realEstate1 refuses to re-brand as mediation with REA breaks down

Further to this article posted on B2 Realestate.com.au takes legal action against Realestate1.com.au, recent mediation has taken place between the two parties in attempt to resolve the dispute. From a press release today:

After a final mediation with the REA group yesterday, realEstate1 is refusing to be bullied into re-branding and will be fighting in the Federal Court for the right to use the generic term ‘real estate’ as part of their registered trademark.

A court date has not yet been set.

realEstate1 Managing Director Geoff Luff said;

“It is disappointing that the REA Group is continuing with their legal action against realEstate1. However, we look forward to a favorable outcome.“

It is business as usual for realEstate1, who are still offering a FREE to List Membership for agents Australia wide. Agents wanting to list their properties on realEstate1 can register here.

Geoff Luff, REA Group, REA trademark, realestate, Realestate.com.au, realestate1, Realestate1.com.au

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About The Insider

Ryan has been involved in the real estate industry for a number of years. During this time he has operated web based real estate businesses along with provided consulting to the real estate software development industry. Ryan operates Agentpoint.com.au and is actively involved with the design and development of real estate systems, software and web sites in the United States, Australia and New Zealand.

46 Responses to realEstate1 refuses to re-brand as mediation with REA breaks down

  1. Craig June 21, 2011 at 4:18 pm #

    Interesting decision. My experience with the legal system is the party with the money wins. In fact it is so rare that the small guy win, when it happens they make a movie about it! RE1 must think they have a strong case.

  2. Wayno June 21, 2011 at 4:21 pm #

    The Castle comes to mind

  3. Vic June 21, 2011 at 4:53 pm #

    Good luck Geoff and team: we’re rooting for you guys.

  4. Glenn Rogers June 21, 2011 at 5:13 pm #

    I agree Wayno……

  5. Bill June 21, 2011 at 5:42 pm #

    My monies on the little guy.

  6. Tatiana Mijalica June 21, 2011 at 5:45 pm #

    You can sign a petition on the matter:

    http://www.petitionbuzz.com/petitions/realestateownership

  7. Bill June 21, 2011 at 7:10 pm #

    Although when it comes to choosing between conspiracy or stuff up I usually side with the latter but in the case between REA and realestate1 I’m leaning towards conspiracy. Could REA be positioning itself to be the only bidder for .realestate when ICANN starts taking submissions. If REA win this case it will be a brave Australian entity which lodges a submission for .realstate

    http://mashable.com/2011/06/20/new-gtld-faq/

  8. Luke Woollard June 21, 2011 at 7:32 pm #

    Not commenting on this legal action at all but I think it’s worth mentioning that the party with the strongest argument usually wins.

  9. Greg Vincent June 21, 2011 at 8:20 pm #

    David & Goliath comes to mind for me & the community cheered loudest for David.

    The only winner I can see in this is David because REA have raised their profile.

    No offense Geoff, but I personally hadn’t heard of your site until I saw the original legal action taken by REA and I’m guessing that I may not be the only one?

    I’ve already had agents asking me if this will impact in their use of the term Realestate.

    It’s time for REA to start breaking down the barriers with agents NOT put up more! Their reps must be getting frustrated by having to play firefighter all the time.

  10. Noams :) June 21, 2011 at 9:02 pm #

    Just like the term Life Guard has now been purchased, the term real estate is probably for sale too! Who wants to buy it with me, could be the best RE investment we’ve ever made!

  11. Ryan M June 21, 2011 at 9:29 pm #

    Sure Naoms, let me check my loose change…

    There are bigger fish who will bid for .realestate TLD.
    I’ll put my money on a big search engine purchasing it, then re-selling or auctioning for a nice profit..

  12. Robert Simeon June 22, 2011 at 8:54 am #

    This court case will definitely confuse all the John Smith’s in the world!

    Get my point 🙂

  13. Shane Dale June 22, 2011 at 9:57 am #

    Sorry to be the one upsetting supporters here BUT – Actually I think its ridiculous – realestate1 was clearly aware of the REA site when they started. They could have chosen a unique and memorable name. They did not.

    However RE1 CHOSE to enter this contentious arena and could easily have foreseen the consequences – I suspect it was considered that REA would buy them out to go away. Everybody thinks REA throws money around – due to their massive market capitalisation. I dont think that is true. It wouldnt surprise me if they offered to REA – buy us out for cheaper than the battle cost to legally remove us – Geoff are you stating this is not a possibility?

    REA have used their brand for years – and when i first heard of realestate1 – I instantly viewed it as a passing off or a deliberate attempt to confuse the market.

