Trademark Query?

[Hotchook]

I am currently writing an investigative report in relation to the Australian Government being involved in trademark fraud from 1995 through 2002 and would really appreciate some feedback on this particular scenario.

Currently the domain name aussiesport.com is for sale on Domain Deluxe and the domain name aussiesport.net is for sale on Sedo, both without content.

Nothing out of the ordinary, until I explain that these domain names were used to promote a program in Australia called Aussiesport. The program was initiated by the Australian Federal Government and administered through The Australian Institute of Sport, and ended up costing the Australian taxpayer $1,116 million dollars. The AIS registered Aussiesport as a trademark, No. 671429 and this registration expires on 01-SEP-2005.

When I contacted the AIS by E-mail, they stated that they were aware that the said domain names were for sale, but insisted that the trademark ownership of Aussiesport would remain with them.They refused to comment on whether they were still the owners of the domain names.

My query is "Would the potential buyer of said domain names be open to litigation by the AIS in relation to the use of these names, especially if they were to be used under Section 16, the section this Australian trademark protects."

My other query is whether it is legal for a trademark holder to dispose of their domain names, whilst still retaining trademark rights?

Any feedback would be appreciated.Thanks

 

[domainlab]

It's a very interesting point here. IP rights are stand alone rights and the proprietor of those rights can sue anyone at anytime who infringes those rights.

I suppose it's too easy just to check the WHOIS of the domain to see if it's the government who own the domains.

As for suing the new owner of the domains having sold them, I guess the easiest way to avoid this is for the new owner to get the previous owner to sign something to say they won't sue except for direct infringement of their TM (assuming they are all in the same ownership of course). Does the TM have any rights worth protecting if it was the subject of a national fiasco?

One extra thought - if the TM goes unused for 5 years then may be revoked for non use - is it being used at the moment in a TM sense?

If you wanted the domains, offer money for the TM as well and cover yourself.

 

[Hotchook]

I suppose it's too easy just to check the WHOIS of the domain to see if it's the government who own the domains

I looked up both domains, but true ownership is being masked by the 2 companies selling them.

One extra thought - if the TM goes unused for 5 years then may be revoked for non use - is it being used at the moment in a TM sense?

Aussiesport is currently implemented in 98% of public schools in Australia. The trademark is also still used on Australian TV promoting a show called Goodsports.

If you wanted the domains, offer money for the TM as well and cover yourself

They have made it clear that the TM is not for sale. Besides, aussiesport.org/info/biz are all still unregistered.

 

[domainlab]

What would you be using the domain for if you were to buy it? Would you be doing something similar to the TM use of the name? If not then the name is sufficiently generic not to attract attention from the TM holder. Thinking about this further it would be very bad faith if it is owned by the government for them to sell it to someone and then sue them as a result.

Good luck