Patrick Gunning[1]
and Patrick Flynn[2]
Mallesons Stephen Jaques
Paper presented to College of Law Trade Marks Seminar, 1 March 2001[3]
Cite as: Gunning P and Flynn P 'Trade Marks and Domain Names' [2001] CyberLRes 4
CONTENTS
Growth of this magnitude, particularly in gTLD names, has necessitated changes to the methods by which names are registered and to the development of more sophisticated methods for resolving disputes over domain names. These changes were largely implemented during 1999. gTLD names are no longer registered by a single provider - as at February 2001 there were about 70 domain name registrars competing to accept registrations for gTLD names and another 60 accredited registrars whose operations had not yet commenced.[8] But all of these registrars require their customers to accept a "Uniform Domain Name Dispute Resolution Policy"[9], which provides for a prompt and cost effective arbitration procedure. This procedure is an "alternative" method of dispute resolution: it does not preclude either party from taking action in appropriate courts.
The growth in .au domain name registrations has not been so great as to dictate changes of the kind which have taken place in relation to gTLD names during the last 2 years.. Alternative dispute resolution methods are virtually non-existent for .au domain names.
Moreover, domain names are unlike trade marks in that they are not a form of intellectual property recognised by a local statute. The registration and administration of domain names is not directly carried out by a government agency as in the case of trade marks, but is instead primarily in the hands of non-government corporations and agencies who have various agreements and arrangements with, and are subject to varying degrees of oversight from, government.
Accordingly, Australian lawyers wishing to act in any dispute over a gTLD or .au domain name need to understand not only the underlying law of passing off, trade mark infringement and misleading and deceptive conduct, but also the nature and structure of the relevant entities involved in domain name registrations, and the Uniform Dispute Resolution Policy which is applied to gTLD domain name disputes.
Even the engineers involved in the early stages of development of the Internet recognised that the IP address system is not particularly "people-friendly". Humans are generally not very adept at remembering large numbers of IP addresses. Domain names were developed in response to this problem. A domain name is a "people-friendly" alphanumeric reference term that directly corresponds to a particular IP address. For example, the domain name for the IP address given above is "msj.com.au". Various distributed databases throughout the world contain lists of domain names and their corresponding IP addresses. When a user requests to be connected to a computer at a particular domain name, the user's Internet service provider consults one of these databases to resolve the requested domain name into an IP address. The databases are structured in a hierarchical manner that allows for the simple addition of new domain name/IP address pairs and their accurate resolution.[10] The overall system is known as the Domain Name System or DNS.[11]
The DNS allows for two categories of "Top-Level Domains": generic Top-Level Domains ("gTLDs") which have no country code suffix; and country-code Top-Level Domains ("ccTLD"). At present, seven gTLDs exist, of which the first three listed below are "open" in the sense that there are no restrictions on the persons who may register names in them:
.com
.net
.org
.edu educational institutions (universities and four year degree granting colleges)
.gov US federal government use
.mil US military use
.int international organisations
There are between 240 and 250 ccTLDs (the number changes from time to time as new countries gain independence). These each bear two letter country codes taken from an International Standard.[12] For example, ".au" represents Australia, ".uk" represents the United Kingdom and ".fr" represents France. Different countries have different eligibility criteria for registration of names in their ccTLD. In Australia, the ccTLD is, in turn, split into a number of Second-Level Domains ("2LDs").[13] The best known of these are: .com.au; .net.au; .org.au; .edu.au; and .gov.au. About 80% of the .au domain names are .com.au names, so this paper will not discuss the rules applying to other 2LDs in great detail, as they will rarely arise in practice.
ICANN's goals are to adopt 4 main principles in its management of the DNS:[15]
In 1996, Mr Elz issued a five year non-exclusive delegation of authority in relation to the .com.au namespace to a commercial offshoot of Melbourne University, Melbourne IT.
In late 1998, with the support of the National Office for the Information Economy in the Commonwealth Department of Communications, Information Technology and the Arts, a working group was established to develop a means by which a new organisation could be established for the purpose of taking over Mr Elz's authority for the .au namespace and for introducing competition into .au domain name registrations. A not-for-profit company was incorporated for this purpose, au Domain Administration Limited, or auDA. The Commonwealth Government set a number of objectives against which auDA would be reviewed[22], including that auDA:
The answer is that ICANN, through its predecessor IANA, has determined that "the desires of the government of a country" is a very important factor in determining how a ccTLD will be treated[23]. Therefore if the Commonwealth Government requests that ICANN transfer the delegation for the .au domain space from Mr Elz to auDA, ICANN would be likely to comply.
Moreover, the Commonwealth Parliament has power to legislate with respect to "telegraphic, telephonic, and other like services" under s 51(v) of the Constitution. The Internet falls within this head of power.
Since the incorporation of auDA, the following events have occurred:
Melbourne IT now provides its domain name registrations services through a business division known as Internet Names WorldWide ("INWW")[30].
Under the Melbourne IT model, the right to use a "com.au" domain name is granted by way of a 2 year licence.[31] The licence terms incorporate by reference Melbourne IT's "com.au Domain Name Allocation Policy" (the "com.au Policy") which sets out the criteria to be considered in determining whether or not a domain name application will be accepted and subsequently registered.[32] As a result of these documents, Melbourne IT's model has the following features:
Following the receipt and consideration of public submissions, on 16 February 2001 the Panel issued its Second Public Consultation Report entitled Changes to Domain Name Eligibility and Allocation Policies in .AU Second Level Domains"43, in which it outlined the recommendations that it proposes to deliver to the auDA Board in April 2000. The "proposed recommendations" include:
The proposed recommendation in paragraph (g) above does not expressly refer to the ICANN Uniform Dispute Resolution Policy ("UDRP"), however, in the explanatory notes the Panel notes that "the point was often made [in the submissions] that the Australian procedures should be as closely identical as possible to the ICANN UDRP." This comment still seems to envisage that "the Australian procedures" will be distinct from the UDRP - ie the UDRP will not simply be applied to disputes in the .au name space.
Following a period of public consultation, the Panel expects to deliver its final recommendations to the auDA board in April 2001.
