Trademark Infringement - Sued if I Register Domain Name?

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Tom Garward

Member
26 May 2014
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Hi. I want to register a domain name that bears an accidental resemblance to a DC Comics character. Can I get sued for trademark infringement? How close to the original name does it have to be before I'm breaking the law? Also, if my website has nothing to do with cartoon characters or comics, does that mean I don't have to worry?

So, the website concerns different subject matter to the original work and thus the two can't be confused.
 

John R

Well-Known Member
14 April 2014
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2,394
Sydney
Hi Tom,
Trade mark infringement and domain names can be a complex area - especially when any opposing party has deep pockets for legal fees.
Here's some information that will hopefully provide a good starting point to answering your questions.

Trade mark infringement
Please see IP Australia's website on "What must be proven to enforce your IP". In summary, the domain name would generally need to be sufficiently similar to cause confusion with the trade mark.

Domain name disputes
Domain names also have specific dispute resolution processes that are often used by trade mark holders to gain control of a domain name held by a cybersquatter or other third-party that they assert is in breach of domain name registration rules.

For example, .com and similar domain name disputes generally follow the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP). UDRP disputes consider whether:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.

For .au domain names, the auDA relies on auDRP, which is similar to the UDRP.
If you're looking for some light reading, the WIPO UDRP Panel Decisions website is a good resource for researching decisions to better understand how the UDRP is applied in practice.
 
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