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Please Help Me Understand!

mocha

Member
I have been planning to start an online project for Australian users since last August 2023. I used a name suggestion tool to choose a name that sounds reasonable for the project. Let's call it for example, BIZNAME.

The IP Australia and the business name search tools showed that the name was available to register. Domain name search showed that many domain names including the .com and .com.au (the owner of the com.au seems to be a domaining company) were already registered.

The following is what I did:

1. I submitted a trademark application to IP Australia for 'BIZNAME';
2. I registered the Australian business name 'BIZNAME';
3. I registered the direct .au domain name ''BIZNAME.AU'.

I received an Adverse Report from IP Australia because the BIZNAME was similar to another trademark that was registered by an Australian organisation. This prompt me to abondone the intention of using that name for my project. Few weeks later I submitted a withdrawal form to IP Australia and forgot about it. However, it was the wrong form as I later learned.

More than 4 months later, I received a letter of demand from an Australian lawyer acting on behalf of the owner of 'BIZNAME.COM' (An American). It seemed that they also submitted a trademark application to IP Australia few months after my application. They demanded that I withdraw my trademark application and also cancel the business name. This lawyer letter only brought to my attention that I submitted the wrong withdrawal form to IP Australia, so I resubmitted the correct form and withdraw my application.

This was not enough. Weeks later, the same lawyer send another letter demanding that I cancel the business name which I did as I didn't need it.

Their latest demand is that I sign an undertaking to not use the name again and also tell them which Australian domain name did I register and to transfer it to them on my own cost.

The registrant information of any Australian domain name are readily available on WHOIS. So, how a legal firm who deals with intellectual property issues don't know how to use Whois tool?!

Do I have to transfer the domain name to them on my cost?
 

mocha

Member
Thank you Joel.

I honestly feel that I am being bullied by this legal firm. I have never used the 'BIZNAME' in any ways except applying for a trademark and registering the business and domain names (direct .au).

However, I don't have the financial mean to hire a lawyer.

It was easy to cancel the business name and the IP Australia application. So I did that. But it seems that by doing so my have sent a signal to these people that I can easily be bullied into transferring my domain name to them at my own cost.
 

trellian

Top Contributor
if you no longer have the entity that was used to register the domain, they can easily submit a complaint with the Registrar to have the domain deleted. So there will be no cost to you.

if they want you to transfer the domain, you can easily ask to have your costs reimbursed as they save time and $ in trying to have the domain deleted.
 

TroyW

Top Contributor
Sorry I'm late to this one. Why wasn't your registered business name enough to cause their application to be refused? I'm guessing they've got the registration through with the help of a graphic logo or similar, which would have been enough difference for the Trademark examiner to determine there wasn't an issue.
 

helloworld

Top Contributor
Contact the domain registrar and ask them to delete the domain. I have done this with Synergy before. Hopefully someone else who has a right to it buys it and they can rack off
 

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