(a) Registry - ie the body actually maintaining the authorative nameserver registration:
The registration must be for a certain period (but can be for a lengthy period - some registrars are offering 10 year registrations).[47] This stands in contrast to the previous maximum registration of 2 years offered by NSI. In the past NSI gave registrants 3 months in which to pay registration fees, and this resulted in some abusive registrations designed to block registration by legitimate rights holders. To combat this phenomenon registrars are required to ensure that the registrant's obligation to pay becomes final and non-revocable on activation of the registration.[48]
Registrants can also expect to be required to consent to the contact details submitted as part of the registration process being publicly available so that they can be included in "whois" databases for the purpose of allowing the general public to discover the identity of the person to whom the domain name is registered.[49]
These, and a number of other, features of a registrar's standard agreement for the registration of a gTLD name will essentially be "non-negotiable" because the registrar's accreditation depends upon the inclusion of such terms in all agreements with its customers.
Transfers necessitated by a sale of business are, as a matter of practice, treated differently by Melbourne IT. Where the vendor of the business has registered a business name which has, in turn, been used to support a domain name registration, and the business name registration has been transferred to the purchaser, it has been our experience that Melbourne IT does not view this as a prohibited assignment of the domain name, notwithstanding that a different person is now carrying on the business whose name is used to support the domain name registration. This approach appears to be contrary to clause 12 of Melbourne IT's licence terms but is probably explained by the fact that if steps (b) and (c) above were followed, the domain name registration details would not change as a result of the transfer (the domain name details only show the name of the registered business, and not the person who carries on that business).
In many cases there will be a side agreement between the new registrant and the existing registrant in which the new registrant agrees to pay an amount on confirmation from the registrar that the domain name has been registered to the new registrant.[51] Unless the parties are in dispute as to entitlement to use the domain name, the existing registrant will normally be obliged in any side agreement to provide a warranty as to non-infringement and a related indemnity.
Although trade marks are registered on a territorial basis, the fundamental purpose of a trade mark as a badge of origin is reflected in the Paris Convention[55] to which 140 countries are a party. In most countries, trade marks may be registered in respect of many different classes of goods and services. The Nice Agreement[56] establishes a classification of goods and services for the purposes of registering trade marks and service marks. The classification consists of a list of classes; 34 for goods and eight for services, and also an alphabetical list of individual goods and services.[57] Hence, it is recognised that two different trade mark owners may have valid registrations for the same mark in respect of different classes of goods or services. As a policy matter, such co-existing registrations are allowed where there is no likelihood of confusion. For example, in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, it was noted that:
`Southern Cross' trade marks are found on the register in respect of a wide variety of goods, such as sheet iron, paper, wines and spirits, preserved ginger and preserved fruits, golf balls, binder twine, pickles, tobacco, hosiery, chemicals and matches.[58]
However, in that case, a further registration of the `Southern Cross' mark in relation to refrigerators was ultimately refused on the basis that substantial evidence had been provided demonstrating customer confusion between the new mark and existing marks registered in respect of windmills, water-supply equipment, milking machines, internal-combustion engines and electric generators and motors.
Domain names were created to serve the technical function of providing addresses for computers that were easier to remember than underlying IP addresses. However, with the dramatic increase in commercial activity on the Internet, domain names have become a standard part of the way in which many businesses communicate with their customers - they are used to identify the business and its goods and services. In this way a domain name, like a trade mark, may also serve as a badge of origin. Indeed, many second level domain names are identical to registered trade marks (eg "britannica.com" and the mark "Britannica" for encyclopaedias).
However, as noted above, multiple trade marks of the same name can legally co-exist in relation to different classes of goods or services, or alternatively in different geographical regions. By contrast, a domain name is a unique identifier due to the need for one-to-one correlation between a domain name and the address of the computer to which it relates. While two organisations may have a registered trade mark of the same name, they may not have the same domain name.
But conflicts in relation to a given domain name are not restricted to competing claims between businesses that both have existing rights to use a trade mark. In fact, most disputes have arisen because someone who has not previously used a mark has registered a domain name incorporating the established mark of another. Some individuals, known as `cybersquatters' or `domain name hijackers', have taken this to extremes and registered many domain names corresponding to well-known consumer brands. In the latter case, the domain names are generally registered for the purpose of attempting to sell them to the established trade mark owner.
"The U.S. Government will ... call upon the World Intellectual Property Organisation (WIPO) to initiate a balanced and transparent process to ... (1) develop recommendations for a uniform approach to resolving trademark/domain name disputes involving cyberpiracy ... (2) recommend a process for protecting famous trademarks in the generic top level domains, and (3) evaluate the effects ... of adding new gTLDs and related dispute resolution procedures on trademark and intellectual property holders".[61]
That passage formed the mandate of the WIPO Internet Domain Name Process (the "WIPO Process").[62] The WIPO process commenced in late 1998 and was finalised with the release of a final report on 30 April 1999. That report was referred by ICANN to one of its supporting organisations, the Domain Name Supporting Organisation ("DNSO") for comment. The DNSO recommended a number of changes to WIPO's recommendations, and a policy was adopted by ICANN in August 1999. Various "implementation documents" were released for public comment in September 1999, and, after certain amendments were made, the documents were finalised in October 1999.
As noted above, all ICANN-accredited registrars are required to ensure that their customers, ie persons seeking to register domain names, agree to the Policy. The Policy provides for a mandatory "administrative proceeding" conducted before an approved dispute resolution service provider (known as an "administrative panel") if a complaint is received which alleges: [65]
The availability of the mandatory administrative proceeding is not intended to prevent either party from commencing proceedings in an appropriate court in order to resolve a dispute.[67]
The Policy prescribes a non-exhaustive list of the matters to be considered in determining whether or not the registrant has a legitimate right to the domain name and whether or not the registration was made in bad faith. A legitimate right to the domain name will, most likely, be established if the registrant can prove:[68]
The decision is to be made on the basis of the complaint and the response and any rules and principles of law that the panel deems applicable, and only in exceptional circumstances will there be any hearing at which representations are made in person to the panel.[74] Written reasons for the decision must be prepared and communicated to the parties and also posted on a web site operated by the dispute resolution service provider.[75]
As at February 2001 there are four approved dispute resolution service providers:
Some interesting points to emerge from the decided cases are set out below.
Evidence of bad faith
Often where a domain name is registered which conflicts with a trade mark, the registrant will not have contacted the trade mark owner seeking to sell the domain name registration, and when served with a complaint pursuant to the UDRP, the registrant will simply not respond to, or participate in, the proceedings. This means there is very little evidence as to the respondent's intention in registering the domain name. This potentially causes a difficulty for the complainant, given that it is necessary to show that the registrant registered the domain name in bad faith.
