed as evidence, the Complainant asserted a trade mark registration date that was later than the date the disputed domain name was registered. Accordingly, it was impossible, on the Complainant’s own evidence, for the domain name to have been registered by the Respondent in bad faith.
- Disputes (whether in Court or before administrative panels) are won and lost on evidence. A case is only as strong as the evidence that is available to support it.
- Domain name disputes are not trade mark disputes. UDRP and auDRP proceedings are a very specific type of dispute and it pays to get representation from someone with specific expertise (the unsuccessful Complainant in this case was himself a trade mark attorney).
Markwell acted for the successful Respondent in this auDRP proceeding.
It is a common misconception that as the owner of a business name registration, you get some legal right to the name. To be crystal clear – you don’t.
When it comes to brand protection, business names are close to worthless.
What’s in a name?
Under the Business Names Registration Act 2011, a person who trades under a name that is not his or her own name must register that name as a business name.
So, if your name is John Smith and you trade under the name ‘John Smith’ you don’t need to register. If, however, you trade under the name ‘John Smith, Plumber’ or ‘Smith Plumbers’ or ‘Smith and Son’ or anything other than ‘John Smith’, you must register the business name.
The purpose of business name registration
The point of the business name registration system is to protect consumers.
It provides a register where people can identify who they are actually dealing with. It allows people to find out that ‘Smith and Son’ is a business operated by John Smith, the sole trader, or Smith Pty Ltd, the company, or Mr and Mrs Smith, the partnership.
Business name registration is not designed to protect a trader’s goodwill in his or her name. It’s designed to prevent businesses ‘hiding’ behind a different name.
So given the purpose of business name registration – consumer protection not trader protection – it is easy to understand why a business name doesn’t give you any actual rights.
Get the rights you need
The only way to get actual enforceable proprietary rights over a name is to register it as a trade mark.
A registered trade mark will give you the exclusive right to use it in relation to the specific goods and services set out in the registration.
With a registered trade mark, you can stop your competitors using the same or a similar name. With a business name, you can’t.
And once you have a registered trade mark, no one can tell you that you’re not allowed to use it. Despite a business name registration, you can still be accused of misleading conduct or trade mark infringement.
More than a name
The other limitation of business names is that you can only register a ‘name’.
That may sound obvious, but a business’ goodwill is often based on more than just its name. It may sell goods or services using unique brand names, product names, logos or artwork. It may use catchphrases, slogans and taglines that are memorable and have gained a reputation.
All those things can be protected by trade mark registration. Trade mark protection can also extend to sounds, jingles, aspects of packaging, shapes and even colours and smells.
So, think of your business name registration as a name tag that does no more than let people know who you are.
But if you want to have the exclusive use of your name and the ability to protect it and stop others from using it, then what you need is a registered trade mark.
The decision of the Full Federal Court in Knott Investments Pty Ltd v Winnebago Industries Inc  FCAFC 59 serves as a warning to brand owners not to delay when faced with infringing or misleading conduct.
Winnebago has been making and selling its mobile homes or RVs since 1959. Initially, Winnebago RVs were only sold in the USA but they eventually spread to other countries, but not Australia.
In the early 1960s, the Binns became aware of the Winnebago brand during a visit to the USA. In 1978, they started manufacturing and selling their own RVs in Australia using the Winnebago name and an identical Winnebago logo. The Binns eventually incorporated Knott Investments and this company continued to manufacture and sell the Binns’ Winnebago RVs.
In 1985, the US Winnebago company discovered that Knott was using its name and trade mark in Australia. Surprisingly, it did nothing until 1992 when the parties entered into a settlement agreement which was somewhat curious in form.
Knot continued manufacturing and selling RVs under the Winnebago name and logo and the Winnebago company allowed it to do so until 2010 (which coincided with when the Winnebago company decided to enter the Australian market) when it sued Knott for misleading and deceptive conduct and passing off.
The Winnebago company was successful at first instance.
In the Federal Court, Foster J held that even though the Winnebago company was not selling in Australia, it had sufficient ‘spillover reputation’ such that consumers were likely to be misled or deceived. While recognising that there had been an extraordinary delay by the Winnebago company in taking action, this did not necessarily preclude it from relief as it had sought to protect its position through the settlement agreement and Knott had taken a calculated risk to continue manufacturing and selling its Winnebago branded RVs.
The Court ordered that Knott and its dealers be permanently restrained from using the Winnebago marks and that they cancel all business names, domain names and corporate names that contained the Winnebago marks.
Knott appealed to Full Federal Court decision on a number of grounds. Most of these were largely unsuccessful however Knott was partially successful on one important point.
Knott argued that the Winnebago company should not have been able to bring proceedings after an 18 year delay as it was unjust. The Full Court disagreed, holding that the terms of the settlement agreement made clear that the Winnebago company wasn’t conceding its rights and Mr Binns knew that he remained at risk of being sued.
