Vendor Advocacy Australia Pty Ltd v Seitanidis  FCA 971 (27 September 2013)
This case reinforces the difficulty in protecting descriptive business names. It involved an unsuccessful application by Vendor Advocacy Australia (VAA) alleging Mr Seitanidis engaged in misleading or deceptive conduct by carrying on business in the real estate field by reference to the phrase Vendor Advocacy Australia and using various domain names containing Vendor Advocacy and Vendor Advocacy Australia.
Mr Seitanidis had previously been associated with the VAA business as a contractor. He had copied VAA’s listing authority form and text from VAA’s website and had purchased Google Ad Words for Vendor Advocacy and Vendor Advocacy Australia.
Middleton J found that Vendor Advocacy was a descriptive term and that VAA’s business was closely tied to the persona of its founder, Mr Ian Reid. As a result, there was not a likelihood of relevant consumers being misled or deceived. His Honour summarised his conclusions as follows:
- The phrase “vendor advocacy ” is descriptive and was generally used by various traders in the same line of business. I am not satisfied that the words or brand relied upon in this proceeding by VAA have any secondary distinctive meaning. VAA has primarily promoted itself by reference to the persona of Ian Reid. I do not consider that any consumer which assume that a reference to vendor advocacy , or Australian Vendor Advocacy , would be associated with VAA or Ian Reid. In fact, because Ian Reid has been so much at the front of the promotion of VAA, without his presence the consumer may well assume it is not associated with him or VAA. Any imperfect recollection of consumers would arise from VAA’s adoption of a name consisting of descriptive words. The lack of recall will be as a result of the promotional activity adopted by VAA, by reference to the descriptive words ‘vendor advocacy ’.
- Looking then at the domains. There is no doubt that once the consumer enters the domain of Mr Seitanidis there can be no confusion of the type complained of by VAA. The content of the sites are quite distinct. Even if there was momentary ‘confusion’ in the mind of a consumer upon searching vendor advocates, or even Australian Vendor Advocacy , I do not think this would justify in a finding of misleading and deceptive conduct on the part of Mr Seitanidis.
- A transitory incorrect impression, or a transient period of being misled even, would not necessarily lead to there being liability imposed upon a respondent.
- I have not needed to enter the debate as to the significance of the various accoutrements of domain names, such as “.com.au”. I agree with the observations of various judges that consumers do not pay any real attention to such references.
- I do observe that, in the context of searching the internet, consumers will be vigilant when confronted, as they are, with many domain names referring the phrase “vendor advocacy ”. Of course, if the consumer knows of Ian Reid and are looking for his business, they will look for the entity or entities specifically associated with him.
- I interpolate that if the consumer had visited a VAA site previously, the consumer would be familiar with the Ian Reid persona, and could not be misled by the conduct of Mr Seitanidis in his use of his domain names. In this context, I accept that the websites of VAA were very popular. I do not know the extent of the popularity compared to all websites of vendor advocates. In any event, the popularity of the VAA website does not lead to the conclusion that any secondary meaning has been established through such websites in the terms “vendor advocacy ” or “ Vendor Advocacy Australia”, or that a not insignificant proportion of consumers would associate those terms with VAA. A consumer on the internet would still view the terms as descriptive and would not assume any association between each website.
- If there is an imperfect recollection of the type suggested by VAA, any confusion, as I have said, arises from the advantage of a descriptive trade name as used by VAA. If the consumer has never heard of VAA, Mr Ian Reid, or Vendor Advocacy Australia, he or she may be ‘confused’ with the various different vendor advocates, but this would not be because of the conduct of Mr Seitanidis.
The respective websites are at http://www.vendoradvocacy.com.au/ and http://www.independentpropertyadvocates.com.au/vendor-advocacy/
Middleton J did, however, make declarations and injunctions relating to the breach of copyright by Mr Seitanidis.