However, the Panels have shown a willingness under the UDRP to draw inferences from the respondent's inaction. This was evident in the case of Telstra v Nuclear Marshmallows, which concerned the domain name "telstra.org".[78] In that case the domain name was registered in the name of "Nuclear Marshmallows". The administrative contact details submitted with the domain name registration were for a "Michael Jenkins" with a post office box in Gosford, NSW. The panel found that:
"There is no evidence that a web site or other on-line presence is in the process of being established which will use the domain name. There is no evidence of advertising, promotion or display to the public of the domain name. Finally, there is no evidence that the Respondent has offered to sell, rent or otherwise transfer the domain name to the Complainant, a competitor of the Complainant, or any other person. In short, there is no positive action being undertaken by the Respondent in relation to the domain name."
Nonetheless, the panel found that:
"the concept of a domain name `being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith."
This conclusion was justified by reference to clause 4(b) of the Policy (the non-exhaustive list of factors to be considered in determining whether a domain name was registered and used in bad faith). The panel observed that:
"[T]he circumstances identified in paragraphs 4(b)(i), (ii) and (iii) can be found in a situation involving a passive holding of the domain name registration. Of course, these three paragraphs require additional facts (an intention to sell, rent or transfer the registration, for paragraph 4(b)(i); a pattern of conduct preventing a trade mark owner's use of the registration, for paragraph 4(b)(ii); the primary purpose of disrupting the business of a competitor, for paragraph 4(b)(iii)). Nevertheless, the point is that paragraph 4(b) recognises that inaction (eg. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith."
In this case, the panel found that there was use in bad faith, notwithstanding the fact that no positive action had been taken by the Respondent in relation to the domain name. The factors which led the panel to this conclusion were:
"This does not, however, end our inquiry regarding the element
of bad faith, since the Policy indicates that its listing of bad faith
factors is without limitation. Thus we must still ask whether a
general offer for sale in the circumstances of this case constitutes bad
faith use of the domain name.
The value which Respondent seeks to secure from sale of the domain name
is based on the underlying value of Complainant's trademark. This value
is grounded in the right of Complainant to use its mark to identify itself
as a source of goods or services. Respondent has failed to establish any
legitimate domain name-related use for Complainant's trademark, in a context
in which such legitimization might be possible. The Respondent having failed
to present any such justification, the Panel may reasonably infer that
Respondent neither intended to make nor has made any legitimate use of
Complainant's trademark in connection with the "toefl.com" domain name.
In light of the undisputed record in this proceeding, the Panel concludes that the Respondent did in fact register and use the "toefl.com" domain name in bad faith. It has made no use of the domain name other than to offer it for sale at a price that is likely to substantially exceed its out-of-pocket costs of registration, and the price that the domain name commands would largely be based on the trademark of the Complainant. Although a supplemental, as opposed to competitive, user of the domain name might be willing to pay the price sought by Respondent, there is no reason based on the record to award this price to Respondent. The Respondent was the first-to-register, and in circumstances of legitimate registration and use this may secure its right to the domain name. However, because Respondent is contributing no value-added to the Internet - it is merely attempting to exploit a general rule of registration - the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it."
It remains to be seen whether the concept of a lack of valuing-adding will be taken up by subsequent Panel decisions as evidence of bad faith.
Confusing similarity
Until recently, a very broad view had been taken by Panels as to what would suffice to make out confusing similarity, particularly in the context of the "sucks" decisions.
It has been a surprisingly common practice for persons wishing to criticise a particular company or organisation by the name of, or having as a trade mark , X (say) to register the domain name "Xsucks.com" as the address for a web site containing critical material about the company or organisation.
Many previous Panel decisions have held that a domain name containing Xsucks is confusingly similar to the trade mark X[80] for the purpose of the UDRP.
However, in the recent case of Lockheed Martin Company v Dan Parisi[81], the Panel referred to these previous decisions and stated:
Only one ICANN decision to date has reached a contrary result, declining to find a "sucks" domain name confusingly similar to a trademark. Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, WIPO Case No. 2000-1104, Nov. 23, 2000 (wallmartcanadasucks.com). The panelist in that case expressed skepticism whether a "sucks" domain name could ever be confusingly similar to a trademark, but stopped just short of advocating a per se privilege exempting all "sucks" domain names from transfer under the Policy.
A majority of this Panel agrees with the result reached by the panelist in the Wallmartcanadasucks.com case, and disagrees with the opposite view in the previously cited cases. Both common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the word "sucks" or other language clearly indicating that the domain name is not affiliated with the trademark owner cannot be considered confusingly similar to the trademark.
Although the Panel's conclusion comports with the plain language of the Policy, it is worth noting that United States federal courts have reached analogous conclusions in similar cases. Thus, in Bally Total Fitness v. Faber, 29 F. Supp.2d 1161 (C.D. Cal. 1998), the disputed domain name was <Ballysucks.com>. The well-known health club operator Bally's, owner of the service mark of the same name, sued the defendant for service mark infringement based on defendant's registration of the domain name <Ballysucks.com>, which defendant used to voice complaints about Bally's health club business. The court granted defendant's motion for summary judgment and dismissed the complaint because it found that Bally could not prove a likelihood of confusion with its trademark.
In reaching this conclusion, the court found, inter alia, there could be no confusion because the parties did not offer "related goods". This case fits our Case at hand in all essential respects. And it certainly is true that here, as in Bally's, Complainant's products from aerospace to t-shirts are very different from Respondent's service of providing a forum for voicing criticism of Complainant and other prominent corporations.
Furthermore, there is at least one other federal case similar to Ballys and our Case that follow this same reasoning, viz., "sucks" appended to a famous trademark used as a domain name for websites used to discuss or criticize the business of the trademark owner results in a non-infringing and not confusingly similar use of the trademark. (re the domain name <Lucentsucks.com>, Lucent Technologies, Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528, 535, E.D. Va. 2000).
In reaching this Decision, the Panel is mindful that the current nature of the internet is such that search engines may well pull in the disputed domain names when the searcher intends to find only Complainant's well-known company. However, the Panel believes that once the searcher sees <lockheedsucks.com> and <lockheedmartinsucks.com> listed among the websites for further search, she will be able readily to distinguish the Respondent's site for criticism from Complainant's sites for goods from aerospace to t-shirts.
Therefore, the Panel finds the Complainant has not shown that the disputed domain names <lockheedsucks.com> and <lockheedmartinsucks.com> are confusingly similar to Complainant's trademarks under the Policy.
