Protecting Their Turf

Question: What do diamonds and colorbond fences have in common when it comes to domain names?

Answer: Major corporations who have no hesitation in attempting to protect their perceived or real Intellectual Property rights.

Today, I look at two auDRP cases involving multiple domains. One case is already decided (diamonds); the other pending (colorbond). There are some excellent lessons in both instances for domain investors.

Diamonds

The first case concerns the following names:

forevermark.com.au; forevermarkdiamond.com.au; forevermarkdiamonds.com.au; forevermarkjeweller.com.au

• The Complainant is part of the De Beers group of companies, one of the world’s largest diamond mining companies and supplier of rough diamonds. The De Beers group operates its diamond supply business across the world through a subsidiary company, Forevermark Limited, and via a network of authorized retail jewellers.

• The Complainant is the proprietor of various Australian trademark registrations consisting of or containing the word trademark “FOREVERMARK”.

Rather than me summarising the case, have a read for yourself. It’s a concise decision written by Andrew Christie (who was the Sole Panelist).

My take:

• Don’t register domain names (without consent) that clearly infringe trademarks.

• If you find yourself in a situation like this, either get your registrar to delete the domains; or offer to transfer the domains in return for your reasonable “out of pocket expenses”. To seek $10,000 to $12,000 (as this respondent allegedly did) to transfer the domains will seal your fate. Imho.

Footnote:

There is a current auDRP proceeding for the domain adiamondisforever.com.au. The registrant contact name is the same as the above. One can only surmise that the Complainant is the same party. Will keep you posted.

Colorbond

This recently commenced case involves the following domain names:

colorbondfence.net.au, colorbondfenceprice.com.au, colorbondfencers.com.au, colorbondgates.com.au, fencingcolorbond.com.au, sydneycolorbondfencing.com.au

• Whilst the Complainant is not disclosed at this stage, one can only imagine that it is BlueScope (formerly a business group within BHP Billiton). They are an independent steel company publicly listed on the ASX.

• The Respondent appears to be a fencing contractor – the domain names above all resolve to his businesses.

I’m not going to make any comment on the case given that is currently under determination.

However, what I will say is that if you do a trade mark search, BlueScope appears to have 22 trademarks with the main word being “Colorbond”. As you will see from the image below, the first was registered as far back as 1977.

I will report back when there is a determination.

Ned O’Meara – 25th July 2016