Realestate.com.au takes legal action against Realestate1.com.au

We all remember a few years back where we broke the story about realestate.com.au attempting to trademark the name “Real Estate”. Well now it seems they are to flex their muscle with this trademark against the similarly named Realestate1.com.au

Leaving aside the fact that only a simpleton would think they were owned by the same company and also leaving aside your impressions of the services or practices of Realestate1.com.au this lawsuit stinks – stinks bad, real bad (Elaine – Seinfeld)

IP Australia clarified this position and realestate.com.au wanted to reassure everyone that they were all soft and cuddly on this issue. What is at stake here is anyones use of the word realestate in their domain name across Australia.

Realestate.com.au under our laws definitely has a right to protect its brand – even though I think (personal opinion) every single instance of trademarks and copyright laws only protects the powerful and as this TED.com video demonstrates that industries can still thrive without these protections.

However, unless this company acts in its delivery of services or in any manner as if it is in some way affiliated with REA this is just plain wrong and we all should defend the rights to have the common term realestate in any domain name we feel appropriate. We should not allow the will of the pen of realestate.com.au’s legal department to force us into defending the use of a word that is no one’s to won or defend.

Let us not forget that REA acquired this domain name when under MelbourneIT’s rules (they were the monopoly registrar back then) you were not allowed to register common names like this, but that didn’t stop News Ltd and other big organizations slipping through with domains like news.com.au. For everyday folks like us, it was impossible to register these common names.

If Realestate1.com.au have done something wrong then REA have their right to take action, but this sets down a frightening precedent for all of us.

Smells bad, real bad!

REA, Realestate.com.au, Realestate1.com.au

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About Peter J Ricci

Peter Ricci is the Director of Agentpoint.com.au, Business2.com.au, Ginga.com.au and ZooProperty.com and has been involved in designing and developing real estate systems and websites since 1997. In July 2001 Peter founded Business2.com.au to help real estate agents better understand the power of the Internet and the real estate landscape in Australia and New Zealand. Since then he has penned over 300 articles on a variety of subjects in the real estate technology industry. Business2.com.au is now the leading real estate technology site in Australasia.

44 Responses to Realestate.com.au takes legal action against Realestate1.com.au

  1. Greg Vincent November 13, 2010 at 12:39 am #

    I think we can all understand that REA want to protect their brand but for heavens sake when I received the email about this post I thought it was a joke and expected that it might have been a post from our dear friend Sir Les Flatulence.

    As if this company is going to be a threat.

    REA have more important things to deal with than law suits against realestate1.com.au.

    If I register realestate2.com.au and then you register realestate3.com.au and so on will they keep sueing us all until we get to realestate.com.au9999999.com.au?

    Surely, agents and their share holders would see this as a complete waste of money. As you said the PR around the whole thing smells bad.

  2. Glenn Batten November 13, 2010 at 1:33 am #

    They are clutching at straws if they think this is a dilution of their brand and why they are losing some of their grip on the industry. As 2011 budgets are being finalised there is set to be some major crossing out of REA addons.

    Nobody was happy with the prices rises under Simon but at least they were based in some sort of reality as since he has left the numbers have been crazy. Now we hear different pricing models are being reconsidered to extract that higher “share of wallet”.

    Agents are being told that the base subscription should be considered as a “platform fee” as the base cost to be a part of the site and then there should be an extra cost per property.

    There are literally hundreds of agents out there starting to seriously question why since the relaunch that Domain’s traffic and enquiries has increased and realestate.com.au’s has dropped. In fact in one example I know of in a traditional Realestate.com.au heartland Domain basic subscription is now delivering more than a premium realestate.com.au subscription that is also loaded with extra pickles, cheese and fries. The turnaround started the very day of the relaunch and has never halted.

    IMHO Realestate.com.au need to start looking within rather quickly. There are some very big spending realestate.com.au clients who are conducting value assessments right now on what they are offering. Their recent prices rises have not won them any fans and now there are rumours that the next price rise will be the biggest one yet by a long margin.

