At the heart of any website is a unique identifying “IP Address” that is accessed through a unique name called a domain name. For example, www.robson.com.au is our firm’s domain name through which our website is accessed.

Some business owners and operators think that domain names are allocated purely on a ‘first come – first served’ basis. Nothing could be further from the truth. Just because a person has registered a domain name does not mean that they have any rights to that name.

In Australia, legal ownership of a name is best secured by first applying for and then registering a trade mark that is identical to or very similar to the name you want. The registered owner of a trade mark has the right to stop others from using their trade mark. Anyone who uses another person’s trade mark risks being sued.

It is often thought that registering a company name or a business name will mean that you automatically own that name. However, you don’t. Registration of a company name or business name does not give your business the same rights that the registration of a trade mark can provide.

The same applies to domain names. Nobody can actually “own” a domain name. Everyone simply licences the domain name from a particular registrar. The licence that a business has to use the domain name is subject to several rules. One of those rules requires the domain name user to agree to a process of dispute resolution if anyone challenges their use of that domain name.

Under the dispute resolution process, if a business is the registered owner of a trade mark it can make a formal complaint to a dispute resolution body and apply to have the registration of any domain name that is identical with or deceptively similar to their trade mark transferred to them. This can be a relatively quick and easy thing to do and does not require any court action.

To secure ownership of your domain name, you could try to register it or a similar name as a trade mark. Registered owners of trade marks can stop their competitors from setting up domain names that are identical with or deceptively similar to their trade mark. 

The bad news is that any business that has not properly secured its rights to use a domain name risks losing that domain name and also risks being sued if someone else has already registered a trade mark corresponding to that domain name.

Five tips to help your business secure its right to use a particular domain name

1. The best legal way to “own” a name is by applying for and registering a trade mark. Any business that wishes to secure a right to use a particular name should consider applying for a trade mark for that name.

2. If a business wishes to register a particular name as a domain name for its website, the business should first consider whether or not that domain name will infringe someone else’s trade mark. If it does not infringe any existing rights, then the business should secure the use of that domain name by obtaining a corresponding trade mark.

3. Any domain name that is identical with or deceptively similar to someone else’s trade mark risks legal action. The only way for a business owner to be sure about whether or not they are infringing someone else’s trade mark is to conduct a thorough search of the register of trade marks. While you are at it you should also check to see if there are any established businesses using similar names. 

4. The owner of a trade mark has the ability to use a relatively quick and easy dispute resolution mechanism if someone has registered a domain name that is identical with or deceptively similar to their trade mark.

5. If some other business is infringing a trade mark that you own then you should do something about it. Allowing competitors to use a domain name that is similar to your trade mark risks reducing the value of your trade mark.

Every day in Australia there are many domain names registered without much thought to who has the right to use that domain name. As more and more businesses seek to use the Internet it is becoming ever more important to ensure that your business is secure.