The decision in REA Group Ltd v Real Estate 1 Ltd  FCA 559 illustrates how a trade mark registration can provide much wider protection than the provisions of the Australian Consumer Law or an action for passing off under common law.
REA, the owner of the well known property portals realestate.com.au and realcommercial.com.au, issued proceedings against Real Estate 1 in relation to use of the domain names realestate1.com.au and realcommercial1.com.au.
The focus of REA’s case under consumer law and passing off was the display of the URL “realestate1.com.au” in search results. REA contented that users intending to go to REA’s realestate.com.au portal could be diverted to Real Estate 1’s portal. An example of a Real Estate 1 search result is shown below:
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The case found that any deception would not have been other than momentary, and any confusion would have been immediately dispelled by the consumer accessing the realestate1.com.au website due to the difference in branding and user experience of that site when compared with the realestate.com.au site. Further, Real Estate 1’s search results appeared much later than REA’s, and on this basis it was unlikely that a consumer who clicked on a much later search result for Real Estate 1 had done so because they were deceived. The consumer law and passing off claims were therefore dismissed.
On the issue of trade mark infringement, the decision noted that the threshold for making out a claim of trade mark infringement is lower than that required to establish misleading or deceptive conduct. This is because the wider inquiry that might be undertaken where misleading or deceptive conduct is alleged is not appropriate, as the court is not looking at the totality of the conduct.
The case found that an essential feature of REA’s trade mark was the word element, being the name “realestate.com.au” in its entirety. A real danger of confusion arose in the scanning process which may occur on a search results page, where some consumers will miss the indistinctive “1” in Real Estate 1’s domain name. The domain names used by Real Estate 1 were found to be a trade mark infringement.