Realestate.com.au vs Realestate1.com.au Judgement Is In

The judgement in the Federal Court of Australia matter for REA Group Ltd v Real Estate 1 Ltd has just been handed down.  Forget the parent companies, as this is about a battle of the websites www.realestate.com.au and www.realestate1.com.au and to a lesser extent www.realcommercial.com.au and www.realcommercial1.com.au.

Lets look at a little history first.  In 2005 the REA Group applied for the trademark of realestate.com.au. This trademark was approved in 2008 which Business2 covered in this article.

Concerns by the industry at the time focussed on realestate.com.au claim on the term “real estate” on the internet.  The industry outrage even triggered public responses by IP Australia and by the REA Group.

The response by IP Australia specifically stated “This type of conflict would be resolved by determining whether consumers are likely to be confused by the similarity in the respective terms. It would for instance be highly unlikely that the owner could prevent use of the term “real estate” by others”  but they also stated “IP Australia has no role in determining infringement matters. These are decided by the courts.”

So IP Australia thought that the trademark they approved could not be used to protect the words “realestate” and “.com.au” in a domain name.  Justice Bromberg in this decisions now claims that realestate.com.au now have a monopoloy on the terms, bu tmore on that later.

REA also responded to industry concern by a communication from the now ex-executive Shaun Di Gregario :

We are registering the trade mark ‘realestate.com.au’ not ‘real estate’ or any other version of those words.

This does not affect your ability to describe your business using terms like; ‘real estate’, or for example if your business was named ‘Richmond real estate’ or ‘Bobs real estate it would not stop you from using the domain names richmondrealestate.com.au or bobsrealestate.com.au.

Our concern with abcrealestate.com.au is that ‘abc’ is a generic name and doesn’t describe the business.

Even though they got named in the 2008 response on this issue abcrealestate.com.au is still in operation by ABC Photosigns.  I guess the connection to ABC Photosigns and the domain name abcrealestate.com.au was enough for the REA Group to move on and find another website to try and create a precedent in the courts.

In 2010 that target became www.realestate1.com.au and its sister site www.realcommercial1.com.au when the REA Group started legal proceedings.

The case seems to have centred on Trade Practices and Trade Mark issues.  here is the excerpt  from the judgement covering the two sections:-

TRADE PRACTICES – misleading and deceptive conduct – use of similar domain and trading names by rival internet businesses – identification of class of affected consumers and the characteristics to be attributed to the ordinary or reasonable consumer of online property portals – whether secondary meaning in its name was established by the applicant – principles applicable to establishing secondary meaning for descriptive as opposed to concocted names discussed – extent of attention to be paid to “.com.au” when comparison is made of similar names – causation and the extent of differentiation from a descriptive name required to avoid finding of likely deception – whether consumer using an internet search engine would be likely misled or deceived by use of the respondent’s domain name on a search results page – whether consumer would likely assume that an organic search result or sponsored link for the respondent’s business is a link for the applicant’s business or a business associated with the applicant – whether sufficient nexus between conduct of respondent and any likely misconception or deception – whether a not insubstantial number of consumers were likely to have been misled or deceived – whether any likely deception was transitory and commercially insignificant – relevance of any intent of the respondent to take advantage of applicant’s reputation.

TRADE MARKS – use of similar domain and trading names by rival internet businesses – whether respondent’s mark deceptively similar to applicant’s mark – whether use of respondent’s mark in a logo was the use of a mark that was deceptively similar to the essential features of the applicant’s trade mark – whether respondent’s use of a mark as a trading name on a search engine results page was the use of a mark that was deceptively similar to the applicant’s trade mark – whether the respondent’s use of a mark as a domain name on a search engine results page was the use of a mark that was deceptively similar to the applicant’s trade mark – attention to be given to “.com.au” when considering deceptive similarity – whether individual respondents liable with corporate respondents as joint tortfeasors.

In short the judgement appears to have found that realestate1.com.au has infringed on the trademark of realestate.com.au however has not passed themselves off as realestate.com.au.  The REA Group has one the Trademark section but not the Trade Practices section.

The judgement itself is quite long  so here are some of the more interesting parts :

213    For all those reasons I am not satisfied that by the use of the term “realestate.com.au” in a URL on a search results page, Real Estate 1 engaged in misleading or deceptive conduct in contravention of s 52 of the TPA. The conclusions I have reached in relation to the s 52 claim also require that the s 53 claims and the corresponding passing off claim be dismissed.

