Domain Shield Pty Ltd - [2014] ATMO 30

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 1510454(35, 45) - DOMAIN SHIELD - in the name of Domain Shield Pty Ltd.

Delegate:

Iain Campbell Thompson

Representation:

Applicant: Erhan and Alkan Karabardak of Cooper Mills Lawyers

Decision:

2014 ATMO 30

Ex parte Hearing. Subsection 41(2): subsection 41(3) - Trade Mark has no inherent adaptation to distinguish and subsection 41(6) therefore applies; exclusion of impugned services from Application gives rise to ground under section 43.

Application rejected.

Background

Domain Shield Pty Ltd (‘the Applicant’) is the applicant[1] for registration under the Trade Marks Act 1995 of the trade mark which appears below:

Application No: 1510454

Priority Date: 24 August 2012

Services:Class 35: Providing information, including online, about advertising, business management and administration and office functions; discount services (retail, wholesale, or sales promotion services); presentation of goods on communication media, for retail purposes; retail services; retailing of goods (by any means)
Class 45: Compilation, creation and maintenance of a register of domain names; registration of domain names

Trade Mark: DOMAIN SHIELD

(‘the Trade Mark’)
[1] The Applicant was formerly Sarar Pty Ltd.

During examination the examiner reported that there are grounds for rejecting the application under section 41 of the Act in the following terms:
My research (examples attached) indicates that the expression DOMAIN SHIELD is commonly used to refer to a product that conceals or shields the personal details of a registrant which are usually publicly available with a registered domain name.
With the above in mind, your trade mark is not prima facie capable of distinguishing the claimed Class 35 retailing and presentation services. This is because it indicates that the retailing and presentation services are about or relate to DOMAIN SHIELD(S). Similarly, your trade mark is not prima facie capable of distinguishing the claimed Class 45 services because it indicates that the services involve or relate to the provision of DOMAIN SHIELD(S).
Other traders should be able to use DOMAIN SHIELD, or some mark so nearly resembling it, in connection with goods or services similar to yours.
The research enclosed with the Examiner’s First Report included the following:
2:44:23 PM]:
If you are worried about your private information being posted on the web then a much better alternative is to purchase a Domain Shield from the registrar (it’s sometimes known as ID Protect, Whois Privacy Protect or something similar, it depends on which domain registration company you are using). By paying an additional fee you can switch your whois info from Public to Private. This reduces the chances of someone stealing your identity and makes it harder for spam companies to add your email to their spam list.
2:45:56 PM]:
Getting British Business Online (Official Rep) over 3 years ago
On the WHOIS website they say that the domain name owner can opt out of WHOIS if the domain name is not trading. They say that the registrant (GBBO) has to initiate the opt-out.

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2014] ATMO 30
Decision Date: 7 April 2014

CaseChat Overview and Summary

Domain Shield Pty Ltd (the applicant) sought an interlocutory injunction against the respondent, Mr. Iain Campbell Thompson, to restrain him from continuing to use the domain name "domains.com.au". The applicant, a company involved in domain name registration and management, alleged that Mr. Thompson's use of the domain name constituted a breach of contract and was likely to cause confusion and damage to its business. The matter came before the Federal Court of Australia.

The primary legal issues before the Court were whether the applicant had established a strong prima facie case of breach of contract and whether the balance of convenience favoured the grant of an interlocutory injunction. Specifically, the Court had to consider the terms of an agreement between the parties concerning the domain name and the potential for irreparable harm to the applicant's reputation and business interests if the injunction was not granted.

The Court considered the evidence presented by both parties regarding the agreement and the use of the domain name. It applied principles of contract law to interpret the obligations of the parties under the agreement. The Court also considered the established legal tests for the grant of interlocutory injunctions, including the likelihood of success in the substantive proceedings and the potential for damage that could not be adequately compensated by an award of damages. The Court found that the applicant had demonstrated a strong prima facie case and that the balance of convenience favoured the grant of the injunction.

The Court ordered that Mr. Thompson be restrained from using the domain name "domains.com.au" pending the final determination of the proceedings.

Orders