Anita Brown, Phillips Ormonde Fitzpatrick
A recent court case has considered the circumstances when use of a domain name will constitute trade mark use.
In Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700, the Federal Court found that such use will occur where a website domain name featuring an infringing trade mark is used to channel customers to a second website, exploiting the goodwill established in the initial trade mark.
Solarhut started selling photovoltaic systems through the website www.solarhut.com.au and under the name Solarhut. After pressure from Solahart Industries, the owner of the Solahart trade mark, Solarhut stopped selling and advertising these systems on www.solarhut.com.au but instead operated the business through the website www.sunsavers.com.au under the name Sunsavers. The business had operated under the Solarhut name for five months.
Despite its abandonment of the name Solarhut, Solarhut maintained the URL www.solarhut.com.au. When an internet user accessed this URL, he or she would be redirected to the Sunsavers website where the photovoltaic systems were offered for sale under the name Sunsavers.
Solahart alleged that the advertising of products by reference to the trade mark Solarhut and the invitation to consumers to visit the website www.solarhut.com.au, where goods were available for purchase under the name Solarhut amounted to an infringement of the Solahart registration.
Not surprisingly, use of the domain name www.solarhut.com.au in connection with the business conducted under the name Solarhut was found to have infringed the Solahart trade mark in the same way that use of a sign on a shopfront could constitute trade mark infringement.
Solahart also alleged the maintenance of the domain name www.solarhut.com.au, containing the infringing Solarhut trade mark, and the channelling of consumers to the Sunsavers website, where photovoltaic systems were sold under the name Sunsavers, was a use of a trade mark and infringed its Solahart mark.
The court did not accept Solarhut’s claim that the continuing link from the www.solarhut.com.au domain name to the Sunsavers website was accidental. The court drew the inference that the domain name www.solarhut.com.au was maintained to exploit the goodwill built up in the name, during the five-month period it was used by the business, so as to direct traffic to the Sunsavers’ website. At the Sunsavers’ site, goods identical to those which had been sold through the Solarhut website were available and the purpose of the maintenance of the www.solarhut.com.au URL was to drive sales at the Sunsavers’ site. The use of the Solarhut trade mark in this way and for this purpose was found to be a use of a trade mark and to infringe the Solahart mark.
After the domain name www.solarhut.com.au was removed, remnants of the site were still available as links appearing in internet searches. However the court did not consider this to constitute trade mark use.
This case may signal an expansion of the circumstances where a court is prepared to find use of a domain name constitutes trade mark infringement.