INTELLECTUAL PROPERTY – WHY IS IT SO IMPORTANT?

WIPO ORDERS DOMAIN NAME BE TRANSFERRED FROM AUSTRALIAN COMPANY TO AMERICAN COMPANY

The development and architecture of domain names is managed by The Internet Corporation for Assigned Names and Numbers (ICANN). ICANN authorizes domain name registrars, through which domain names may be registered. Domain names are usually registered for a period of around 2 years.

Organisations such as the World Intellectual Property Organisation (WIPO) provide a dispute resolution service for disputes regarding domain names.

A recent case before WIPO ordered that an Australian company’s domain name be transferred to an American company.  The facts of the case are as follows:

The Complainant was an American Company trading under the name Brilliance Publishing Inc.  It published internationally audiobooks including making sales in Australia since at least 2001.  The Complainant had been using the domain name since 1995 and had recently changed its name from Brilliance Audio Inc to Brilliance Publishing Inc.

The Complainant owned the trade mark Brilliance Audio in the United States and in June 2010 had applied for the same trade mark in Australia.  At the time the Panel determined the matter the application for a trade mark in Australia had been accepted but was pending registration.

The Respondent was an Australian company trading under the name My Brilliance Pty Ltd.  It provided services in the nature of spiritual guidance and emotional healing but an aspect of the business involved the sale of audiobooks.  The Respondent used the domain name for its business.

As part of the process for the registration of the Australian trade mark, the Complainants solicitors sent a letter to the Respondent requesting their consent to the registration of the trade mark Brilliance Audio.  The letter was sent on 2 August 2012.

The Respondent did not provide their consent but on 10 August 2012 and 12 August 2012 lodged with IP Australia applications for the registration of the marks, Brilliance, My Brilliance and Releasing my Brilliance.  On 12 November 2012, the Respondents lodged further applications with IP Australia for the registration of the marks Brilliance Store and Brilliance Audio Collections.

The disputed domain names were created on 3 September 2012 and 4 February 2013.

The Respondents argument, against the transfer of the domain name to the Complainant, was that the evidence showed that the products of the Complainant had minimal presence in Australia.  The Respondent also argued that international companies should not be permitted to establish trade mark rights in Australia by simply providing products online.  The Respondent argued that there needs to be some online presence directed towards Australian consumers particularly.

The Panel rejected the Respondent’s argument.  The Panel said:

“there is no requirement under Australian law that an unregistered trade mark be in any sense famous or universally recognized in order to support a claim for passing off.  Rather, a trade mark, or sign, must have become an identifier of the Complainant’s goods or services sufficient to distinguish it from the goods or services of other traders.

Whatever the criticisms of the Respondent of the Complainant’s evidence, the Complainant has amply demonstrated that a wide range of Australians have purchased the Complainant’s products labeled BRILLIANCE AUDIO and by reference to that name.  The quantity of those sales may be small, but they clearly predate the Respondent’s use of the word BRILLIANCE by some years, they are continuous and they are real”.