15 Apr 2012

Curbing enthusiasm for using competitors' trademarks in your domain name

Submitted by Troy Rollo

In Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd [2012] FCA 281, domain names registered by Zippykerb were found to infringe Edgetec's trade mark, "Kwik Kerb".

Each party produces tools for making concrete curbs.

Zippykerb had registered a bundle of domain names containing Edgetec's trade mark, "Kwik Kerb". While this will not always result in the domain names being an infringing use of the trade marks, in this case the Court had no difficulty finding this was an infringing use because Zippykerb used the phrase "Kwik Kerber" throughout the web site to describe their products.

Edgetec's claim that these were descriptive words for fast lawn edging products could not survive a "kwik" reference to the Macquarie dictionary.

The use of explicit disclaimers of any association with the Kwik Kerb product on two of the pages on the site was not enough to avoid the finding of infringement.

I do not recommend using a competitor's trade mark in your domain name at all. Even if you do not end up in court over it, you stand a good chance of losing in a UDRP proceeding to require you to hand over the domain name, and then you have gone to some effort to promote a domain name that your competitor will own. However if you absolutely must use your competitor's trade mark in your domain name, get an IT lawyer to advise on your use and to review the content of your web site.