101Domain, Inc v BB Online UK Ltd

This matter concerned a dispute between 101Domain, Inc. (the Opponent) and BB Online UK Ltd (the Holder) before Nicole Worth. Both parties operate online businesses providing domain name registration and related services. The Opponent, based in the USA, alleged it had used the trade mark "101Domain" since 1999, with its domain name "101domain.com" registered on 4 May 1999. The Holder, based in the UK, also provides similar services.

The court was required to determine whether the Opponent had established sufficient use of its trade mark "101Domain" in Australia to warrant protection under Australian trade mark law. This involved assessing the nature and extent of the Opponent's online activities and sales directed towards the Australian market, as well as its promotional efforts and participation in international industry events.

The court considered evidence of the Opponent's trade mark use, including its website display, email correspondence with Australian customers dating back to February 2000, and Google Analytics data showing Australia consistently in the top 10 countries for website traffic. Sales records and expenditure on global online advertising were also presented. The court noted that the Opponent's online business model meant its market was not geographically restricted, and that Australia represented a significant and growing customer base, contributing a not insignificant amount of revenue. The Opponent's membership in international trade mark organisations and exhibition at industry events further demonstrated its engagement with the global trade mark community.