A legal stoush has erupted between two of Australia’s biggest ecommerce players over the use of trademarks and domain names.
Last Thursday (May 24) Catch Group, which runs catch.com.au, lodged an intellectual property dispute with the federal court, alleging Kogan had violated its “catch” trademarks through domain names and Google AdWords to drive traffic to its own services.
“The proceeding relates to the conduct of Catch’s competitor ecommerce site Kogan, which has acquired the licence to the domain name catchmobile.com.au amongst others and applied for several trade mark applications which incorporate the word ‘catch’,” the company said in a statement today.
Catch launched its own mobile offering in February in partnership with Optus, called Catch Connect which uses the domain catchconnect.com.au. The retailer argues Kogan registered the domain name catchmobile.com.au, catchinsurance.com.au and catchloans.com.au to direct consumers to its own services.
“A search of Google for ‘Catch Connect’, ‘Catch Mobile’ or ‘Catch Mobile Plans’ resulted in the identification of a sponsored link to the Kogan Catch Mobile Domain, which was sponsored by one or more of the respondents,” according to the statement of claim, which was first reported by Lawerly.
As of today, Catch accepted voluntary undertakings from Kogan, which also sells mobile, internet and insurance products, that it will cease using the catchmobile.com.au domain or any of the disputed ‘catch’ brand terms pending determination of proceedings.
Catch said it is “seeking to restrain, amongst other things, Kogan from using any sign which it considers infringes its intellectual property rights.”
Kogan.com did not respond to Which-50’s request for comment.
“Almost everyone knows who Catch is, and we have worked hard to deliver a market leading phone plan offering for consumers,” said Nati Harpaz, CEO of Catch Group (pictured above with co-founder Gabby Leibovich).
“Nearly one in seven Australians have shopped with us since 2006, and our customer base only continues to grow,” he said.
Going around and coming around
The irony of the current dispute will not be lost on longtime local industry watchers. Back in 2011, Catch of the Day founders Gabby and Hezi Leibovich found themselves in a dispute over domain names against Groupon. Only in this case, however, Catch of the Day was on the receiving end of the lawyer’s letters.
Catch of the Day’s daily deals site Scoopon purchased the Groupon.com.au domain name before Groupon launched in Australia. Groupon, which was forced to enter Australia under the name Stardeals, detailed the dispute in a blogpost, including an attempt to buy back the domain name for $286,000.
“As Groupon became internationally known, opportunistic domain squatters around the world started to buy local Groupon domain names, thinking that we’d eventually be forced to buy them at an insane price. In fact, we tried to do just that, reluctantly offering Gabby and Hezi Leibovich about $286,000 for the Groupon.com.au domain and trademark—an offer they accepted,” then-Groupon CEO Andrew Mason wrote.
“But now they’ve changed their minds, and we believe that they’ll only sell us the domain and trademark if we’re willing to buy the entire Scoopon business from them. Left with no other options, we’ve filed a lawsuit against Scoopon, claiming that their Groupon trademark was filed in bad faith (amongst other things).”
The two companies eventually settled the matter out of court.