    My prediction is that video, individual property websites, social media, blogging, facebook ads and google ads will see a higher share of agents dollars at REA’s expense as will Domain.

  3. Vic November 13, 2010 at 2:59 am #

    realestate7.com.au is available for sale. Anyone want to buy it?

  4. James November 13, 2010 at 6:11 am #

    In a couple of years we will look back at the day that REA launched their new platform as the day the business lost its way and started its gradual decent from market dominance.

    It can only get tougher for management. The share price demands massive increases in profit from the business and with only the Australian business left, there is really no choice but to ramp up the prices from its core customer base – the real estate agent.

    The problem is, the performance of the site is decreasing not increasing … just ask any agent out there.

    Therefore … we will mark the launch of the new US built site as the day in which things went south.

    PS … heard they fired a whole bunch of Australian developers this week … I wonder if anyone who actually built the site lives in Australia?

    James

  5. Robert Simeon November 13, 2010 at 9:09 am #

    REA have been absolutely and comprehensively smashed by Domain in Sydney metropolitan areas. We are lucky if we get five (that is high) online enquiries each month. It is a business going backwards and I would love a buck everytime when someone asked me what has happened to them – they have simply lost consumer relevance.

  6. Stu November 13, 2010 at 10:26 am #

    I have no love for REA at all, they have lost the plot in many ways. But this argument over the actual trademark ownership is not so much about the generic implications given realestateview.com.au is a clear example of a high profile competitor whose brand incorporates the base framework of the trademark, its about fair protection of a trademark that rightly or wrongly REA owns. The industry should be kicking itself for supporting the website for 10 years to make it the number 1 website in the market, but aside from that, trademark protection again, rightly or wrongly, is in place to protect all business owners. Unfortunately for realestate1.com.au, they have pretty much copied everything REA has done and then traded off it. Give you an example. The so-called commercial website they run in parallel was called realcommercial1.com.au. If they were so adamant about their position, why have they re-branded this website realestate1comnmercial? Doesn’t make sense. But the crux of the matter is you simply can’t copy a direct competitor and compete directly with them in the same market and expect this to be considered fair. It would be the same if I decided to get into real estate as an agent and called myself Barry Plant 1, and copied their products, services etc. Would Barry Plant have an issue with this? Would it cause confusion in the market (no doubt small when I started)? This isn’t about the ownership of the term realestate or real estate, because REA doesn’t own them nor does it claim to. It owns realestate.com.au and that, rightly or wrongly, is the issue. Remembering that without real estate agents, REA doesn’t exist so you can pretty much assume this issue won’t go much further than these start ups who thought they could get a free ride on the back of REA’s investment. Fair competition absolutely. But with some integrity and professionalism please. No good beating the leader if you do it by cheating.

  7. Russell Robertson November 13, 2010 at 10:28 am #

    I agree that this is a case of David v Goliath and trust that the authorities see sense and throw this matter out of court .
    As the owner of http://www.realestatecommercial.com.au I recived a fax a few weeks ago from RealCommercial demanding that I remove my claim of Australia No1 commercial address from my website as they stated that they were the No1 property site.
    I politely refused and informed them that we did not clain to be the No 1 propery address only the No 1 commercial address, maybe our 300% increase in traffic in the last quarter does not please them.
    Most people see realestatecommercial as a better address than realcommercial.
    Have not head back form them.

  8. Peter Mericka November 13, 2010 at 10:37 am #

    Realestate1 today, Realestateview next?

  9. Michael November 13, 2010 at 11:04 am #

    I can’t believe that someone would spend energy on suing someone who is not threat. Spend that energy on providing quality service to agents!
    Also I think it is completely stupid try to trademark word “real estate”. Let’s hope they won’t be successful.

  10. Vic November 13, 2010 at 1:36 pm #

    Does anyone own the words real estate or can anyone register this as a trade mark? Has REA managed to register this as a trade name.

