Written on the 13 March 2015 by Jenna Rathbone


TRAGEDIES such as the disappearance of the MH370 Malaysian Airlines flight, the 2014 Paris terror attacks and the MH17 plane crash which killed 298 passengers and crew on board are being turned into money makers by 'trade mark trolls'. 

This involves people grabbing contentious issues from the news and creating internet domain names or trade marking words or phrases to make a dollar.

But Brisbane intellectual property lawyer Nicole Murdoch (pictured below) is combating this issue and has been appointed as a 2015 names panellist of the .au Domain Administration (auDA) - a nationwide policy authority and industry self-regulatory body for the internet .au domain space.

Murdoch is the only practising Queensland lawyer on the panel, which considers topics such as the policy framework for the allocation and use of domain names and makes recommendations to the governing board.

"One of the things we see within the domain name industry are moves by some opportunists to grab contentious issues from the news, register an internet domain name from it then sell the domain or use it as a money maker," says Murdoch, a senior associate with Brisbane firm Bennett and Philp Lawyers.

"Entitlement rules apply to the registration of domain names within the .au domain space and so, whilst opportunists can register domain names for the purpose of making money, they may lack entitlement to the domain name.

"There is nothing wrong with reserving the ebola.com.au domain name and selling a prepping health kit so consumers can protect themselves.

"But when people adopt a name for the purpose of monetisation that is treading on other people's rights they start to get into trouble."

The auDA can cancel the licence to the domain name if people are found to be in breach of the monetisation rules and don't otherwise have entitlement.

Murdoch adds that, in Britain, registering web domain names and then selling them, which is known as "flipping", is a common practice.

"I'm aware of a report from last year of a person who registered a domain address for the missing MH370 Malaysian Airlines flight, then tried to sell it on eBay for $US5000," she says.

Under the auDA Domain Name Eligibility and Allocation Policy Rules for Open 2LDs, a registrant may not register a domain name for the sole purpose of resale or transfer to another entity.

On the wider issue of intellectual property, people are also trying to cash in on headline events by trade marking words or phrases.

In January, a Melbourne family trust tried to cash in on the Paris terror attacks by applying to trade mark the phrases "Charlie Hebdo" and "Je Suis Charlie" in Australia.

Melbourne media reported the claim for the phrase "Je Suis Charlie" covered electronic desktop publishing, magazine publishing, publishing by electronic means, publishing of books and publishing of printed matter. The "Charlie Hebdo" claim covered clothing, footwear and headgear.

"Those two trade mark applications were destined to fail as, given the wide-scale media attention of the Charlie Hebdo tragedy, the trade mark applications are challengeable on the basis that the trust was not the true owner of those trade marks," says Murdoch.

Both of those trade mark applications have now been withdrawn by the applicant.

In addition, last year a Malaysian company applied to IP Australia to register the trade mark "MH17" shortly after the Malaysia Airlines plane crashed in eastern Ukraine in July.

Murdoch says it's becoming increasingly common for people or businesses, called "trade mark trolls", to quickly lodge trade mark applications around tragic events such as plane crashes, terrorist attacks, or the death of a celebrity.

"Their strategy is usually to sit on the trade mark without intending to use it and then threaten to sue others who do. That technique is not always successful as trade marks, even though registered, can be challenged and can be removed from the trade marks register," she says.

"It's also common for trade mark applicants, when criticised for their trade mark applications, to state that they applied for the trade mark to protect it from abuse by others.  Cricket Australia recently filed trade mark applications for 63

Not Out and, at the time, media reports were published indicating that the trade mark applications were 'defensive'."

Defensive trade marks are registrable, however, under trade mark law, a defensive trade mark application can only be filed in cases where the applicant has a registered trade mark that is so well known for goods or services that its use by another trader would cause confusion. Evidence is required to support the application.

"In this case, there is no trade mark for 63 Not Out registered to Cricket Australia and a review of the trade marks register shows that the Cricket Australia did not file 'defensive' trade mark applications. That shows that Cricket Australia, despite what is reported by the media, intends to commercialise those trade marks."

Author: Jenna Rathbone
About: Jenna Rathbone is a Queensland-based journalist who writes on a range of issues including business and property affairs and social issues.
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