Common sense prevailed on this section.  They did not look the same so how could they be seen as imitating realestate.com.au.

On the matter of the trademarks though it gets a little murky.

222    REA makes no complaint about Real Estate 1’s use of the mark “realestate1” but when that mark is used in conjunction with “.com.au” in relation to the websites of Real Estate 1, REA claims that such use infringes its registered trade marks. The impugned use includes use of the marks on Real Estate 1’s websites, in its advertising and promotional activities and extends to use of the marks in the title of sponsored links and as a domain name address appearing in a URL.

Hmmm.. remember Shaun’s communication that specifically said “The trade mark application is for the name ‘realestate.com.au’ not ‘real estate’ or any other version of those words”. I guess he was just kidding then?? Why didnt we laugh…

“This does not affect your ability to describe your business using terms like; ‘real estate’” and ” it would not stop you from using the domain names richmondrealestate.com.au or bobsrealestate.com.au.” was also just for jokes!

231    In my view, Real Estate 1’s use of the Real Estate 1 logo is not deceptively similar to REA’s realestate.com.au trade marks. I have arrived at the opposite conclusion in relation to the realcommercial.com.au trade mark and the use by Real Estate 1 of the realcommercial1 logo.

Ok,  the realcommercial matter was always going to be a tougher fight for them. Real Estate is a commonly used term way before the internet was even a twinkle in somebody’s brain but the term “Real Commercial” was not.   This was always going to be a losing battle for them.

232    The realestate.com.au logo has arguably three components: a red house in a button device; the words “realestate”; and the term “.com.au”. No component on its own is an essential feature as no component is sufficiently prominent. The button device is distinctive but subsidiary. The term “.com.au” is also subsidiary for reasons earlier given. The words “realestate” are descriptive and of themselves do not suggest a connection with a source business or brand.

233    However, the evidence of the widespread consumer recognition of the domain name “realestate.com.au” supports REA’s proposition that the essential or distinguishing feature of its logo is the domain name in its entirety. The inclusion of “.com.au” as part of that essential feature is necessary because the highly descriptive nature of “realestate” on its own would not be perceived as sufficient to establish brand identity. It is only the composite expression that is likely to be perceived as providing the brand or trading name of the business being promoted. The impression which the logo creates is that the brand or trading name promoted is “realestate.com.au”. The idea that the mark naturally suggests is that a particular domain name (shown in the font and colour that domain names appear in) is also being used as a brand or trading name.

Section 232 seems to indicated common sense will prevail but its the “however” in section 233 that provides the crunch. Despite claiming this was not their intention REA Group got exactly what they wanted in this judgement, the terms realestate and .com.au in a domain name is their brand.  Chucking a “1″ into the domain name was not good enough. What we dont know is if adding a suburb or business name would attract the same fate. I would like think that it would not and that probably comes from this next section.

235    The impression left by the logo is that the dominant composite elements or the essential feature is “realEstate1” and that the source business is an internet business that trades by the name “realEstate1”. The visibility of the “1” is critical to that impression. Unlike REA’s logo, the logo used by Real Estate 1 does not create the strong impression that the brand or trading name of the business is a domain name which includes “.com.au”. The different impressions of the brand or trading names projected by the essential features of each logo is significant. Those contrasting features will to some extent be reinforced by the differences in colour and presentation. That all leads me to the conclusion that Real Estate 1’s logo does not sufficiently resemble REA’s logo to be deceptively similar. I do not consider that, allowing for imperfect recollection, there was a real tangible danger that a person who knew REA’s trade mark would have been confused.

To me its the visibility of the 1 that has counted. So in the logo itself they have blended the 1 into the graphic and in the text version the 1 in www.realestate1.com.au does not stand out as being that much different than www.realestate.com.au.  This leaves a little hope for those with domain names like abcrealestate.com.au.  The abc part is a lot more visible than the single digit 1.

Now this is where it gets interesting and I have highlighted the important bits.

247    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.

Two words stand out here. Monopoly and troubling.

Lets go over it one more time what   IP Australia said again to the real estate industry –  “It would for instance be highly unlikely that the owner could prevent use of the term “real estate” by others”.  Yet the judge seemed to feel as though she was compelled because of the existence of the trademark.

Now in my opinion the wording of this particular section indicates that the judge did not want to give them the decision but felt as though he/she had to.  The trademark itself gives them a monopoly over the terms on the internet and the fact that they were given this trademark was troubling.

