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Trans Tasman Patent & Trade Mark Attorneys
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Australian IP law updates

Firm updates & Legal developments

Domain name reassigned to Foundry client

This week we celebrated another cyberspace win for a Foundry client. The case highlights good trade mark and domain name strategy for all businesses, local and global.

One of our US associates contacted us on behalf of its Florida-based client, who had been serving many US and Australian customers for the last decade, using a website having a .com TLD domain name. The Florida-based client had noticed that the Australian 2LD .com.au version of its own TLD .com domain name had been registered by a third party. We were asked to investigate and propose a strategy to re-assign the 2LD to our Florida-based client, if possible.

The business of the third party 2LD registrant seemed to have no particular connection to the .com.au 2LD, and the 2LD was not an acronym or abbreviation of its own name. Furthermore, the third party’s business name had expired.

Therefore we recommended that we apply to register our client’s US-registered trade mark, which was also its .com TLD, in Australia, on behalf of our client, and then make a complaint to AuDA on the basis that the third party registrant had no close and substantial connection, or any other connection, to the 2LD.

The complaint was successful. The 2LD domain was assigned to the Pending Delete list, and was scheduled to drop in 14 days’ time. We then deployed two drop catchers which ultimately caught the dropping domain name in the name of our Florida-based client.

The case reinforces that registrants for 2LD domain names .com.au and .net.au must comply with strict AuDA policies, or their domain name registration may be revoked. Registrants must have at the very least, a close and substantial connection to the 2LD domain name: a product, service or event may suffice in some cases. Overseas companies need not incorporate here, they may directly apply for Australian domain names, if they have applied for an Australian registered trade mark.

If you would like to discuss this further, to update your IP and domain name policies, please get in touch.

Photo cred: stphnwlkr.co using Unsplash licence.

Foundry team