The reasoning in Lockheed v Parisi must be correct if the concept of "confusing similarity" under the UDRP is not to diverge totally from its accepted meaning in trade mark law. The concept of "dilution", or tarnishment, of a trade mark, exists under US law (and perhaps to some limited extent under Australian law, see below) and is the correct way of analysing behaviour which does not confuse consumers into believing there is a connection between the trade mark owner and the registrant, but which nevertheless damages the value of the trade mark.
Example of legitimate use
In Digitronics Inventioneering v @Sixnet Registered[82] the panel found for the respondent in a dispute over the domain names "sixnet.com" and "six.net". The panel found that the respondent was legitimately using the names on the basis that the respondent was commonly known as "Sixnet" (see cl 4(c)(ii) of the Policy). The respondent was able to establish this by presenting invoices which showed that the business was known as "Sixnet" by its customers.
Common law trademarks
The case of Cedar Trade Associates Inc v Greg Ricks[83], concerned the domain name "buypc.com". That case establishes that a common law (ie unregistered) trade mark will be treated in the same way as a registered trade mark under the Policy. In that case the complainant had been trading through "buypc.com" but the domain name registration lapsed due to a failure to pay renewal fees on time. The respondent registered the domain name and then offered it for sale through "greatdomains.com", a venue at which domain names are offered for sale. The respondent was found to have registered and used the domain name in bad faith, and was required to transfer the name to the complainant.
Evaluation of the UDRP
Trade mark owners and their advisers have received the UDRP favourably. It is undoubtedly a quick, cheap and effective method for dealing with egregious cases of cybersquatting.
Whilst it is true that the requirement of "bad faith" indicates that the UDRP is directed at egregious cases, rather than those cases in which there are genuine competing interests, nevertheless there are those who consider that there are "substantial dangers lurking in the shoals of the UDRP procedures"[84]. The major criticisms which have been made of the UDRP are that:
A disadvantage of option (a) may be that difficult legal questions would arise in applying the choice of law rules and this would subvert the intention of the UDRP to be a quick and efficient procedure.
A disadvantage of option (b) may be that it would not possible to have a sufficient number of Panel members available with expertise in the governing law chosen (particularly since being a Panel member is not greatly remunerative). The current system means that Panel members are able to be sourced from all over the world, regardless of the particular jurisdiction they ordinarily practise in. Further, if the uniform law was the law of a particular jurisdiction (as opposed to a codification of principles), the legislature and courts of that jurisdiction would have the capacity to influence the governance of the Internet on a global basis.
| Stage | Description |
| Notice | The originator of the dispute sends notice of the dispute in writing to the administrator |
| Negotiation and conciliation | The originator, the administrator and any third parties must attempt to settle the dispute by negotiations and conciliation |
| Arbitration | If the above attempts fail to settle the dispute, the parties agree to refer the dispute to a commercial disputes centre. All parties must agree to be bound by the ruling of the arbiter. The costs of the dispute are borne by the originator |
It is abundantly clear that these provisions are unenforceable because they are so uncertain: Elizabeth Bay Developments v Boral Building Services (1995) 36 NSWLR 709. They say nothing about the principles to be applied or the procedures to be followed in resolving the dispute. They leave trade mark owners with no choice but to send "cease and desist" letters to cybersquatters and, if those letters are unsuccessful, to commence court proceedings.
At first instance, summary judgment was given in favour of the plaintiffs on the grounds that there had been threats of passing off and trade mark infringement.
For Australian purposes, the discussion of the law of passing off is particularly relevant. The trial judge, Mr Jonathon Sumption QC, held that "the mere registration of a deceptive company name or a deceptive Internet domain name is not passing off." But, in appropriate circumstances, the courts are willing to grant quia timet relief to restrain threatened passing off. The defendants argued that they could use the disputed domain names in ways that would not involve passing off, namely (i) the sale of the domain name to the relevant plaintiff, and (ii) retention of the domain name with a view to blocking the its use by the relevant plaintiff in order to induce them to pay. The judge held that, in the circumstances of the case, the mere existence of the domain names created a risk of deception to consumers.[92] He went on to observe:[93]
Any person who deliberately registers a domain name on account of its similarity to the name, brand name or trade mark of an unconnected commercial organisation must expect to find himself on the receiving end of an injunction to restrain the threat of passing off, and the injunction will be in terms which will make the name commercially useless to the dealer.
The order that was made was that the defendants take certain steps to have the disputed names assigned to the plaintiffs.
The Court of Appeal unanimously rejected the defendants' appeal against the trial judge's orders. The Court discussed many passing off cases, concentrating on those involving the registration of trading names that encroach on the goodwill of the plaintiff.[94] One in a Million argued that the mere registration of the disputed domain names did not amount to passing off. However, the Court of Appeal held that:
The placing on the register of a distinctive name such as marksandspencer makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name. Such persons would not know of One in a Million Limited and would believe that they were connected or associated with the owner of the goodwill in a domain name they had registered.
The Court of Appeal continued by finding that "[a]ny realistic use of [the disputed names] as domain names would result in passing-off and there was ample evidence to justify the injunctive relief granted by the judge to prevent them from being used for a fraudulent purpose and to prevent them being transferred to others."
The plaintiffs also claimed the defendants had infringed various registered trade marks. Because English trade mark law is based upon a European Directive, the provisions of the English Trade Mark Act 1994 are different in some important respects from Australian trade mark law. For this reason the trade mark aspect of the decision is not as important for Australian law as the passing off reasoning. However, the trial judge found that there was trade mark infringement and this decision was also upheld on appeal.
The One in a Million case can be contrasted with the decision in Avnet Inc v Isoact Ltd[95]. In Avnet the plaintiff was the registered proprietor of the mark AVNET in relation to advertising and promotional services. The plaintiff's business was the sale of goods by catalogue. The defendant was an Internet Service Provider with an emphasis on the aviation industry. Web hosting services were amongst the services offered by the defendant. Some of the defendant's customers published brochure style (ie. promotional) web pages that were hosted by the defendant. The defendant used the names "Aviation Network" and "Avnet", and were the registrants of the domain name "avnet.co.uk". The plaintiff pressed for summary judgment on a claim of trade mark infringement. The application for summary judgment was dismissed. Laddie J concluded "I do not think that in substance what these defendants are doing is providing `advertising and promotional services'."[96] Because the AVNET mark was not well known, the plaintiff could not argue that the mark was infringed because there was a likelihood of confusion even though the defendants' services were not of the kind in respect of which the mark was registered.
