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May 28, 2015

Internet Enforcement: Navigating the Options

Savvy brand owners use an arsenal of tools to combat trademark and copyright infringement on the Internet. This arsenal must always be reassessed because of the global aspect of the Internet combined with the myriad laws that govern it and the frequent difficulty of identifying website operators.

Enforcement can be costly and time consuming. Therefore, in order to maximize cost and time efficiencies, brand owners must establish priorities. An illustrative example is with domain squatting, which we know occurs when a third party registers a domain name that includes any combination of a brand owner’s trademark in the URL. For example, the “Jabberwocky” apparel brand owner has registered jabberwocky.com, jabberwocky.net and jabberwocky.biz. A third party, attempting to trade on the jabberwocky brand equity, then registers domain names for jabberwockyshop.com, jabberwockyoutlet.com and cheapjabberwocky4u.com.

The Jabberwocky brand owner must now decide how to address the issue of the infringing domain names.  The questions that a savvy brand owner asks should be:

  • Are any of the domain names active (is there a landing page, and does the landing page result in any type of monetization (i.e. click through revenue, sponsored affiliations, etc.))?
  • Do any of the domain names direct or redirect to an eCommerce site that is selling infringing, counterfeit or competing products?
  • Who is the registrant of the website and where is the registrant located?
  • What company is the registrar of the domain name and where is the registrar located?
  • If the domain name links to an eCommerce site, what company is the host and where is the host located?
  • If there is an infringing eCommerce site, what types of payments are processed (PayPal, Visa, MC, AEX)?

Armed with this knowledge, the brand owner may then develop a plan of attack. A few possible remedies include:

  • File a Uniform Dispute Resolution Proceeding (UDRP) or Uniform Rapid Suspension (to recover or suspend the domain name). These two proceedings have different requirements, different timelines and different results.
  • Serve a Digital Millennium Copyright Act Notice (DMCA) on the ISP (host) to remove infringing copyrighted content from the website. The DMCA is only effective in the U.S., although some countries have similar legislation. Failure to comply with the DMCA Notice by the ISP could result in contributory liability. ISP’s generally comply. However, website operators frequently move the website to a new host, often outside of the U.S. Many brand owners in the apparel industry do not realize the extent of their copyright ownership and the power they have to leverage their enforcement efforts abroad.
  • Serve Cease and Desist Notices (to registrant and ISP).
  • Send Abuse of Term notices to Search Engines.
  • Submit Verified Rights Owners takedown notices (if the infringing content is on an auction site versus an infringing website).
  • File a Complaint in Federal court for cybersquatting.
  • File a Civil in Rem TRO and Seizure Order.

Because it is not practical for a brand owner to defensively register every variation of trademark in each gTLD and ccTLD, it is wise for the brand owner to develop a best practices domain name registration strategy to ensure its customers are going to the authorized website, to uncover infringing sites that are displacing revenue, and to combat infringers in the most efficient and effective way. In addition, a brand owner should learn which battles to fight and the best way to win. Remember, website operators can infringe on a brand in more ways than domain name squatting, and so a cohesive, integrated enforcement strategy requires the proper use of all available legal tools to weed out and squash infringement on the web.

Deborah Greaves is former General Counsel of True Religion and provides advisory and legal services to clients in the fashion and consumer goods industries. Last week, she was a featured speaker at the District Export of Southern California’s (DECSOCAL) Chinese Road Show: “What You Must Know to Protect Your Intellectual Property in China.”

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