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VIC Domain Name and Business Name - Similar but Not the Same?

Discussion in 'Intellectual Property Law Forum' started by Mr Smith, 1 February 2015.

  1. Mr Smith

    Mr Smith Member

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    Hello Legal Eagles and thankyou for reading my thread and hopefully providing an opinion.

    I currently own a business that could do better if it had a website. I work in Melbourne and I am only seeking clients in Melbourne, in particular suburbs too, the more expensive suburbs use my services.

    I believe if I registered a domain with the name Melbourne included in the name, search results would be better for me. Of course the main name is used.
    As examples:
    Melbourne Bricks: A well known company
    Melbourne Parachute Jumps: Ok I made that up
    Melbourne Construction: Same again

    A couple of assumptions.
    All of these names are descriptive so would not be able to be registered as a trademark for the words only.
    Lets say all of these company names and domain names exist.
    If I wanted to register the names:
    bricksinmelbourne.com.au
    parachutejumpsmelbourne.com.au
    etc.

    Maybe the brick company is the best example, as I have no interest in selling bricks, and they would have some depth in their pockets. If I registered that name (if it were available) and business name do you see a problem for me. Secondary question, if I were to register just the domain name which went to a site where the business name was different to site address e.g "Tom's Bricks" would any potential confusion be lessened.

    Thank you
     
  2. John R

    John R Well-Known Member

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    Hi @Mr Smith,

    I agree. If I'm looking for a product or service, I'm going to research online first.

    The examples you provide may be good business names (that is, "Location" plus "Product or Service"). However, in modern SEO land, such names as a domain name are referred to as "Exact Match Domain Names" (or EMD). Because of this, having an EMD domain name alone won't generally boost your rankings in Google or Bing unless your website has:
    1. quality, relevant content; and
    2. is considered a quality website by other websites (that is, reputable websites link to your website because of your "Melbourne product or service").
    Most successful businesses appreciate that building quality takes time and avoid the "grey area" of "SEO optimisation" services that make worldly promises to get you onto the first page of Google within one day, week, month, etc. The reality is that some can do this - but then Google identifies the "SEO spam" used to inflate your page ranking artificially and suddenly, your "SEO optimisation" investment is wasted.

    In contrast, you may consider one or more of the following to build your business:
    1. online advertising using Google AdWords;
    2. approaching complementary businesses/websites and launching cross-promotional/affiliate campaigns;
    3. building a good reputation on popular consumer review websites such as WOMO, Urbanspoon/Zomato, Yelp, ProductReview.com.au; and
    4. traditional PR.
    My only suggestion is always to contact an Australian lawyer with IP experience before making an investment to branding or rebranding a business. This is because a competitor may have deep pockets and enjoy the prospect of taking legal action against a new competitor for:
    1. IP infringement;
    2. misleading or deceptive conduct under Australian Consumer Law;
    3. tort of passing off.
    That said, if your budget is very limited and you have a strong risk appetite, you can potentially mitigate this risk by undertaking searches (Google, IP Australia, etc.) and successfully registering the domain name and business name.

    Potentially. I've seen many businesses do this.

    Hope this helps. All the best!
     
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  3. Mr Smith

    Mr Smith Member

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    Thanks very much for the response John.
    When I search Google for my product/service in my immediate suburb I have 3 listings on the first page. Yellow Pages, and various free listing services, so I had hoped to just extend this into the other neighbouring suburbs where I prefer to trade.

    Having considered your response I read about the EMD update on Google. I may tuck that domain name away for a rainy day or link it to my business name, build on my existing identity with a website that simply mentions the suburbs I operate in, without keyword stuffing. That's probably safest for now and lets me build my own more unique brand.

    Thanks again!
     
    John R likes this.
  4. Phildo

    Phildo Well-Known Member

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    Tip: With domain names, keep them as short and simple as possible.

    Minimal characters and syllables.

    Make it easy for someone with zero typing skills to type it on a keyboard.

    It's just a domain name... not a comprehensive description of the business.

    The more characters there are, the greater the possibility for a spelling error. The web site won't be seen, and emails won't get through.

    With setting up a new business, the availability of the domain name will be a strong influence on the selection of the business name.

    It's a bonus if you can get both the .com and .com.au versions of the name. Get the .net and .net.au as well if you can. Domain names cost very little to register these days and it's worth covering a few similarities to ensure that if customers forget the .au then they still get through to you, and it also prevents other businesses from using a similar domain name.
     
  5. Ivy

    Ivy Well-Known Member

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    Hi Mr Smith,

    A business can sue you for using their business name only if they have trademarked it. If they have simply registered the business name with the Australian Securities and Investment Commission (ASIC) they can't protect the name. However within the last few years, business registration has gone from being State by State to Federal and ASIC won't let you register a business name that is too similar to another registered business name.

    You can search for business name availability here: https://connectonline.asic.gov.au/R...BnRegisters.jspx?_adf.ctrl-state=17yhw1yhki_4

    You should also have a look through this page on ASIC about registering a Business name: http://asic.gov.au/for-business/registering-a-business-name/

    And you can also do a search to find out if a business has registered a trademark to help avoid trouble down the track: Search for a trade mark | IP Australia

    As an Australian based business I agree with Phildo that you should register a .com.au domain name. To register .com.au or .net.au will require your ABN. A .com domain doesn't require an ABN.

    Finally, I personally find business names that are substantially different to their domain names to be confusing and difficult to remember.
     
  6. Mr Smith

    Mr Smith Member

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    Thank you every one for your responses. I am not sure I agree with your opening paragraph Ivy. Mainly for this reason as highlighted above.
    1. misleading or deceptive conduct under Australian Consumer Law;
    2. tort of passing off.
    My understanding is someone can sue me, whether they are successful is another thing. I would rather not get in a legal stoush. If I can use some good keywords in a domain name, without infringing then I will. Thank you for all the links. I am aware of those resources. I have registered one trademark in the past.

    Original post
     
    John R likes this.

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