OPEN YOUR EYES
$80 million people can drive past
EVERY DAY
THE CHANGING FACE OF ADVERTISING
Clearly, this was intended as a reference to the potential of the world wide web as an advertising medium.
In considering the passing off claim, Baragwanath J applied the well known dictum of Lord Diplock from the Advocaat case.[100] In short, his Honour held that by having material referable to the plaintiff's advertising business available via the oggi.co.nz domain name, the defendants falsely represented an association with the plaintiff, and that this would probably cause actual damage to the plaintiff. As in the One in a Million case, the Court granted a mandatory injunction directing the defendant immediately to take affirmative steps to assign the domain name to the plaintiff. Baragwanath J considered that the more conventional relief (an order to withdraw the registration) did not sufficiently protect the plaintiff because of the possibility that a third party might apply for the domain name after the defendant's deregistration but before the plaintiff was registered. No doubt his Honour was influenced by the number of fictional characters in whose name the domain name had previously been registered. However, in case "Elliott Oggi" existed, the plaintiff was ordered to maintain the domain name registration in its name pending further order.
Speaking generally, defendants have sought to argue that domain name registration is not "commercial use" (just as One in a Million argued that mere registration did not constitute passing off) and that if there was any use, that use did not dilute the quality of the mark.
Two notable dilution cases involved the same defendant, Dennis Toeppen. Both Intermatic Inc v Toeppen[102] and Panavision International LP v Toeppen[103] involved similar facts. Toeppen registered the domain names "intermatic.com" and "panavision.com" and subsequently offered to sell them back to the respective trade mark owners. The trade mark owners refused to deal, and commenced litigation alleging trade mark infringement and trade mark dilution. In both cases, Toeppen's arguments regarding lack of "commercial use" were rejected. For example, in the Panavision case, the 9th Circuit Court of Appeals held that "Toeppen traded on the value of Panavision's marks. So long as he held the Internet registrations, he curtailed Panavision's exploitation of the value of its trademarks on the Internet, a value which Toeppen then used when he attempted to sell the <panavision.com> domain name to Panavision."
In an argument that is of relevance to Australian trade mark law (because an infringing use must be use "as a trade mark" - ie. as a badge of origin), Toeppen argued that a domain name was simply an address or like a telephone number.[104] In rejecting this contention, the Court's discussion of the role of a domain name is of interest:
"A telephone number ... is distinguishable from a domain name because a domain name is associated with a word or phrase. A domain name is similar to a `vanity number' that identifies its source. Using Holiday Inns as an example, when a customer dials the vanity number `1-800-Holiday,' she expects to contact Holiday Inns because the number is associated with that company's trademark. A user would have the same expectation typing the domain name <HolidayInns.com>. The user would expect to retrieve Holiday Inns' web page." [105]
It appears likely that similar reasoning could be adopted in Australia to find that a defendant has used a trade mark "as a trade mark" and not simply as an address.
Dilution was found because, amongst other things, customers of the trade mark holder "will be discouraged if they cannot find its web page by typing in <[trademark].com> but instead are forced to wade through hundreds of web sites."
The ACCPA introduced a new basis on which trade mark infringement may be found by adding a new 43(d) to the Trade Mark Act of 1946 (15 USC 1125(d)). Infringement takes place where a person:
In Sporty's Farm, LLC v Sportman's Market, Inc[107], the first appellate case decided under the ACCPA, the US Court of Appeals indicated a willingness to infer bad faith from circumstances other than those non-exhaustive evidentiary factors listed in the ACCPA. Although the case was originally filed under the Federal Trade Marks Dilution Act, the ACCPA was passed before the Court of Appeal rendered its decision, and the Court held that the ACCPA applied on appeal.
Sportman's Market was a catalogue company targeted at aviation enthusiasts, which used the trade mark SPORTY'S in relation to its catalogues. The domain name "sportys.com" was registered by Omega Engineering, a catalogue company which sold mainly scientific instruments. The principal of Omega was a pilot who was familiar with Sportsman's catalogues and the SPORTY'S trademark. Nine months after registering sportys.com, Omega transferred the domain name to its subsidiary Sporty's Farm, which was set up to grow and sell Christmas trees.
The Court found that neither Sporty's Farm nor Omega had any intellectual property rights in sportys.com and Sporty's Farm did not begin use of the name in a bona fide offering of goods or services until after proceedings were commenced. The Court further found that Omega planned to enter into direct competition with Sportsman's in the pilot and aviation consumer market, and the primary intent in registering sportys.com was to prevent Sportsman's from using it as a domain name. Moreover, the court found that Omega created the Sporty's Farm Christmas tree business solely to find a use for the sportys.com name in some commercial fashion and thus hopefully protect it against a claim of infringement.
As with "traditional" forms of trade mark infringement under US law, "statutory damages" are available in lieu of proving actual damages or loss of profit. The statutory damages available for breach of 43(d) are US$1,000 to US$100,000, as the court considers just. In Sporty's Farm, the Court ordered that the domain name sportys.com be transferred to Sportsman's Market, but it declined to award damages on the basis that the domain name was registered prior to the passage of the ACCPA.
As to trade mark infringement, if the registered mark is not "well-known in Australia", it is necessary to establish that the defendant has used "as a trade mark" a sign that is substantially identical with, or deceptively similar to the registered trade mark in relation to goods or services in respect of which the mark is registered.[108] A decision such as that in Avnet v Isoact is quite possible in Australia - the defendant's use may not be in the same field of commerce, meaning that infringement cannot be made out.
The situation will be different if the mark is "well known in Australia". In compliance with Australia's obligations under the TRIPs Agreement, the Trade Marks Act 1995 includes additional measures of protection for well known marks.[109] In such cases it does not matter that the defendant's use of the mark is not in respect of the goods and services for which it is registered. Rather, the trade mark owner need only establish that:[110]
"In this decade, legislation in the United States[111], the United Kingdom[112], and now in Australia[113] to varying degrees has extended the infringement action to restrain activities which are likely adversely to affect the interests of the owner of a `famous' or `well-known' trade mark by the `dilution' of its distinctive qualities or of its value to the owner.
Such provisions represent legislative responses to the claims of trade mark owners to protection where, particularly by successful advertising, the fame of a mark carries its function beyond the traditional role as an identifier of origin. The `dilution' theory of liability `does not require proof of a likelihood of confusion'; rather, what is protected is `the commercial value or 'selling power' of a mark by prohibiting uses that dilute the distinctiveness of the mark or tarnish the associations evoked by the mark'[114]. The term `dilution' has an uncertain scope of application. It also is used to describe the processes by which a mark, such as `Linoleum'[115] or `Pyrex'[116], becomes generic and the effects of the use of a mark in parody[117]."