The concerns the industry raised back in 2008 were correct and it seems that the assurances to the industry provided by REA and IP Australia were empty and worthless.

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.

What are your thoughts on this judgement?  Did the judge get it right?  Is it IP Australia and the trademark process itself that needs an overhaul.

For me a website is an address no different to 12 Smith Street, Anytown. A business should not be able to restrict another business from using a similar address. A domain is nothing more than a digital address and it does not automatically confer the business name of the operator of the website running on that domain.

A massive chunk of the blame lays squarely at the feet of IP Australia.  So how did they get this through and why were the objections not upheld?

But there is more unanswered questions as Peter Ricci pointed out in a prior article. How did they get a hold of the domains like news.com.au and realestate.com.au when they were blocked to everybody else. The rules are supposed to apply to everyone.   They should never have been allowed to register those domains according to the rules at the time.

Imitating logos and business names should never be allowed but domain names should never be a part of that. I think allowing this trademark to include the domain name itself as a part of the IP is  outrageous. Logos, yes. Business name, yes. Domain name, no. Components of a domain name, no.

Let us know what you think in the comments.

federal court, judgement, Realestate.com.au, Realestate1.com.au, trademark

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About Glenn Batten

Glenn Batten is the General Manager at First National Real Estate Nerang and Principal at the First National Real Estate Upper Coomera office and has over 20 years real estate experience and a passion for technology. Glenn has been writing from an agents perspective on industry issues and covering a range of topics on Business2 since 2007.

27 Responses to Realestate.com.au vs Realestate1.com.au Judgement Is In

  1. Glenn June 8, 2013 at 3:08 pm #

    Perfect example of a judge who doesn’t understand the web.

    Real estate must be joined as one term, realestate, for it to form a domain name, so where does that leave commericlarealestate.com.au ?

    They do not own the term real estate and cannot therefore own the internet use of those words combined.

    This needs to be challenged and perhaps Fairfax might help to finance it.

    In fact that’s what I suggested when this first raised it’s head.

    • Glenn Batten June 8, 2013 at 3:29 pm #

      Reading the full judgement I think the Justice understands technical and internet issues better than others on the bench from other judgements I have read. Naturally I disagree with the interpretation of how the trademark should be applied to other domain names.

      It seems as far as this judge is concerned that they do own the words realestate on the internet when combined with .com.au

      I agree… it would have been interesting for Fairfax to have bought the business and taken over the fight and I would have liked to think that more money thrown at the legal defense would have produced better arguments and a different result.

      • Glenn June 8, 2013 at 3:36 pm #

        I would be very surprised if Fairfax don’t jump in here, this judgement is explosive and opens the door to countless other claims, the domain realestate1 was clever and quite legal in my opinion.
        It could go on forever though, realestate2 etc, if anyone should make judgements on these matters it should be the domain authority. auDA http://www.auda.org.au/‎

        • Glenn Batten June 8, 2013 at 3:48 pm #

          IMHO a large chunk of the blame has to lie with IP Australia allowing anybody to trademark a commonly used english term like realestate even in the limited subset of Australian domain names.

          • Glenn June 8, 2013 at 4:49 pm #

            The trademark should have just covered the look and feel of the logo and the exact term realestate.com.au not variants of it.
            The law is a wonderful thing…………for racking up fees for lawyers.

        • John Stevens June 18, 2013 at 9:47 pm #

          Are you referring to Fairfax owning http://business.com.au here?

  2. B Wilson June 8, 2013 at 5:25 pm #

    Legalities aside…….and granted there are many…..this will serve to fuel the groundswell of discontent that the real estate industry holds for ‘Goliath’ at present. I’ve just found out I’ll be paying approx. 35 % more per year for my ‘ subscription’ ( which is what it is no matter how rea dress it up) for no more in the way of functionality , service, etc.
    That’s akin to taking a 3% fee for service up to 4.05% overnight.

    With better looking , and user friendly sites out there….realestateview.com.au, domain, review property etc , to name a few…… Surely it’s just a matter of time before we all just jump ship and leave them to wallow in their own ‘trademark’.

    Google searches for “real estate” et al aside, the public will use the site that has the properties. Whatever the name.

  3. TomS June 8, 2013 at 6:12 pm #

    What a terrific result for REA Group. I can’t understand why this had to go to the Federal Court. I’m glad that these squatters have been put in there place.

    • Glenn Batten June 8, 2013 at 10:52 pm #

      You still trying to influence opinions about REA for your clients? One Certainty on Business2 is that if there is ever a negative story about realestate.com.au then Tom S is there working hard to fight the fight.. You going to share your connection to all of this yet Tom ?