Importantly, however, the Full Court decided that Foster J’s order that Knott and its dealers be restrained from using the Winnebago marks was unjust. This was because Knott had itself developed its own reputation in the Winnebago marks and the Winnebago company had allowed this to happen by not taking action even though it knew what was going on.
The Full Court varied the order at first instance so that Knott and its dealers were only restrained from using the Winnebago marks if they used them without a disclaimer disassociating them from the Winnebago company. In other words, so long as Knott and its dealers disclaimed any association with the Winnebago company, they could continue to use the Winnebago marks.
- We say it a lot, but it’s worth saying again – if you detect infringement, take prompt action. Failing to do so can erode your rights.
- Regularly review your plans for overseas markets. Just because you’re not doing business in a country today doesn’t mean you shouldn’t be looking to protect your brand today.
A Melbourne fitness company has found that just like in the movies, Superman always wins in the end. Cheqout Pty Ltd’s attempt to register ‘Superman Workout’ found early success in the Trade Marks Office but was overturned on appeal.
In 2009, Cheqout applied to register ‘Superman Workout’ as a trade mark in connection with fitness and exercise classes and health club services.
DC Comics, which owned a number of registered marks comprising the word Superman accompanied by a figure of the superhero or the ‘S shield device’, opposed Cheqout’s application (interestingly, DC Comics did not have a registration for the plain word SUPERMAN).
The Hearing Officer held that there would be no confusion as the word ‘Superman’ was descriptive and also as DC Comics hadn’t registered or used its marks in relation to fitness services and dismissed the opposition.
DC Comics appealed to the Federal Court.
The Federal Court decision
In the appeal, the Court considered whether the use of the Superman Workout trade mark would be likely to cause confusion. Justice Bennett determined that it would not.
Her Honour agreed with the Hearing Officer that use of Superman Workout on its own would not cause confusion or deception as the word Superman was descriptive, referring to dictionary definitions and the German philosopher Nietzsche’s use of the term to describe the ideal human being of the future.
However, Justice Bennett did find that Cheqout’s trade mark application was filed in bad faith under section 62A of the Trade Marks Act. The finding of bad faith was based on evidence that Cheqout had used its mark in combination with a shield device that was very similar to DC Comics’ ‘S shield device’ and with a red, white and blue colour scheme that was similar to the colour scheme used by DC Comics for its Superman character and trade marks.
The Court noted that the bad faith ground of opposition did not require DC Comics to establish that confusion or deception was likely to arise but simply that Cheqout’s conduct was below the standards of acceptable commercial behaviour observed by reasonable people. Justice Bennett held that DC Comic’s had succeeded on this point and refused Cheqout’s application.
- Even superheroes need a trade mark lawyer
- There have only been a handful of cases on the bad faith ground of opposition. The Superman decision is important as it establishes that the manner in which a trade mark is used can be an indicator of an applicant’s intention in filing a trade mark.
- Businesses thinking of using marks that are similar to well known marks, even in relation to unrelated goods and services, must tread carefully. If the purpose is to allude to the well known mark, it’s best to stay clear.
Social media giant Facebook will appear in court to defend its Timeline feature against claims of trade mark infringement.
Timelines Inc, the creators of the timelines.com website, claim that Facebook has infringed its trade mark. The Timelines website was designed as a collaborative space to share and record historical and emerging events.
The timelines.com website was launched in 2009 and although it only has a small number of users, it did register a number of US trade marks, including TIMELINES and timelines.com. It sued Facebook in 2011, following the launch of Facebook’s ‘timeline’ feature in October 2010.
Facebook tried to have the case thrown out, arguing that the term ‘timeline’ is a descriptive and generic term, but was unsuccessful. The case is due to go before a jury on 22 April 2013.
Lessons for Australian brand owners
Ensure that your trade marks are registered and registered early. Getting the earliest filing date is important to cement your rights. With just over 1,000 users, Timelines Inc probably wouldn’t have any cause of action against Facebook baed on reputation only – having registered trade marks is what has enabled them to pursue their claim (whether they’ll be successful is another question).
It’s not just business or company names and logos that serve as trade marks. The name of a product or service can also be considered a trade mark. So, it’s a good idea to conduct trade mark searches for the names of new products or service features before you launch them.
India has become the latest country to accede to the Madrid Protocol, becoming the 90th member of the international trade mark registration system.
From 8 July 2013, overseas brand owners will be able to designate India in their Madrid Protocol applications. Indian brand owners will also have access to the international trade mark system, making it easier for them to register and protect brands in member countries.
In joining the Madrid Protocol, India becomes one of a handful of Asian countries that are members of the treaty. Vietnam, Singapore, the Philippines, China, Korea, Japan and Mongolia are also members.
Did you know
The Madrid Protocol provides businesses with a cost-effective, streamlined and efficient system for the registration and management of overseas trade marks. Members of the Madrid Protocol include the United States, China, the United Kingdom, Japan, Singapore and New Zealand. There were 44,108 international applications filed through the Madrid system in 2012.
For more information on how we can help you to protect your brand overseas, please visit our international trade marks section.