Although this comment was strictly obiter, it appears that the High Court has proceeded on the basis that the "likely connection" which s120(3) refers to is a lesser standard than "likely to deceive or cause confusion" (which is required by s120(2)). The court's willingness to refer to US dilution law in this context means that the US domain name cases involving dilution claims may be persuasive in Australia. For example, the Panavision court's reasoning that an important purpose of a domain name (particularly one based on a well known mark) is to identify a source will be of assistance to a plaintiff in arguing that a domain name is being used "as a trade mark" and that the use would be likely to be taken as indicating a connection with the trade mark owner. Similarly, many of the explanations of how a trade mark is diluted if it corresponds to a domain name not under the trade mark owner's control will go towards establishing that the interests of the owner are likely to be adversely affected.
It is likely that the next 12 to 24 months will see similar developments take place in the .au namespace. If competition is introduced in the .com.au namespace (which appears inevitable) it will be necessary to review the presently inadequate dispute resolution policy promulgated by Melbourne IT. It is curious to note that in its Second Public Consultation Report entitled "Changes to Domain Name Eligibility and Allocation Policies in .AU Second Level Domains"118, the auDA Name Policy Advisory Panel referred to the need to introduce a dispute resolution mechanism and mentioned the ICANN UDRP in this context, but did not expressly recommend that the ICANN model be introduced. ICANN's policy provides a sound model for developing an Australian domain name alternative dispute resolution policy.
[1] Senior Associate, Mallesons Stephen Jaques, email: patrick.gunning@msj.com.au
[2] Solicitor, Mallesons Stephen Jaques, email: patrick.flynn@msj.com.au
[3] This paper is based on a paper delivered by Patrick Gunning to the College of Law CLE in March 2000 (see http://www.austlii.edu.au/au/other/CyberLRes/2000/1/index.html) but has been revised to take account of several important developments which have taken place in 2000-2001. The views expressed in this article are the personal views of the authors and not necessarily those of Mallesons Stephen Jaques.
[4] Gunning, P "Law of trade marks and domain names - part 1" (1999) 2 INTLB 1 at 1.
[5] Statistics from www.domainstats.com as at 4 March 2000.
[6] Statistics from www.domainstats.comat as 22 February 2001.
[7] Statistics for .au names from http://www.bluetongue.com.au/domainnames/info.html
[8] The list of registrars currently accredited and operational is available at http://www.icann.org/registrars/accredited-list.html
[9] The Uniform Policy is available at http://www.icann.org/udrp/udrp-policy-24oct99.htm
[10] Introductory material relating to the DNS is contained in RFC 1034 (see http://ftp.uni-erlangen.de/cgi-bin/view/pub/doc/rfc/rfc1034.txt)
[11] The principles governing the administration of the DNS since 1994 are contained in RFC 1591 (see http://ftp.uni-erlangen.de/cgi-bin/view/pub/doc/rfc/rfc1591.txt)
[12] ISO 3166-1. For the current list of codes, see http://www.din.de/gremien/nas/nabd/iso3166ma/codlstp1/en_listp1.html.
[13] A full list of the Second-Level Domains within the .au ccTLD is available at http://www.auda.org.au/domains.html.
[14] United States Government, Department of Commerce White Paper, "Management of Internet Names and Addresses", 5 June 1998. The Paper is available at http://www.ntia.doc.gov/ntiahome/domainname/6_5_98dns.htm
[15] These principles are drawn from the initial contract between ICANN and the US Department of Commerce: see http://www.icann.org/general/icann-mou-25nov98.htm
[16] The history of the SRS is described at http://www.icann.org/registrars/accreditation-history.htm
[17] See http://www.icann.org/nsi/nsi-agreements.htm
[18] See ICANN-NSI Registry Agreement at http://www.icann.org/nsi/nsi-registry-agreement-04nov99.htm
[19] The NSI-Registrar Agreement is at http://www.icann.org/nsi/nsi-rla-04nov99.htm
[20] The Registrar Accreditation Agreement is at http://www.icann.org/nsi/icann-raa-04nov99.htm. In the case of NSI, there is a related transition agreement which is at http://www.icann.org/nsi/icann-nsi-transition-04nov99.htm
[21] See Amendment 19 to the Cooperative Agreement between NSI and the US Government at http://www.icann.org/nsi/coopagmt-amend19-04nov99.htm
[22] http://www.dcita.gov.au/nsapi-text/?MIval=dca_dispdoc&ID=5119&template=Newsroom
[23] http://www.iana.org/cctld/cctld-news1.htm
[24] The letter from Mr Elz to auDA constituting the delegation is at http://www.auda.org.au/docs/letter-com.au.html
[25] Report on auDA's Achievements and Capacity to Manage Domain Names in Australia, 9 October 2000: http://www.auda.org.au/docs/to-govt-2000-10.html
26 http://www.auda.org.au/panel/name/papers/publicreport.pdf
[27] http://www.auda.org.au/docs/Endorse_Letter_Final.html
28 http://www.auda.org.au/panel/name/papers/publicreport2.html
29 http://www.auda.org.au/panel/competition/papers/publicreport.html
[30] www.inww.com
[31] The terms and conditions of the licence are available at http://www.inww.com/policies/comauterms.php3
[32] The "com.au Domain Name Allocation Policy" is available at http://www.inww.com/policies/comaupolicy.php3
[33] Policy, clause 2. This may pose a problem for a foreign company seeking to protect its interests in Australia in anticipation of establishing a branch office (ie. registering as a foreign company under s.601CD of the Corporations Law) or incorporating an Australian subsidiary (with the attendant requirement of a locally based director). For example, an offshore business that markets products via the Web to persons located in Australia will not "carry on business in Australia" if, as is commonly the case, an order placed by a person in Australia becomes a binding contract only on acceptance by the supplier outside Australia (s21(3)(e) Corporations Law), but the business might have a substantial customer base in Australia. Nevertheless, it would be unable to register a "com.au" domain name until it was actually registered and carrying on business in Australia (which, for many reasons, including taxation, it may not wish to do).