      • TomS June 9, 2013 at 1:54 am #

        Glenn, It’s all a matter of perspective. This is definitely not a negative story. This is a story about a firm that had the foresight many years ago to wrap up a generic URL in the infancy of online space. Give these guys some credit.

        What abcrealestate.com.au or realestate1.com.au or vegimite-realestate.com.au attempted to was an absolute breach of brand infringement, pure and simple. They were simple trying to capitalise on REA’s brand to benefit there own business. Any similar sized firm would have taken the same action. Well done Greg Ellis.

        • Glenn Batten June 9, 2013 at 9:56 am #

          The action was started way before Greg Ellis got involved.

          Thousands of people had the foresight to grab those domains but the prevailing rules at the time blocked generic urls rom being registered. The credit is not for the foresight it was in the backdoor dealing that got the registration through.

          As far as realestate1.com.au infringing I actually agree. The logo and they way they have marketed it pushed through the limits. IIt is the part about having a monopoly over the term “realestate” and “.com.au” that concerned the industry then and now. Shaun and IP Australia gave us assurances but they look pretty empty now hey??

          So how exactly is abcrealestate.com.au infringing on the REA Group?

          Why wont you disclose your connection over the years with the REA Group so perspective can be provided to your comments? I think everyone would love to know how you have been connected.

          • TomS June 9, 2013 at 5:43 pm #

            Glenn, I’ve explained my background on this blog many times in the past. I am a Systems Specialist working in the Stock Broking industry.
            A few more points to add:
            • My father provided half of the seed capital for the REA start up.
            • I spent a considerable time in a house/garage in East Doncaster in the late 90’s.
            • I was a seed investor in REA in 2000.
            • Until recently, I was a REA top 20 share holder.
            Do I like the REA ‘story’? Absolutely.

          • Glenn Batten June 10, 2013 at 11:04 am #

            Actually Tom S, you have not ever confirmed your connection or explained your background so thanks for finally doing it. Although just in case I missed something… I checked first.. thankfully with access to the back end I can search for all your posts.

            You have hid behind anonymity ramping REA at every opportunity you could. Don’t get me wrong, I have no problem with that or an opposing view as long as they disclose their perspective even if you want to remain anonymous..

            You might remember this little gem you posted once “Sorry Simon – how many visitors was that? 3.7 million?!? Wow. That must make REA one on te most visited sites in Australia. Impressive.”

            Subtle wasnt it :) and there was plenty of others like that..

            Given your profession and shareholding I would have thought open disclosure would have been highly recommended anyway.

            I have actually asked you on three separate occasions to openly admit your connection to REA but you never have. Robert Simeon outed you after asking a couple of times himself but you never admitted it or denied it.

            The closest you got was in 2007 saying you knew the story how it started in a Doncaster garage and how it restructured itself… and that it was a good story. It was hardly your admission of today.

  4. Ryan O'Grady June 8, 2013 at 6:27 pm #

    You’ve got to feel for the team over at realestate1. Not only have they put in a lot of effort to slowly build their portal but they’ve had to fund and deal with the emotional stress of this legal battle. It’s a shame to see REA get a win here as this just puts further barriers between them and their competitors.

  5. Glenn June 8, 2013 at 6:43 pm #

    There should be a fund set up to mount a challenge, agents should donate, there’s a job for you Ryan:)

  6. Peter Watson June 8, 2013 at 9:43 pm #

    I had a competitor try to sue me for trademark infringement for the term ‘Australian Business for Sale’. Now how in the hell did this term get accepted at IP Australia?

    I challenged the competitor and was prepared to fight it all of the way, but after my Lawyer swiftly replied with our response, they took the smart option and dropped it.

    But as I mentioned, I am totally baffled as to how such a generic term, used by hundreds of websites eery single day was accepted at IP Australia?

    • Glenn Batten June 8, 2013 at 10:57 pm #

      We had a similar thing happen. A competitor sent c & d letters to all local agents. We were no longer allowed to use the term “nerang real estate” in our domain names, websites, marketing etc etc. It was his intellectual property. It was one of the best laughs I had that year. The sad part was that he was serious.

  7. Vic June 9, 2013 at 10:12 am #

    The irony of this saga is that realestate1 do not rank on google search for the key words “real estate”.
    I checked to page 6 and they did not appear.

