NSW Cease and Desist Letter for Domain Name?

[Mark Johnson]

Hi there,

To cut to the chase, we are in the following situation and require help:

1) We create a domain X that gained lots of popularity and media traction in NSW

2) A company based in Victoria (never traded in NSW) then registered our domain as their business name and sent us a cease and desist letter. We have clear evidence of domain registration, social media creation and promotion all months before they registered the name.

3) We did not respond to their letter and they have now approached the Victorian Small Business Commissioner with a complaint.

Please can someone help here on our grounds and rights? We have a trademark pending on our domain name also.

As far as we are concerned they have piggy backed off our success and have tried to shut us down, plus unless the name is trademarked then they have no ownership entitlement to that name?

They do run a similar business in Melbourne as reference.

Look forward to the replies please

 

[Mark Johnson]

Hi Kim, sorry cannot see your reply?

 

[Kim Walters]

Hi Mark

If you have received a Cease and Desist letter, the allegations in the letter need to be carefully considered as to whether the legal grounds or the basis of the allegations are legitimate.

You need to examine whether the claims in such a letter meet the grounds for infringement or whether the letter constitutes a "groundless threat" which is actionable under Australian law.

Therefore, it is important to work out whether there has actually been a legal infringement, evaluating each claim in the letter, including for any misrepresentations or "bluffing" by the other side.

Please note that a trade mark gives legal ownership to a name, not a domain or a business name.

A domain registration is essentially a licence to use an IP address and identifies an IP address. A business name is used to identify a business (not a product or service).

Only a registered trade mark enjoys the protection of the Trade Marks Act, giving you an exclusive right to use the brand name (in most cases throughout Australia) in connection with the goods or services claimed under the trade mark.

The recipient of a Cease and Desist letter should respond with the assistance of a professional to address the concerns raised in a Cease and Desist letter.

This is because IP issues can be complex or quite technical, and you wish to respond correctly at law, preferably with a defence if this is available.

 

[Kim Walters]

Hi Mark

There might be a "bug" here. I have reposted and hope this is of assistance.

Kim

 

[Mark Johnson]

Hi Mark

There might be a "bug" here. I have reposted and hope this is of assistance.

Kim

Thanks Kim, appreciate your help here. Does the Victorian Small Business Commission arbitratian service hold any weight here in NSW?

 

[Kim Walters]

Hi Mark

You are very welcome.

It is probably best to call them directly to ask as I am not aware of the detail of the complaint. You could also inform them as to your rights in the trade mark and how that that would affect the complaint.