Federal judge rules on REA trademark case

Stacey Moseley

After a lengthy trademark battle between REA Group and owners of realestate1.com.au, a Federal Court judge has ruled in favour of the portal giant.

The Honourable Justice Broomberg of the Federal Court of Australia has ruled in favour of REA Group after they pleaded that the domain name realestate1.com.au and realcommercial1.com.au was “substantially identical” or “deceptively similar” to the domain name realestate.com.au and realcommercial.com.au.

In the judgment handed down on Friday 7 June, the Hon. Justice Broomberg found that realestate1.com.au’s domain name infringed with that of REA Group.

“I have found 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,” he said.

“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."

In response to the ruling Paul Gordon, acting general counsel of REA Group told Real EState Business, “In October 2010 REA Group initiated legal action against RealEstate1 Ltd, the operator of the ‘realestate1.com.au’ website and previously operator of the ‘realcommercial1.com.au’ website.  We were compelled to pursue legal action to protect the reputation and integrity of our core brands.

“Last week the Federal Court found in our favour, specifically  that RealEstate1 Ltd’s ‘realestate1.com.au’ and ‘realcommercial1.com.au’ domain names infringed REA Group’s realestate.com.au and realcommercial.com.au registered trademarks," he continued.

“We do not take the idea of litigation lightly.  This is the first occasion on which REA has instituted proceedings against a competitor on the basis of branding.  However, we will always take the necessary steps to protect the reputation and integrity of our brands.”

REA Group’s property portal business commenced operation in 1998. Shortly thereafter, the business changed the web address of its residential property portal to www.realestate.com.au.

In 2005 Geoffrey Luff, director at realestate1.com.au set up a franchise business for real estate agencies which was to be called 'Real Estate 1'. Part of the plan was to set up an online property portal on which real estate agents could list properties for sale. However, the aforementioned domain name was not available.

It wasn’t until November 2008 that Mr Luff acquired the domain name 'realestate1.com.au'. The prosecution argued that it wasn’t until this time that Mr Luff’s portal business began gaining momentum.

According to Mr Luff REA Group were unsuccessful in many of their claims.

"Under the Trade Practicing Act, the judge found REA to be unsuccessful," he told Real Estate Business.

"As far as we are concerned we are not defeated on all fronts."

Stacey Moseley

After a lengthy trademark battle between REA Group and owners of realestate1.com.au, a Federal Court judge has ruled in favour of the portal giant.

The Honourable Justice Broomberg of the Federal Court of Australia has ruled in favour of REA Group after they pleaded that the domain name realestate1.com.au and realcommercial1.com.au was “substantially identical” or “deceptively similar” to the domain name realestate.com.au and realcommercial.com.au.

In the judgment handed down on Friday 7 June, the Hon. Justice Broomberg found that realestate1.com.au’s domain name infringed with that of REA Group.

“I have found 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,” he said.

“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."

In response to the ruling Paul Gordon, acting general counsel of REA Group told Real EState Business, “In October 2010 REA Group initiated legal action against RealEstate1 Ltd, the operator of the ‘realestate1.com.au’ website and previously operator of the ‘realcommercial1.com.au’ website.  We were compelled to pursue legal action to protect the reputation and integrity of our core brands.

“Last week the Federal Court found in our favour, specifically  that RealEstate1 Ltd’s ‘realestate1.com.au’ and ‘realcommercial1.com.au’ domain names infringed REA Group’s realestate.com.au and realcommercial.com.au registered trademarks," he continued.

“We do not take the idea of litigation lightly.  This is the first occasion on which REA has instituted proceedings against a competitor on the basis of branding.  However, we will always take the necessary steps to protect the reputation and integrity of our brands.”

REA Group’s property portal business commenced operation in 1998. Shortly thereafter, the business changed the web address of its residential property portal to www.realestate.com.au.

In 2005 Geoffrey Luff, director at realestate1.com.au set up a franchise business for real estate agencies which was to be called 'Real Estate 1'. Part of the plan was to set up an online property portal on which real estate agents could list properties for sale. However, the aforementioned domain name was not available.

It wasn’t until November 2008 that Mr Luff acquired the domain name 'realestate1.com.au'. The prosecution argued that it wasn’t until this time that Mr Luff’s portal business began gaining momentum.

According to Mr Luff REA Group were unsuccessful in many of their claims.

"Under the Trade Practicing Act, the judge found REA to be unsuccessful," he told Real Estate Business.

"As far as we are concerned we are not defeated on all fronts."

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