    This is not about terminating a competitor who doesn’t have the capability to optimize their site, it was solely to prevent a cashed up competitor from buying out the portal and creating real competition for REA.

    Just saying.

    • Jason June 16, 2013 at 1:05 pm #

      Hey Vic, it was realestate1′s paid search engine ads (ie adwords) that specifically used “realestate1.com.au” as the ad title that the judge felt was too close to realestate.com.au. Organic results were treated differently (ie users given credit for being able to sufficiently differentiate).

      I would have to check the judgment, but I think even at the time realestate1 didn’t rank higher than page 6 for real estate queries.

  8. John Stevens June 9, 2013 at 7:28 pm #

    Good result for REA group.

    I’m waiting to see if Online Marketing Group / Fairfax digital will follow suit against similarly suspect domain names.

  9. Glenn June 9, 2013 at 7:47 pm #

    Tom s – “””had the foresight many years ago to wrap up a generic URL in the infancy of online space””””

    They had several chances to obtain commercialrealestate.com.au and knocked it back.

  10. Rod Keys June 10, 2013 at 1:31 pm #

    I would like to point out as a domain name registrar that news.com.au and realestate.com.au were most likely registered when .au domain names were free a approved by Robert Eltz who was employed by Melbourne Uni. The long wait list created the spin off of Melb IT. SO they must have got in really early. I have known the chap who registered cars.com.au at about the same time.

    • Glenn Batten June 10, 2013 at 3:00 pm #

      Thanks Rod. Very interesting and solves one question that has been around here for a while. That was certainly some massive value handed out back then. The collective value of just those three domains is massive.

  11. Peter S June 10, 2013 at 11:39 pm #

    By the way Glenn, Justice Bromberg is a male.

    What doesn’t make sense here is that the words http://www.realestate.com.au are NOT trademarked. When you go to IP Australia’s website you will see that REA’s trademarks (half a dozen or so variants) are for the words and the symbol as a whole – i.e. http://www.realestate.com.au together with the circle and the house inside it. REA did not win on the TPA ‘misleading and deceptive conduct’ not did they win on the ‘passing off’.

    I am not sure how this is going to play out on 21 June when they are all back in court for their submissions, but I bet lawyers on both sides have their new Bentley’s on order!

  12. Martin Crampton June 11, 2013 at 5:05 pm #

    I wonder if (Real Estate Institute-operated) Realestateview.com.au is concerned and what the “Industry’s” legal exposure might be.
    As I recall, Realestate.com.au registered itself as Realestate.com.au Pty Ltd. when the terms at the time stated you couldn’t register a generic industry term as a domain name but you could register your company name as a .com.au domain.
    In a similar vane, Realestateview.com.au registered as Realestateview.com.au Pty Ltd with someone else owning Real Estate View Pty Ltd.
    It is certainly a tricky area.

    • Glenn Batten June 12, 2013 at 5:57 pm #

      According to the judgement REA stated in their evidence that realestateview had enough differentiation and was on the other side of the line. That does not mean they cant change their mind though but it appears that they are not a target at least for now. I have seen them change policy and start legal threats after years of acceptance.

      The line in the sand lies somewhere between realestate1.com.au and realestateview.com.au. I dont think it comes down to just the amount of extra characters.

  13. Insider June 11, 2013 at 9:32 pm #

    I noted that justice B said that geoff luff (founder of realestate1) probably created the website to get bought out by REA group.

    I think its ok to get s trademark for realestate.com.au as a phrase or as part of a logo design but i dont subscribe to the wisdom that similar domain names like abcrealestate.com.au infringe this trademark.

    As consumers become more web savvy, the domain name of a real estate classifieds website will not matter as much. In the USA two websites are immensely popular and have unusual names Trulia and Zillow. Wonder if they will enter the Australian market one day? These sites offer far greater technology than the basic information provided on realestate.com.au and im sure it would be popular with aussies.

    While REA group may be enjoying an industry monopoly in agent subscriptions and revenue, they are doing a good job at creating a lot of discontent amongst their subscriber base by raising their fees lin a greedy fashion and i think this will ultimately ruin the business and value for shareholders.

    On another note, it was noted in the judgement that a lot of realestate.com.aus traffic originates from search engines. This presents an opportunity for competitors to focus on to build their own traffic numbers via search engine marketing and optimisation and offer more of a threat to the REA monopoly. A great deal of emphasis is placed on the visitor numbers to justify the REA price increases and i think this part of their market could be whittled down a lot by a smart competitor.

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