    A couple of interesting observations:

    – There is no definition of Real Estate in REIA glossary of terms. In fact it is rather confusing that under the word “Realty” it says – see Real Estate. However there is no Real Estate word in their glossary.
    – realestate1.com.au is a free to list site and seemingly it’s financial objective is quite different to REA
    – there are numerous portal sites including the words Real Estate. The most obvious is realestateview.com.au, and its financial objectives are “similar” to REA and they definitely set themselves up to compete head on with REA.
    – realestateview is the representative (so called) portal for real estate agents of Australia. It really is the threat to REA. So I ask the question: why did REA not take on this crowd? Could it be that they feared the backlash from their client base who are all real estate agents connected indirectly to realestateview?

    REA are going to feel significant backlash with this action whether they win or lose. Realestateview stand to become the winner- they must be salivating.

  11. JT November 13, 2010 at 2:21 pm #

    Is realEstate1 trademarked? It sure is.
    As I see it there is absolutely no confusion between the 2 websites.

  12. Chris November 13, 2010 at 3:33 pm #

    These guys have been around for a while.

    A deal was done by the previous management at REA with realestate1 and it was quite simple.

    They put a note at the bottom of their page saying that they were not in anyway associated with realestate.com.au.

    Simple solution. Case closed. We move one.

    But no! instead why not sue a tiny minnow of no real competitive relevance?!

    REA is in decline. It’s a case of not if, but when.

  13. Mac November 14, 2010 at 8:06 pm #

    Ha ha ha! Let’s really muddy the waters as success here by Realestate.com.au might open a Pandora’s box of un-needed repercussions.

    Realestate.com.au got around the MelbIT rules at the time by being one of the 1st to register their Co. name as Realestate.com.au Pty Ltd. so they could register a name the same as their Co. name, despite it still being against the naming rules, as Peter says. [Perhaps legal ramification No.1]

    FYI, Realestateview.com.au took this lead and later did this in an attempt to get around the fact that the founders of the first national property portal in Australia still own(ed) RealestateView Pty Ltd!! (Why they would start a new company using an encumbered name was always beyond me!) This was way before Realestate.com.au came along, and they migrated it to the Web on the launch of the Netscape browser. It was originally called REView.com.au along with its extended name, “RealEstate View” so people would understand what it meant. This means ‘Realestate’ had already been in use as a trade name in the online World well before Realestate.com.au was even a twinkle in the eyes of its original (copy-cat) developers. REView.com.au was owned by RealestateView Pty Ltd. and done through a joint venture with the REIV who assisted in aggregating the other REI’s. However, Realestateview was always and still is according to my research, a non-REIV affiliated privately-held company. My educated information is that Realestateview should not legally have been allowed to ‘take-over’ that domain name simply because they added a .com.au to their Pty Ltd name and are marketing a brand that is still in jeopardy at the whim of the original Pty Ltd owners [Subsequent legal ramification No. 2] ๐Ÿ™‚
    So, if Realestate.com.au does/has in fact opened this box, it seems that Realestateview.com.au will certainly be implicated as you would think that no stone will remain unturned by either party in such a battle. And if this is the case, then Realestateview.com.au and its members will be very unhappy Little Vegemites as the Realestateview Pty Ltd owners might be forced to defend their honour which they have been sitting on for a long time. I would think this could lead in turn to some serious repercussions for REA in terms of agents who just turn them off in a manner akin to the way the Argus newspaper was turned-off by agents who left to populate the classifieds of the at time, non-entity of The Age. The rest is history.

    Phew! That’s some pretty old dust in that attic!
    Told you I was old
    Sal ๐Ÿ™‚

  14. Nick November 15, 2010 at 9:57 am #

    Next News.com.au will try suing Channel Ten News for having ‘News’ in their name.

    Its impossible to accidentally make a typo to get there, when pronounced it sounds very different and difficult to confuse the two brands.

    RealEstate.com.au has a fight on their hands if they have any chance of winning. Of course perhaps their intention is just to make RealEstate1 go bankrupt?

  15. Trish November 15, 2010 at 11:52 am #

    I completely agree with Stu. Any of you would take action if someone did the same to your business. (I would hope anyway).