    The fact that REA got the name realestate as a domain in the beginning is a travesty but its happened so lets move on – this RE1 is a clear attempt to align the site under a similar name. I do not think RE1 has a significantly different business model to warrant allowing such a domain – ultimately consumers will be confused – the legal fine points where such matters can get bogged down are not relevant to the fact that consumers will be confused. Probably marketers, advertisers and others as well. You have to look closely to see the 1 – its even well hidden in the house icon in the logo.

    Then to make things crystal clear – they add realestate1commercial – not sufficiently different from realcommercial – interesting to me that they didnt pursue commercialrealestate1.com.au – thus they have 2 carbon copy names and an identical business function in each. No coincidence here at all.

    I know REA may ruffle some feathers here – and its fair to critique them ( they often deserve it ), but this activity is not an innocent little hero fighting valiantly against a demonic giant – its a sneaky little play that was foolishly considered with unpredictable outcomes. I dont know what promises were made to investors, but from experience I have seen many wild concepts floated around – anybody with a shred of marketing sense would have advised these guys to avoid this name unless its a deliberate strategy. I think it is deliberate – but for what reason exactly I dont know.

    In this case I support REA. Bring on the debate.

  14. MAC June 22, 2011 at 10:00 am #

    Anyone tried using Apple in the name or logo in recent years.
    These things always have further ramifications too. Look up why Realestateview registered as Realestateview.com.au Pty Ltd. Someone else already owned(s) Real estate view Pty Ltd. (ASIC says their start date was 1994!) However, the rules mean the original Pty Ltd still has the rights to the .com.au. Egad!!

  15. Glenn Rogers June 22, 2011 at 10:06 am #

    There’s no debate Shane, the term realestate is generic and REA have got no hope of winning this.

    There are many real estate sites using the term realestate so is this a tilt at trying the set a precedent by attacking an easy target ? Why not have a go at Fairfax or the REIV ?

    Even as a former agent I hold this action in the contempt it deserves and if I were still in agency REA woudn’t get a cent of my money, zero support and I think many agents are getting to that point.

  16. Glenn Rogers June 22, 2011 at 10:35 am #

    Geez Mac if you use apple to describe fruit no problem, if you use Apple to brand your computers thats different, can’t you see the difference ?

  17. MAC June 22, 2011 at 10:57 am #

    You haven’t caught-up with the fact Apple is trying to trademark the Granny Smith on the Beatles records? And the bloke in Sydney who had a software business with apple in its name before Apple was born but still had to close down…. It’s wallet size that counts but it is good there are those still willing to try in a judicial system that has never been democratic until you get to the “Eleven men…” stage.

  18. Shane Dale June 22, 2011 at 11:20 am #

    Hi Glenn, yes I agree the term is generic and should be carefully managed – REA should not have any ownership of the word “real estate” and should never have been given as a domain. The term realestate as a domain is clearly usable by many others.

    HOWEVER – the commercial reality is that REA is a well established company with a brand – and RE1 is a direct copy of the functions and business of that domain name. Its not a consultancy or a real estate agent or a property valuation company – its a national portal same as REA.

    The point you made in the next post about apples is right – if the businesses were substantially different – then I would think its open and shut, but on this – I think its verging on “passing off” and confusion in the average consumer’s perception.

    RE1 has been deliberately created to exploit the legal grey area of REA using a generic word as its brand – its worth a punt – knowing full well that they could duck and weave – I dont think its a coincidence and probably this grey area will allow RE1 to leverage their “future potential” earnings and costs etc etc as a way of raising the stakes in the legal game to entice a fat payout from REA to end the matter. Resolving the issue legally will be very expensive I suspect.

    Regarding their legal arguments – Glenn – I think its not clear at all, but they can certainly use the grey area – its a long winded argument to quantify why REA can claim a generic name as a brand, but my main point here is that strategically its a well considered action by RE1.

    Why would any business make such a name that isn’t unique or distinguishable? My answer on this is above. From personal experience I wont accept that its an advertising revenue model they are seeking at this stage because banner ads dont pay enough – especially at their claimed traffic levels – so the question is to Geoff – what is your planned business model that enticed your company to this arena?

  19. Glenn Rogers June 22, 2011 at 11:39 am #

    The only brand REA have is their logo and look and feel of their site, they don’t own the term realestate, the courts will sort this out and the agents will then sort out who they are willing to support in future.

    There may be a shock in store when they realise someone has been trying to monopolise the name of their livelihood..

  20. Shane Dale June 22, 2011 at 11:46 am #

    Hi Glenn, I dont have any relationship or loyalty specifically towards REA – and I am not a lawyer so I dont know the exact workings of the legal points. I do have some experience with market confusion and passing off issues in the courts.

    My observation is about the strategy of whats happening. I cannot imagine that REA is trying to own all uses of the word real estate – just stopping a carbon copy business in its same space. Having said that – if what is said about Apple is true then that is a worrying trend. I wonder if its Steve Jobs driving that or over zealous and self benefitting lawyers?

