Your business’ domain name is your online identity. If you pick a name only to find out you can’t use it, you’ve hit a major stumbling block.

Whether or not you can infringe someone’s unregistered domain name will depend on whether your competitor has been using their domain name for an extended period or if they have a registered trade mark. We set out below the benefits of registering and trademarking your domain name.

Choosing a domain name
Selecting a domain name that best captures your business’ identity can be challenging but it’s important to register once you do so.

Registering a domain name through a domain names host such as GoDaddy or Crazydomains is a “first-in-best-dressed” exercise. Think of a domain name as a product available for purchase – if you buy it first, then it’s off the shelf and no longer available.

My competitor has a domain name and it’s a registered trademark!
Imagine your competitor owns and has registered their domain name with IP Australia. This means that your competitor has applied to register their trade mark and that IP Australia has examined and accepted the application. Your competitor now has a statutory right to use their name exclusively in Australia.

If you register a domain or use the name shadyfox, will you be infringing on your competitor’s rights?
In short, most likely yes. Under the Trade Marks Act 1995 (Cth), registration confers nationwide rights to use a name exclusively in a particular category of goods and services. So, if you and your competitor are in the same industry, then your use of shadyfox (or a similar name) will infringe on their registration rights. Your competitor can ask you to stop using the name and commence legal action if you don’t.

What if my competitor has been using their domain name for years?
Let’s say your competitor doesn’t have a registered trade mark but they have been using the domain name for a period. Even though the competitor doesn’t have a registered trade mark under the Trade Marks Act, they may still be able to stop your registration.

Evidence of Prior Use: If you attempt to register a trade mark, your competitor may be able to oppose your application by submitting evidence of prior use to IP Australia. If your competitor has continuously used their trade mark in Australia up to at least the time you applied to register, they may be able to prevent your registration.

Common Law Rights/Passing Off: If your competitor doesn’t have a registered trademark (conferring statutory rights under the Trade Marks Act 1995), they still have common law rights. If you attempt to use their unregistered name, they may claim that you are ‘passing off’ their brand and start legal action against you.

Passing off is a common law action (i.e. created by case law) which protects the goodwill and reputation of a business by stopping another passing off or ‘copying’ their brand and presenting it as their own.

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Can I buy their domain name, but not use it?
Let’s now imagine that you know your competitor wants to buy the domain name but has not yet done so. What happens if you snap up the domain name, without ever intending to use it?

This is usually called domain name squatting, a situation where individuals purchase domain names to sell them to people who may want to use them down the track. Your competitor may have to purchase the name from you if they want to use it, but there are cases where domain squatters have been taken to court and lost.

The ethics of domain name squatting are questionable and best practice is to keep your hands clean by registering your unique domain name.

Key Takeaways
Establishing a domain name is a significant step to securing your online presence. Whether you can infringe on someone’s unregistered domain name depends on whether they have a registered trademark, whether you have one or whether they have been using the domain name for a continuous period.

If your competitor has a registered trademark, then you are likely to infringe their rights by registering a similar domain name or using a similar name in the course of business. If they don’t have a registered trademark, they may still have rights to stop your registration.

Your best bet is to hold a brainstorming session with your business partners to find who can think up the best name!

If you have any questions about your domain name, or would like assistance with registration, get in touch with our online business lawyers on 1300 544 755.