    This is not a case of David and Goliath this is a simply matter of a trade mark issue that you all should keep an eye out for with your own business.

    How many of you Google yourself, your business and certain key words to see what people are saying about you? This should also be a standard part of every business owners weekly practice.

    There is one senior franchise manager at the moment who keeps getting public comments about them on twitter directed specifically at their @name and I am sure is completely unaware of it.

    Good practice just like realestate.com.au have obviously done it to protect your name and your business! You cannot tell me that realestate1.com.au were unaware that this would cause problems going into it.

    I am sure that most people would agree that we can’t go out and start a coffee business called Gloria Joans and believe we would get away with that.

  16. Stu November 15, 2010 at 12:26 pm #

    I think the matter is pretty clear cut. And by talking about it more, we just give more coverage to both of these guys. One too big for their boots; the other too small to know how to run a business. Next.

  17. Glenn Rogers November 15, 2010 at 3:16 pm #

    It’s bullying pure and simple.

  18. Glenn Rogers November 15, 2010 at 3:20 pm #

    Just noticed this on their site – why would you need to say that at all ? Perhaps this triggered the REA response which I would understand.

  19. Glenn Rogers November 15, 2010 at 3:28 pm #

    Just noticed this on their site – why would you need to say that at all ? Perhaps this triggered the REA response which I would understand.
    They are admitting they might be mistaken for REA (which they wouldn’t ), but they are begging the question and REA has taken a bite back, I probably would too.

  20. Glenn Rogers November 15, 2010 at 3:33 pm #

    Ok and just noticed their blog – ho hum

    http://www.realestate1.com.au/blog/?cat=3

  21. Stu November 15, 2010 at 4:53 pm #

    Just saw their blog as well. Stinks a little bit of a setup here to get some free publicity. The fist in the air pumping the “real estate fight” is enough to make me gag. I’m over it already. Out

  22. Glenn Rogers November 15, 2010 at 5:06 pm #

    Their disclaimer seems to invite trouble, no further interest here either.

  23. Vic November 17, 2010 at 7:40 am #

    Contrary to the comments that this not worth bringing publicity to both parties involved, it is worth trying to figure out REA’s motivation for this action.

    Realestate1 is not a threat to them- I think all agree with this- so what is the motivation????

    Motherhood statements on protection of trade name, principles etc do not fit this bill, there is something sinister happening here.

  24. Paddy November 17, 2010 at 3:25 pm #

    This appears to be nothing more than brand protection judging by the comments by real-estate.com.au on another blog site.

  25. Robert Simeon November 17, 2010 at 3:47 pm #

    Paddy,

    I doubt REA would take on http://www.reelestate.com.au as they are not in a position that could see hundreds of offices leave their portal as it appears their agent popularity is at an all time low.

    I agree with you where plenty of sites are leveraging and running on the coat tails of the popular URLs however, given the longevity of these sites new visitors would not be of enormous proportion given the strength of the respective brands.

    Having said that it is important to have a current registration of trade mark – for example we own Virtual Realty News and I’m very protective of that name where frequently I search Google for industry copycats.

    None the less it will be interesting to watch with interest.

  26. Stu November 17, 2010 at 7:17 pm #

    Just did a little more digging on the ASSOB website (the guys trying to raise capital for realestate1.com.au) and I’m a little curious about some of the numbers and statements made (apparently to comply with ASIC rules). When you take a close look at the Offer Document it makes some pretty outrageous claims that I hope they can back up because if they have misled investors (and there appears to be only $350k out of a target $1,2m as they state) then I’d say the Annual General Meeting, financial audit and Directors Statements are going to attract some interest from the regulators. And am I wrong here looking at the directors of the company to see they all appear related? Not saying there’s anything wrong with that, but its not unusual for conflicts of interest and inappropriate dealings to be undertaken in these circumstances. Especially when you’re the so-called Managing Director and your wife is a Director along with (correct me if I’m wrong here) two children who are Directors also? But the funny one is reading through their online real estate website experience. Doesn’t look like there’s anyone there who knows what their doing or at the very least, has never done it before. Again, not saying this is a bad thing and good on them for having a go, but maybe not by trying to rip off the number one website in the market; copy what they do; sell it to the same market and then cry when they get whacked with legal action. Sack the Board first and give the website a new brand so they can really take advantage of any disgruntled agents out their. But it may be too late now.