    Glenn – your name links to a site called weekend.com.au – a generic name as well, would you feel OK if a website named weekend1.com.au opened up doing the exact same thing?

    Please note I am not being argumentative – simply curious, and perhaps a little cheeky 😉

  21. Glenn Rogers June 22, 2011 at 11:59 am #

    Shane if they did it would be fine with me, if I wanted to corner the market on weekend I would need to take all associated domain names.

    Weekend.com.au is generic, weekend1.com.au isn’t , simple.

  22. Glenn Rogers June 22, 2011 at 12:02 pm #

    MAC – Apple computer will never get that trademark from Apple records, it’s just the action of a few miserable pen pushers with nothing better to do than waste their empoyers money on lawyers, who are happy to take it.

  23. Geoff Luff June 22, 2011 at 12:14 pm #

    Our trademark is in fact realEstate1. When referring to our website we include .com.au after our trademark, isn’t this normal practice??
    The REA Group was well aware of realEstate1before our launch.
    If they had a problem then one would have expected that they would have made contact with realEstate1 to state their displeasure, which they did not.
    They also had the chance to object to our trademark application, which they did not.
    It is our understanding that this is not the first time that they have accused a business/website of passing off.
    It is obvious that they do not like anyone using the generic term ‘real estate’.

  24. Shane Dale June 22, 2011 at 12:40 pm #

    Geoff – any news on what your business revenue model is? By the way if my suspicion is right about your strategy – to be bought or paid out by REA – that is fair enough – business is rough. But if they dont bother to buy you off – how can you grow and survive?

    I suspect the non reaction of REA has more to do with them being busy or nobody in the organisation being given direct responsibility for the task – or maybe they just thought your site was too insignificant to them to bother with – I dont know which is right. I dont think it was them accepting it in good grace. Regarding the use of the word real estate – I only think they object to YOU using it the way you do. I dont think anyone else is being chased.

    Glenn – If I was you I would be annoyed if a copy site +1 was created – maybe you have more Ghandi dna than me! But its not a big issue – just a curious point. Amazed you could secure a generic name domain as well. I like the domain alot – good business decision.

  25. Glenn Rogers June 22, 2011 at 12:44 pm #

    Geoff, I don’t see a problem with anyone using the term realestate in any advertising using the term realestate.com.au on it’s own is a different matter.

    Eldersrealestate http://www.eldersrealestate.com.au/ would be interested in this as would anyone with the term realestate in their domain name.

  26. Glenn Rogers June 22, 2011 at 12:50 pm #

    Shane the business model is not the issue anyone can start a realestate portal and call it what they like, this is about usiing the term realestate, it’s not unique to REA it’s generic.

    If someone copied the look and feel of weekend or other parts of how it worked that triggered a “I copied you” reaction I would act, but simply creating another leisure portal using weekend1 goodweekend myweekend or such, as is the case now, I say good luck.

  27. Wayno June 22, 2011 at 1:26 pm #

    From where I sit REA has the ownership of real. Realestate, Realcommercial etc

  28. MAC June 22, 2011 at 1:36 pm #

    Gee, Wayne, does that mean the owner of http://www.ecommerce.com.au has ownership of ‘e’ ?!*L*

  29. Wayno June 22, 2011 at 1:42 pm #

    Good now your starting to look outside of the square to see the arguments

  30. Vic June 22, 2011 at 1:44 pm #

    Glenn I agree with your thoughts on competition.
    We bought up 44 domain names when we started to protect our entry into the niche market that we are in. When renewal came up we ditched most of them. Good luck to anyone who decides to pick them up and run against us.

    It’s about establishing yourself in the market place.

    REA is well established and it still amazes me why REA would persist in any action. I think maybe you are right with your insight Shane. Maybe the strategy is driven by REA1. Who knows and certainly Geoff is not about to say.

    BTW-And I have signed the petition to let REA know that they cannot “own” the generic name “real estate”.

  31. Wayno June 22, 2011 at 1:48 pm #

    By the way I did not mean ownership, what i meant was Rea is trying to make a case for realestate when in fact they have more than one name starting witl Real. I am not a lawyer but I can see how lawyers come up with argument for and against.

  32. Shane Dale June 22, 2011 at 2:55 pm #

    Guys I fully agree that REA should not own the term real estate

    – its generic and I dont dispute that

    – and REA would not win any case with anyone – except perhaps RE1 – but as I said – they may have some extra ground to use – because realcommercial is a very unique. Its not generic at all.

    To create a copy portal and call it realestate1commercial is derivate at best.

    If I was a lawyer I would start there, which lends weight to the idea of RE1 being a deliberate attempt at passing off or confusion.

    From my previous experience with this type of thing – The exact nature of the infringing name isnt the point – it will be from evidence to the confusion in the marketplace and passing off claims. Generic name or not, is just part of the argument. REA has had unchallenged use of the name for a decade prior to RE1 so thats also important.