[34] Policy, clause 3.1
[35] Licence terms, clause 9.1; Policy clause 3.5
[36] Policy, clause 3.6
[37] Policy, clause 3.7; Similarly, geographic names are not "adapted to distinguish" the goods or services of a business and may not be registered as a trade mark: Trade Marks Act 1995, s 41
[38] Policy, clause 3.8. The "generic" test is less stringent than the test of descriptiveness under the Trade Marks Act. The Policy states that multiple word phrases such as "pressrelease" or "wedding-car-hire" will be accepted, whereas there is little doubt that these could not be valid trade marks. It appears from the Policy that an important indicator of whether a word is generic for Melbourne IT's purposes is whether it is a heading used in the Yellow Pages index.
[39] Policy, clause 3.2
[40] Licence terms, clause 12
[41] Licence terms, clause 9.7
[42] Licence terms, clause 9.8
43 http://www.auda.org.au/panel/name/papers/publicreport2.html
44 http://www.auda.org.au/panel/competition/papers/publicreport.html
[45] Registrar Accreditation Agreement (available at http://www.icann.org/nsi/icann-raa-04nov99.htm), clause II, J 7.
[46] Registrar Accreditation Agreement (available at http://www.icann.org/nsi/icann-raa-04nov99.htm), clauses II, D 1(b) and II, K.
[47] Registrar Accreditation Agreement (available at http://www.icann.org/nsi/icann-raa-04nov99.htm), clause II, J 5.
[48] Registrar Accreditation Agreement (available at http://www.icann.org/nsi/icann-raa-04nov99.htm), clause II, J 4.
[49] Registrar Accreditation Agreement (available at http://www.icann.org/nsi/icann-raa-04nov99.htm), clause II, J 7 (b)-(f)
[50] The NSI Registrant Name Change Agreement is available at http://www.networksolutions.com/makechanges/rnca/pdf/RNCA3_transfers.pdf
[51] It would not be prudent to provide for payment in full until such confirmation has been received because the registrar may have a right to refuse to accept the registration by the new registrant.
[52] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 per Kitto J at 425; Amalgamated Television Services Pty Ltd v Foxtel Digital Cable Television Pty Ltd (1995) 60 FCR 483 per Davies J at 497-498, and cases cited therein; Aristoc v Rysta [1945] AC 68 per Viscount Maugham at 89, Lord Macmillan at 97, Lord Wright at 101.
[53] See the authorities discussed by Wilcox J in Montana Tyres Rims & Tubes Pty Ltd v Transport Tyre Sales Pty Ltd (1998) 41 IPR 301 at 311ff.
[54] [1963] RPC 183 at 197.
[55] The Paris Convention for the Protection of Industrial Property (1883) contains a number of provisions relating to trade marks, service marks, trade names, indications of source and appellations of origin, and to the repression of unfair competition. Signatories to the treaty must recognise rights of protection for the various forms of industrial property specified by the articles. Signatories must grant to nationals of other member countries the same protection it would grant to its own nationals: D R Shanahan, Australian Law of Trade Marks and Passing-Off, 2 ed., Sydney: The Law Book Company Ltd, 1990 at 9. Australia and most of its trading partners have subscribed to the treaty; it is available at http://www.wipo.int/eng/general/ipip/paris.htm
[56] 50 Countries, including Australia, are party to The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957), which is available at http://www.wipo.int/eng/iplex/wo_nic0_.htm
[57]http://www.wipo.int/eng/general/ipip/nice.htm
[58] (1954) 91 CLR 592 at 596 per Kitto J. The decision of Kitto J was affirmed on appeal by the Full Court.
[59] See P Hourigan, `Domain Names and Trade Marks' in Going Digital, Prospect Publishing (1998) at 83-84; D Kelliher `Generic Domain Names on the Internet' [1998] EIPR 62.
[60] United States Government, Department of Commerce White Paper, "Management of Internet Names and Addresses", 5 June 1998. The Paper is available at http://www.ntia.doc.gov/ntiahome/domainname/6_5_98dns.htm
[61] United States Government, Department of Commerce White Paper, "Management of Internet Names and Addresses", 5 June 1998. The Paper is available at http://www.ntia.doc.gov/ntiahome/domainname/6_5_98dns.htm
[62] WIPO established a site dedicated to the Process: http://wipo2.wipo.int
[63] The policy can be found at: http://www.icann.org/udrp/udrp-policy-24oct99.htm
[64] The rules can be found at: http://www.icann.org/udrp/udrp-rules-24oct99.htm
[65] ICANN Policy Cl. 4(a)(i)-(iii)
[66] ICANN Policy Cl 4(i)
[67] ICANN Policy Cl. 4(k)
[68] ICANN Policy Cl 4(c)
[69] ICANN Policy Cl 4(b)
[70] ICANN Rules Cl 4(a)
[71] ICANN Rules Cl 5
[72] ICANN Rules Cl 6
[73] ICANN Rules Cl 15
[74] ICANN Rules Cl 13
[75] ICANN Rules Cl 16
[76] ICANN Rules Cl 19
[77] http://www.icann.org/udrp/proceedings-stat.htm
[78] The decision is published at http://arbiter.wipo.int/domains/decisions/html/d2000-0003.html
[79] Decision published at http://arbiter.wipo.int/domains/decisions/html/d2000-0044.html
[80] Diageo PLC v. Zuccarini, WIPO Case No. D2000-0996, Oct. 22, 2000 (guinness-sucks.com, guinness-really-sucks.com, and others); Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662, Sept. 19, 2000 (wal-martsucks.com); Cabela's Inc. v. Cupcake Patrol, NAF Case No. FA95080, Aug. 29, 2000 (cabelassucks.com); Direct Line Group Ltd. v. Purge I.T., WIPO Case No. D2000-0583, Aug. 13, 2000 (directlinesucks.com); Dixons Group PLC v. Purge I.T., WIPO Case No. D2000-0584, Aug. 13, 2000 (dixonssucks.com); Freeserve PLC v. Purge I.T., WIPO Case No. D2000-0585, Aug. 13, 2000 (freeservesucks.com); National Westminster Bank PLC v. Purge I.T., WIPO Case No. D2000-0636, Aug. 13, 2000 (natwestsucks.com); Standard Chartered PLC v. Purge I.T., WIPO Case No. D2000-0681, Aug. 13, 2000 (standardcharteredsucks.com); Wal-Mart Stores, Inc. v. Walsucks, WIPO Case No. D2000-0477, July 20, 2000 (wal-martcanadasucks.com & others).
