Getting back domain names
Bromberg J has now made orders arising from his Honour’s finding that the use of real1.com.au infringed REA Group’s registered trade mark. Amongst other things, these included orders that the disputed domain names be transferred to REA Group. An expensive exercise in trying to generate value from “real 1″.
On the other hand, Middleton J has rejected Vendor Advocacy Australia’s attempts to get domain names like:
from a former employee (or contractor), Mr Seitanidis notwithstanding his Honour’s findings about much Mr Seitanidis’ conduct.
Vendor advocates are apparently much in the market these days. A Mr Ian Reid had been operating a vendor advocacy business for a number of years. Some of his advertising did include:
but the corporate stationery and much of the other advertising took this form:
and the radio advertising also emphasised the personality of Mr Reid.
Vendor Advocacy Australia did not have any registered trade marks and was forced to fall back on misleading or deceptive conduct.
After a detailed discussion of the cases on descriptive terms and secondary meaning, Middleton J held:
…. The phrase “vendor advocacy” is descriptive and was generally used by various traders in the same line of business. I am not satisfied that the words or brand relied upon in this proceeding by VAA have any secondary distinctive meaning. VAA has primarily promoted itself by reference to the persona of Ian Reid. I do not consider that any consumer which assume that a reference to vendor advocacy, or Australian Vendor Advocacy, would be associated with VAA or Ian Reid. In fact, because Ian Reid has been so much at the front of the promotion of VAA, without his presence the consumer may well assume it is not associated with him or VAA. Any imperfect recollection of consumers would arise from VAA’s adoption of a name consisting of descriptive words. The lack of recall will be as a result of the promotional activity adopted by VAA, by reference to the descriptive words ‘vendor advocacy’.
And so Vendor Advocacy Australia did not get orders for the transfer of the domain names.
One interesting consequence of this is that there may be an inquiry on the undertaking as to damages given for an interlocutory injunction preventing the use of some of the domain names.
Middleton J was willing to take at  a fairly robust view about consumers’ familiarity with the use of similar domain names by different companies. His Honour also thought any momentary or transitory confusion which might arise from the use of the domain names would not rise to the level of misleading or deceptive conduct. As his Honour reminded:
In circumstances where a trader adopts a descriptive trade name the use by another trader of a trade name that also uses those descriptive elements will not generally (in itself) constitute misleading or deceptive conduct.
His Honour also joined the growing band of judges who don’t think consumers pay much attention to whether domain names end in .com or .com.au or the like.
REA Group Ltd v Real Estate 1 Ltd (No 2)  FCA 968
Vendor Advocacy Australia Pty Ltd v Seitanidis  FCA 971