Tress Cox - How to protect a name being used as a domain name
Jennifer Huby of Tress Cox shares her experience in acting for Tina Arena and proceedings commenced under the AUDA Policy to secure the domain name tinaarena.com.au registered by another person allegedly in bad faith.
The domain name tinaarena.com.au had been registered by Tina Arena (or her agents) for approximately 10 years and was being diverted to her official fan website at tinaarena.com. However, during a brief lapse in registration, the tinaarena.com.au was registered by Enigmatic Minds Pty Ltd, which intended to offer goods and services relating to Tina Arena through its website.
Jennifer Huby reports that the key findings of the case were that:
- ‘Tina Arena’ was a common law trade mark as Tina Arena had developed substantial goodwill in her name through its use in the entertainment industry over the past 30 years.
- Enigmatic Minds had no rights or legitimate interests in the tinaarena.com.au domain name (Tina Arena had not authorised Enigmatic Minds to register the domain name) and it had full knowledge of Tina Arena’s international fame
- Enigmatic Minds had registered the domain name in bad faith (primarily for the purpose of selling the Domain Name for valuable consideration in excess of out-of-pocket expenses and intended use of the Domain Name would cause confusion amongst internet users searching for Tina Arena on the internet)
- Enigmatic Minds sought to rely on the goodwill that Tina Arena had built up in her name over the last 30 years in order to generate future profit