[81] Decision published at http://www.arbiter.wipo.int/domains/decisions/html/2000/d2000-1015.html
[82] Decision published at http://www.arbiter.wipo.int/domains/decisions/html/d2000-0008.html
[83] Decision published at http://www.arbforum.com/domains/decisions/93633.html
[84] Cabell, D (2000) "Overview of Domain Name Policy Development - Conflicts between Trademark Law and Domain Names" at page 9: http://eon.law.harvard.edu/udrp/overview.html
[85] As was remarked by the Panel in Video Networks Limited v Larry Joe King at para 11.15 http://www.arbforum.com/domains/decisions/2000/d2000-0487.html
[86] Donahey and Palaniswamy "The ICANN cybersquatting decisions #4" at page 2: http://eon.law.harvard.eud/udrp/decisions/2000-4.html
[87] Cabell, D (2000) "Overview of Domain Name Policy Development - Conflicts between Trademark Law and Domain Names" at page 7: http://eon.law.harvard.edu/udrp/overview.html
88 Federal Court of Australia proceedings NG1390 of 1998. That case concerned the domain name "asxinvestor.com.au".
[89] Burchett J held: "So far as the case is concerned with the effect of use of a domain name and an allegation of infringement of the applicant's trade mark rights, the applicant has the support of a decision of the English Court of Appeal in British Telecommunications PLC v One in a Million Limited [1998] 4 All ER 476, a decision which I follow.": Transcript of proceedings of 3 June 1999, p19.
[90] British Telecommunications Plc & Ors v One In A Million Ltd and Ors (1998) 42 IPR 189 also available at http://www.nominet.net/news/oiam-appeal-judgment.html. The first instance decision is reported as Marks & Spencer Plc & Ors v One in a Million Ltd & Ors [1998] FSR 265.
[91] Marks & Spencer Plc & Ors v One in a Million Ltd & Ors [1998] FSR 265 at 268.
[92] [1998] FSR 265 at 271.
[93] [1998] FSR 265 at 272.
[94] Included in cases of this kind were: Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd [1981] 1 NSWLR 196; Glaxo Plc v Glaxowellcome Ltd [1996] FSR 388; and Direct Line Group Ltd v Direct Line Real Estate Ltd [1997] FSR 374.
[95] [1998] FSR 16.
[96] [1998] FSR 16 at 19.
[97] (unreported, NZ High Court, Baragwanath J, 2 June 1998)
[98] (unreported, NZ High Court, Baragwanath J, 2 June 1998) at 3 and 10.
[99] It has been suggested that it was more than a mere coincidence that Elliott Oggi was chosen as the contact name (given the plaintiff's name and the fact that the plaintiff's counsel was a Mr Clive Elliott): C Elliott and B Gravatt, "The Oggi Case: New Zealand Domain Name Grabber Dealt To", Trademark World, August 1998, 19 at 21.
[100] Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731
[101] Federal Trademark Dilution Act of 1995, 15 USC SS1125(c), which provides: "[t]he owner of a famous mark shall be entitled ... to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark ..."
[102] 947 F Supp 1227 (N.D. Ill 1996)
[103] 141 F 3d 1316 (9th CCA, 1998). The first instance summary judgment decision is reported as Panavision International LP v Toeppen 945 F Supp 1296 (C. D. Cal. 1996)
[104] A similar argument was used in the "Chifley Tower" case (which did not involve domain names): Australian Tourism Co Ltd v Mid Sydney Pty Ltd (1999) AIPC 91-452
[105] To like effect, the Panavision court relied on the following statements from previous cases: "A customer who is unsure about a company's domain name will often guess that the domain name is also the company's name." Cardservice Int'l v McGee 950 F Supp 737, 741 (E.D. Va. 1997); "[A] domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base." MTV Networks Inc v Curry 867 F Supp 202, 203-204 (S.D.N.Y. 1994).
[106] This action must, by implication, be limited to those domain names in respect of which the registrar is located in the United States. The "in rem" action was inspired by Porsche Cars North America Inc v Porsch.com Civil Action No. 99-0006-A, 1999 U.S. Dist Lexis 8750 (D. Va., June 8, 1999). However, in that case the Court held that the "in rem" procedure was not authorised by the Trade Mark Act. The Court also expressed some doubts as to the constitutionality of such a procedure. However, in Caesars World, Inc v Caesars-Palace.Com (US Dist Ct, Eastern District of Virginia, 3 March 2000, Bryan J) it was held that the "in rem" procedure introduced by the ACCPA is permitted by the US Constitution: see www.ferenclaw.com/lawbytes/caesars.html
[107] 2000 US App LEXIS 1246 (2d Cir, 2 February 2000)
[108] Trade Marks Act 1995, s120(1).
[109] Articles 16(2) and (3) of the TRIPs Agreement relate to the criteria for determining well known marks and the protection to be afforded to them. Prior to TRIPs, under Article 6bis of the Paris Convention member states undertook to refuse or to cancel the registration, and to prohibit the use, of a mark which is liable to create confusion with a well known mark already registered for identical or similar goods. Article 16(3) of TRIPs extends the operation of Article 6bis of the Paris Convention to marks used in relation to goods or services that are not similar to those in respect of which the well known mark is registered ("unrelated goods or services"), provided that (a) the use is such as to indicate a connection between the owner of the well known mark and the unrelated goods or services, and (b) the interests of the owner of the well known mark are likely to be damaged by such use.
[110] Trade Marks Act 1995, s120(3).
[111] Federal Trademark Dilution Act of 1995, 15 USC SS1125. See Alexander and Heilbronner, "Dilution Under Section 43(c) of the Lanham Act", (1996) 59 Law and Contemporary Problems (No 2) 93; Lemley, "The Modern Lanham Act and the Death of Common Sense", (1999) 108 Yale Law Journal 1687 at 1698-1699
[112] Trade Marks Act 1994(UK), s10. See Martino, Trademark Dilution, (1996), Ch 12; Carty, "Dilution and Passing Off: Cause for Concern", (1996) 112 Law Quarterly Review 632 at 638-665
[113] Trade Marks Act 1995, s120(3) and (4).
[114] Restatement Third, Unfair Competition, SS25, Comment (a).
[115] Linoleum Manufacturing Co v Nairn (1878) 7 Ch D 834
[116] James A Jobling & Co Ltd v James McEwan & Co Pty Ltd. In re James A Jobling & Co Ltd's Trade Marks [1933] VLR 168
[117] Welkowitz, "Reexamining Trademark Dilution", (1991) 44 Vanderbilt Law Review 531 at 550-560; Carty, "Dilution and Passing Off: Cause for Concern", (1996) 112 Law Quarterly Review 632 at 643-646
118 http://www.auda.org.au/panel/name/papers/publicreport2.html