  27. Susan Realty November 17, 2010 at 9:41 pm #

    One has to question…..
    Why REA has to tell us they are market leaders.
    They are not the market leaders or number one website.
    It is clear to see with one glass eye and the other stuffed with rags that REA is desperate and drowning…….yeh!

  28. Brock November 17, 2010 at 10:25 pm #

    Stu seems like you’re going to great lengths to discredit realestate1. Are you sure your not gunning for a job in the REA legal department?

  29. Vic November 18, 2010 at 9:07 am #

    Stu,

    Whilst you have made some very good points you seem to be wanting to put on the agenda some personal attacks on the integrity and management ability of the directors and family of realestate1.com.au. Commenting in this way behind anonymity is not worthy of being taken seriously.

    This blogg is meant to be on the broader picture of the implications of a court ruling that would set a precedent regarding ownership of common names.

    Domain names are still available, for sale, which include “real estate”. ASIC still permits registrations of this common name in company incorporations, state registrars still permit registrations, trade marks with this name are still permitted to be registered and search engines will accept new “real estate” domain names for registration.

    Notwithstanding that realestate1 may have taken the opportunity to gain traffic mileage from the use of the common words “real estate”, their model is nothing like REA, their look and functions are nothing like REA and they were allowed within the laws to operate their business using “realestate1”.

    Our own traffic has increased markedly since building the words real estate into our SEO. Will this be the next implication- All uses of the word Real estate will not be permitted ?

    Realestateview is the real threat to REA- but to take them on directly would be a huge strategic mistake by REA. So take on the sprat and get the precedent for far less cost and repercussion.

  30. Stu November 18, 2010 at 9:31 am #

    Vic, gotta question whether you have a vested interest in all this or not. Said before, there are more important things going on in the world. And if REA thinks this is a precursor to setting a precedent to own the term or name or mark “realestate” (not “real estate” as some have suggested and there is a massive difference here) – then you all need a course in Trademark 101. As for me, I’ll take a good hard look at buymyplace, milliondollarproperty and any other niche website if you like. They just weren’t careless enough to blatantly go out and try and make a quid from an established player. All the conspiracy theories in the world can’t get around the fact its a clear breach and they will no doubt pay for it. I’m not saying this is necessarily a good thing, and all must remain vigilant for any attempt to acquire a foothold on this generic term. But this fight isn’t the one. Get over it

  31. Vic November 18, 2010 at 9:49 am #

    Stu,
    No vested interests here.

    Your’e still hiding behind anonymity and you haven’t explained: why the attacks on realestate1’s management and personal integrity?

    Until you declare your own interests you will be seen as someone who has a personal axe to grind.

  32. Sarah November 18, 2010 at 11:30 am #

    I’m with Brock and Vic on this one, discrediting the management and integrity of realestate1 is all I get from Stu’s comments and I wonder what his agenda in all of this- definitely a personal axe to grind. *No longer interested in his comments*

    Good luck with your fight realestate1, I for one am all for fair competition and REA have never played fair. It’s about time someone showed them what good “sportsmanship” is all about.

  33. Ricky November 18, 2010 at 11:37 am #

    I don’t know what the legal coffers are like at realestate1.com.au but they are deep at REA and they will rightly or wrongly pursue this to ensure they win.

    If REA succeed and also claim costs then realestate1.com.au could find their stoush places them in a situation they really don’t want to be in being broke.

    REA plays the school yard bully card when it has to be it a legal, marketing or sales threat. The original My Home entrance to market a few years back was met with a very aggressive and negative campaign that assisted in blunting that competitor. When you deal with a News Ltd backed Board & Management team “you mess with the bull you get the horns”.

