Madderns

A recent Domain Name Decision highlights the importance, and benefit, of having a registered trade mark when seeking to challenge the registration of a .com.au domain name by a third party.

Administrative Panel Decision – Case No. DAU2016-0036

The Parties

Mr Michael Arnold of Lorimax Pty Ltd (the Complainant) sought to challenge the registration by Tolling Customer Ombudsman Pty Ltd (the Respondent) of the domain name www.tollingcustomerombudsman.com.au (the Domain Name).

The Complainant, through his company, is contractually appointed by a number of entities, who operate toll roads in Australia, to provide a free complaints and alternative dispute resolution process for customers of such toll roads experiencing issues.

The Complainant submitted that it had provided such services since 2008 from the website www.tollingombudsman.com.au.

The Respondent was registered on 2 September 2016 and registered the Domain Name on the same day.  The Domain Name resolves to a website where individuals can file a complaint, free of charge, with the toll road operator Transurban Limited.

The Complainant’s Trade Marks and the Complaint

On 12 September 2016 the Complainant filed Australian trade mark applications for the word mark “TOLLING CUSTOMER OMBUDSMAN” (No. 1795768) and for a composite trade mark featuring these words (No. 1795772) (the Complainant’s Trade Marks).

Shortly thereafter, on 19 September 2016, the Complainant filed a Complaint under the .au Dispute Resolution Policy (auDRP).

At the time the Decision was issued, the Complainant’s Trade Marks were awaiting examination and hence had neither been accepted nor rejected for registration.

To succeed in this Complaint under the auDRP, the Complainant was required to establish each of the following elements:

1. the Domain Name was identical or confusingly similar to a name or a trade mark in which the Complainant has rights; and
2. the Respondent had no rights or legitimate interests in respect of the Domain Name; and
3. the Domain Name had been registered or subsequently used in bad faith by the Respondent.

The Decision

The Panelist found that the act of filing the Complainant’s Trade Marks was not, of itself, sufficient to establish rights in the subject trade marks (as required to satisfy the first element).

The Panelist then considered whether the Complainant had established common law or unregistered rights in the Complainant’s Trade Marks, noting that to do so, the Complainant would need to show that through use, the Complainant’s Trade Marks had acquired a secondary meaning and become a distinctive identifier associated with the Complainant.

The Complainant had addressed the issue of unregistered trade mark rights by stating in the Complaint:

“The Complainant has invested a significant amount of time and resources to develop and promote the Trade Marks and Services under the Trade Marks. As a result of this extensive use, the Complainant has acquired a valuable and exclusive reputation and goodwill in the Trade Marks in Australia, in relation to the Services”.

The Panelist found that this statement was not sufficient to discharge the burden of establishing common law or unregistered rights in the Complainant’s Trade Marks.

In considering the question of common law rights, the Panelist noted that where the trade mark on which a complainant is relying is descriptive in nature, it can be difficult to show that the trade mark had acquired a secondary meaning and become a distinctive identifier of the complainant. In such cases, the Panelist noted that clear evidence will be required to support an assertion of common law rights.

The Panelist provided some guidance as to what might constitute clear evidence of an established secondary meaning, in finding that the Complainant had not provided any evidence of:

• the number of customer interactions provided by the Complainant under the Complainant’s Trade Marks; or
• advertising used to promote the Complainant which featured the Complainant’s Trade Marks; or
• surveys showing consumer recognition of the Complainant’s Trade Marks; or
• Media references to the Complainant’s Trade Marks

In summary, the Panelist found that there was no evidence filed by Complainant “that would suggest that a consumer would come to associate “Tolling Customer Ombudsman” with the Complainant”.

Accordingly, the Complaint was denied as the Complainant failed to establish the first element of the Complaint.

However, the Panelist did note that there may be grounds to consider a re-filed complaint in the event that the Complainant’s Trade Marks were to be registered (as has now occurred with the Complainant’s trade mark No. 1795772 “TOLLING CUSTOMER OMBUDSMAN” composite trade mark).

Discussion

This decision under the auDRP is a pertinent reminder that without a relevant trade mark registration, it may be difficult (or at least costly) to succeed in challenging third party registration of .com.au domain names featuring your trade marks/brands.

This decision further confirms that assertions of common law rights in a trade mark in complaints filed under the auDRP should be supported by the filing of relevant evidence.

AMORE, GIALLO, FELICE, BELLO, BLANC BLEU are but a handful of the many foreign language words that are registered as trade marks in Australia.

But care must be taken not to assume (as one may be tempted to from a cursory glance at the Australian Register of Trade Marks) that words in a non-English language will more easily satisfy the requirements for registration as a trade mark in Australia.

The registration requirement of most relevance to trade marks comprising foreign language words is the requirement (set out in section 41 of the Trade Marks Act 1995 (Cth)) that a trade mark be “capable of distinguishing” the applicant’s goods or services from those of other persons.

When considering the application of section 41, the relevant enquiry will initially be whether a trade mark is “inherently adapted to distinguish” the applicant’s goods or services.  If a trade mark is “inherently” or prima facie adapted to distinguish, it will not attract an objection to registration under section 41.

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