Unauthorised use of similar websites and/or trading names – what can you do?

September 11, 2013

in Intellectual Property

Intellectual Property: CopyrightWith the increasing use of the internet for the purposes of promoting or selling your goods and services we are seeing an increasing number of “cybersquatters” who are using similar or identical Domain Names or websites in order to advantage their own business.  In the wrong hands, a domain name could be an instrument of fraud.   If this is done without your consent or knowledge then you need to be aware of your rights and what remedies are available to prevent the ongoing use of the similar domain name and protect your own business.

The Fair Trading Act states that no person shall, in trade, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.  Remedies under the Fair Trading Act include applying for an injunction (and an interim injunction in the first instance) where there has been a breach.  There are defences available to an application under the Fair Trading Act and therefore it is crucial you seek legal advice in the first instance.

The common law of passing off also prevents a trader from “appropriating the goodwill” of their competitors by passing off their business as either being that of or associated with the business of another.  While it is fair to say that the law of passing off has been replaced by the Fair Trading Act (misleading and deceptive conduct), and almost all passing off claims will rely on the Fair Trading Act in the alternative there can be practical advantages to bringing a claim under passing off, and the primary one is seeking punitive damages.

Since the establishment of the Domain Name Commissioner’s Dispute Resolution Service, there is now also a complaints procedure, which allows you various remedies, including cancellation of the similar domain name or transfer to you.  It is essential that you seek legal advice to know what the best option for you is, and to act urgently to prevent further damage to your business name and reputation.

If you require any advice or further information on the matters dealt with in this publication please contact the lawyer at Farry and Co who normally advises you, or alternatively contact:

Kirsten Maclean


(03) 477 8870 or (09) 379 0055


The information contained in this publication is intended as a guide only.  It does not constitute legal advice and should not be relied upon as such.  Professional advice should be sought before applying any of the information to particular circumstances.  While every reasonable care has been taken in the preparation of this publication, Farry and Co. does not accept liability for any errors it may contain. 

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