  34. Peter Ricci November 18, 2010 at 12:10 pm #

    The point of the article was to highlight REA’s agression with a name that is and has been used widely across the industry for many decades.

    If however a website had a similar name and a similar setup and tried to create a business off that, then there would be cause for concern – legal action no.

    In the web design industry, if someone rips off your design it is considered a ‘fail’ and derided, but legal action is rarely used and only ever by larger entities.

  35. Glenn Rogers November 21, 2010 at 5:05 pm #

    You cannot claim copyright over a generic name like real estate – end of story.

  36. Robert Simeon November 22, 2010 at 10:01 am #

    I agree about the generic name and it should be noted that this is not the first time (without success) that REA has headed down this track. It is just a waste of time, energy and funds that will achieve very little (again) one would expect – especially when one considers that REA is not even twenty years old!

    Hardly a convincing argument one would presume!

  37. Glenn Rogers November 22, 2010 at 11:50 am #

    They would be far better served registering all the real estate domain names they can get their hands on, if they haven’t done that already they’re not doing their job.
    Perhaps they just don’t understand the Internet, maybe that got lost while they were concentrating on other areas – I’m serious there.

  38. Glenn Rogers November 22, 2010 at 1:01 pm #

    Clarification – by “other areas” I mean concentratng on getting agents onboard, other advertsing etc not the core business of the phyical web site, protecting themselves by registering other like domain names etc……

  39. Vic November 23, 2010 at 6:36 pm #

    Isn’t REA’s action about trademark, not copyright? REA has managed to register their trade name as a trademark, and it didn’t include the numeral “1” in it. So, the trade mark is different, the logo is different and the look of the site is different.

    Alexa rankings has realestate1 at 20,000th in Australia against 20th for REA.

    Another moot point. If REA is trying to protect it’s brand by suggesting the copycats are muscling in on its trademark then they are chasing the wrong tail. Just google “real estate” and you wont find realestate1.com.au coming up on either first or second search page. But you will find:

    – realestate.ozfreeonline
    – real-estate-australia.com.au
    – fastrealestate.com.au
    – realestateview.com.au
    -domain.com.au

    So why REA’s paranoia with the realestate1 sprat, they don’t feature? (no offence meant to the rea1 team).

    One for STU to answer:)

  40. James November 23, 2010 at 7:45 pm #

    Inside information has it that REA has allocated $1m for this action … seems a ridiculous waste of shareholder’s money. As to why they are doing it? Ego is also the rumour.

    The funny thing is realestate1 has been around for ages, so why did realestate.com.au take up the matter now? Especially since it is an irrelevant player. Perhaps they are trying to distract everyone from looking at something else?

    Management should spend more time focusing on the real issue – why is domain driving far more leads than REA in NSW? Then again, perhaps management doesnt really know it has a problem with the business.

    Sounds like $11.50 as a share price is a good price if you are selling.

  41. freelancer.com.au December 10, 2010 at 9:40 pm #

    REA have more important things to deal with than law suits against realestate1.com.au.

  42. Vic January 24, 2011 at 3:47 pm #

    Hey Peter

    Any news on the case?

  43. Peter S June 7, 2013 at 11:41 pm #

    The REA vs RE1 lawsuit judgement is out. The judge dismissed REA’s claim that RE1 was misleading and deceptive and dismissed REA’s claim that RE1 was “passing off” its business as being associated with REA. Surprisingly, however, the judge found that RE1 did infringe REA’s http://www.realestate.com.au trademark.

    Here is a link to the Federal Court Judgement.
    http://www.judgments.fedcourt.gov.au/judgments/Judgments/fca/single/2013/2013fca0559

  44. Insider June 8, 2013 at 8:47 am #

    The judgement has been handed down and realestate1 has been found to have infringed the REA traddemarks.

    Justce bromberg said “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 REAโ€™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.”

    Read it all here
    http://www.judgments.fedcourt.gov.au/judgments/Judgments/fca/single/2013/2013fca0559

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