REA Group wins trademark battle with realestate1.com.au and monopoly of online term ‘realestate”

Realestate.com.au and its publisher REA Group have won a long-running trademark dispute with alternative listings provider realEstate1 Pty Ltd, which trades as www.realestate1.com.au.

The ruling was made despite a federal court judge describing REA Group’s trademarking of the term 'realestate' combined with 'com.au' as both “troubling” and giving it a “monopoly” of the term where rivals seek to incorporate it in their domain name as they are "likely to be the most common terms on a search results page where a search has been conducted for a residential real estate portal".

That name realestate.com.au is the subject of three composite trademarks held by REA.

"It is troubling that terms that are highly descriptive of a particular area of commerce and which provide significant commercial advantage should not be readily available for use by all who seek to participate in that commerce," said Federal Court Justice Bromberg in his June 7 ruling.

"However, in the absence of a successful challenge to the registration of REA’s realestate.com.au trade marks, whilst that may be troubling, REA is nevertheless entitled to the protection of the monopoly which has been conferred upon it.”

It paves the way for other real estate portals that use the term 'realestate' and 'com.au' in their domain names to be pursued by the REA Group for trademark infringements.

Fairfax, the main rival to News Limited owned REA Group in the property listings space, currently operates the website www.commercialrealestate.com.au.

In making its claim, REA pleaded “that the domain name ‘realestate1.com.au’ is substantially identical or deceptively similar to the domain name ‘realestate.com.au’ and that the domain name ‘realcommercial1.com.au’ is substantially identical or deceptively similar to the domain name ‘realcommercial.com.au’".

Federal court justice Bromberg ruled that “by using the marks realestate1.com.au and realcommercial1.com.au, Real Estate 1 infringed REA’s trademarks in all but one of the different uses alleged by REA”.

Gold Coast real estate agent Glenn Batten, a contributing editor on real estate technology portal business2.com.au, writes that the lengthy judgement appears to have found that realestate1.com.au infringed on the trademark of realestate.com.au (use of similar domain and trading names by rival internet businesses) but have not breached the Trade Practices Act, having not passed themselves off as realestate.com.au.

“The REA Group has won the trademark section but not the Trade Practices section,” says Batten.

He highlighted this as the key paragraph in the judgement:

As my conclusions demonstrate, registration of REA’s realestate.com.au marks has effectively given REA a monopoly over two highly descriptive terms when used in combination. Those terms are likely to be the most common terms on a search results page where a search has been conducted for a residential real estate portal. The protection conferred by REA’s trade marks over the use of “realestate” and “.com.au” in combination, provides REA with a monopoly over the term “realestate” in circumstances where its rivals seeking also to use “realestate” or a close variant thereof as a second-level domain, do not forego the advantages of using “.com.au” in their domain names. The natural advantage of a domain name which incorporates “realestate” to the commercial success of property portals will be apparent from observations I have already made. There is also a natural advantage in the use of the suffix “.com.au”. It is troubling that terms that are highly descriptive of a particular area of commerce and which provide significant commercial advantage should not be readily available for use by all who seek to participate in that commerce. However, in the absence of a successful challenge to the registration of REA’s realestate.com.au trade marks, whilst that may be troubling, REA is nevertheless entitled to the protection of the monopoly which has been conferred upon it.”

Batten warned: “With this judgement under their belt it will be interesting to see who is next on REA’s hit list.  I am thinking that every other non-agency client of theirs using any domain with the term “realestate” and “.com.au” is in for a hard time in 2014.

The launch of realestate.com.au dates back to 1998 while launched its portal in 2005.

realEstate1 was set up by Geoffrey Luff, who has worked in and owned various real estate agencies in and around the Mornington Peninsula in Victoria.

“Damage was not the subject of the trial and may now need to be determined in a separate hearing. The form of the other relief sought by REA has not been the subject of submissions and the parties ought to be given the opportunity to make submissions in light of my findings,” said justice Bromberg.

Realestate1.com.au continues to trade as normal.

Larry Schlesinger

Larry Schlesinger

Larry Schlesinger was a property writer at Property Observer

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