    This case will make lawyers smile in anticipation of good fees.

  33. MAC June 22, 2011 at 3:10 pm #

    …and did realestate.com.au copied property.com.au ?

  34. Glenn Rogers June 22, 2011 at 3:12 pm #

    Shane I don’t see realestate1commercial as being anything like realcommercial – realestate1commercial is in fact a better name as it has the word realestate in it and as far as the web sites go they look nothing alike.

    I agree the lawyers will be the only ones tro benefit.

    Who runs realestate.com.au anyway, are they missing Simon yet ?

  35. Vic June 22, 2011 at 3:31 pm #

    How about recently launched http://www.realrealestate.com.au , reckon they aren’t copying?

  36. Wayno June 22, 2011 at 4:00 pm #

    AH HA now see the argument coming to life, REA has an argument here as they have Real in front of realestate.

  37. Sal Espro June 22, 2011 at 4:44 pm #

    What a lot of guff! If you own a business name then you should be able to .com.au it! If you want to protect your domain name then trademark it. Realestate.com.au is trademarked but someone else trademarked
    realestate1.com.au. REA obviously has too much money but not enough cents!

    Now, let’s talk about something more practical like how do buyers/renters get alerts across the marketplace without having to sign-on to 4 portals and 6 agencies?! (It goes against me wanting them to visit just my website, but isn’t this we s’posed to think in the age of Twitter?!)

  38. Jon June 23, 2011 at 4:26 pm #

    Does surroundpix have some alignment with REA?

  39. Shane Dale June 24, 2011 at 5:14 pm #

    Nope – surroundpix has NO affiliation or relationship with REA. In fact over the years I have been bruised and very unimpressed with several actions they took, but that does not relate to the merits of this debate.

  40. Ryan O'Grady June 29, 2011 at 3:14 pm #

    I’ve just been notified that it looks as though a court date will be set for around April, 2012.

    Long road ahead!

  41. sahibinden June 29, 2011 at 10:54 pm #

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  42. Adam July 8, 2011 at 9:39 pm #

    MAC what do you mean? property.com.au is realestate.com.au. Same company

  43. MAC July 11, 2011 at 12:36 pm #

    Adam, I’m a different MAC to the one you’re questioning here. However, fyi realestate.com.au started years after property.com.au had already established the online real estate marketplace.

  44. Peter S February 7, 2012 at 12:14 pm #

    Hi Geoff.

    I wish you all the luck with this. I am glad you have the trademark registered and on checking I note that it was registered in 2007. So in my opinion, REA don’t have a snowball’s chance in hell of winning – but their game is to cost you as much money as possible fighting this so that you eventually give up. PLEASE DON’T.

    I am currently being sued in the Federal Court by an individual who doesn’t even have a trademark for a particular generic real estate phrase. He is, however, currently applying for one and there have been a few objections. He not only wants me to hand over my domain names, but also wants to stop me and others from using the generic phrase in advertising or on websites. I won’t go into the phrase at the moment – perhaps it would be a good topic for a new thread. All I can say is that it is like being in the hardware business and not wanting another hardware business from using the phrase ‘roofing nail’ because the other business has registered the business name ‘Roofing Nail’ and also has the domain name roofingnail.com.au. His tactics are the same as REA’s, who want to claim they own a generic phrase and will bully and throw money at it and hope that I will go away.

    There are lots of bullies out there and sometimes they need someone to actually take them on in court rather than submit. Unfortunately it is only the lawyers that win in these matters.

  45. Peter S February 7, 2012 at 12:15 pm #

    Hi Geoff Luff.

    I wish you all the luck with this. I am glad you have the trademark registered and on checking I note that it was registered in 2007. So in my opinion, REA don’t have a snowball’s chance in hell of winning – but their game is to cost you as much money as possible fighting this so that you eventually give up. PLEASE DON’T.

    I am currently being sued in the Federal Court by an individual who doesn’t even have a trademark for a particular generic real estate phrase. He is, however, currently applying for one and there have been a few objections. He not only wants me to hand over my domain names, but also wants to stop me and others from using the generic phrase in advertising or on websites. I won’t go into the phrase at the moment – perhaps it would be a good topic for a new thread. All I can say is that it is like being in the hardware business and not wanting another hardware business from using the phrase ‘roofing nail’ because the other business has registered the business name ‘Roofing Nail’ and also has the domain name roofingnail.com.au. His tactics are the same as REA’s, who want to claim they own a generic phrase and will bully and throw money at it and hope that I will go away.

    There are lots of bullies out there and sometimes they need someone to actually take them on in court rather than submit. Unfortunately it is only the lawyers that win in these matters.

  46. Peter S June 7, 2013 at 11:30 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

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