Most established brand owners have long been savvy at intellectual property (IP) protection and enforcement when they find their intellectual property rights (IPR) infringed, whether it’s through unauthorised use of their trade marks or infringement of their copyright or design rights.
However, brand owners can struggle when it comes to policing their IPR in the internet age. The internet can appear like a limitless space that is constantly evolving and therefore cannot be effectively controlled. The ease with which one can register a domain name, with scant approval process, and upload content to the website makes it easier than ever for infringers to operate. The internet has become a Mecca to counterfeiters in particular, who can remain relatively anonymous, while carrying out large-scale infringements. However, with many consumers now opting to buy or at least research purchases online, this isn’t something over which brand owners can afford to be complacent or to bury their heads in the sand. By doing so, they will quickly find their valuable brand diluted beyond repair.
The traditional route of litigating against offenders is often just not suitable when it comes to infringements on the internet. Sometimes infringers are unidentifiable, because the contact details on their websites are false, or the registration details provided to the relevant registry are false or incomplete. Therefore the normal considerations any brand owner will go through before deciding to take action, including the severity of the infringement, the cost of taking action and the likelihood of success, must be expanded to cover considerations that apply to the internet alone.
While IPR enforcement can be difficult when it comes to the internet, there are certainly a number of effective options available to brand owners to deal quickly and effectively with infringers. I briefly consider the merits and drawbacks of the various options below.
TAKEDOWN REQUEST TO INTERNET SERVICE PROVIDER (ISP)
Depending on where the domain name is registered and hosted, it may be possible to request that the ISP remove it if the website contents are infringing a brand owner’s IPR.
Where the infringing domain is based in the US, notification to an ISP of infringing content must be carried out in accordance with the Digital Millennium Copyright Act. Most hosts that receive such a notification will have a policy in place, whereby they will remove the infringing content or domain.
Where the infringing domain is based in the EU, the Electronic Commerce (EC Directive) Regulations 2002 provides that an ISP, having been notified of offending content on a domain that it is hosting, may become liable for the offending content if it does not respond expeditiously.
By sending a letter to the ISP, outlining the relevant IPR and the manner in which it is being infringed, objectionable content from the internet can be removed quickly and relatively cheaply. However, its drawback is that the letter does not achieve transfer of the domain name and does not prevent the infringing registrant from relaunching its website, connected to the same domain name, with a different ISP.
Many online payment providers have reporting mechanisms for brand owners to use that will assist with fighting infringers. A payment disruption is particularly useful when it comes to the sale of counterfeit products online. By following the reporting procedure, which generally includes providing proof of the IPR in question, as well as proof of infringement, the payment provider will disable use of its payment processing systems as a method to pay for purchases on the infringing website.
The advantage of this approach is that it is relatively quick and simple and has an immediate practical impact. However, it is less effective where the website offers a vast number of payment options, as not all payment providers have such policies. In addition, the infringing products remain listed on the website so it does not deal with the problem in its entirety.
Where the content of a website is infringing a brand owner’s copyright, an application can be made to Google, in accordance with the US Digital Millennium Copyright Act, to delist the infringing website from the search results appearing on Google.
This is a particularly attractive option for brand owners that are suffering loss to their business from customers searching for their products on Google and being duped into believing an infringing domain is connected to the brand owner. It has fast results but again does not deal with the problem in its entirety.
DOMAIN NAME COMPLAINT
If the above options prove unsuccessful, brand owners might consider starting domain name recovery proceedings using the relevant domain name complaint process (eg WIPO, Nominet, or other national registries). This process can cover multiple domain names registered to the same person.
Before embarking on a domain name complaint with Nominet, it can prove very beneficial to first check whether the registrant’s details appear false or incomplete. When Nominet receive notice that a domain has been registered, with evidence that the registrant is using false details, they will contact the registrant, allowing them a period of time (generally about a month) in which to provide correct details. During this time, Nominet will suspend the domain name. If the registrant fails to respond, Nominet will cancel the domain name. This is a very cost-effective method of getting rid of an infringing domain, without needing to go through the dispute process. To succeed in a domain name complaint, the brand owner generally has to prove that the domain name is identical or confusingly similar to its trade mark, that the registrant has no legitimate interest in the name and that it was registered in bad faith.
Again, there is nothing to stop the infringer, if so minded, from registering a new domain name and simply transferring the website to that new domain.
Brand owners must also bear in mind that a successful domain name complaint and subsequent transfer of the offending domain to the brand owner inevitably means an additional financial cost in maintaining the recovered domain names as part of an overall portfolio. This cost could be quite significant if there are multiple domain names to be recovered, which can be the case for particularly well-known brands.
PURCHASE DOMAIN NAME
It is possible to make an anonymous approach to a domain name registrant, to try to purchase the infringing domain. While this can be a cost-effective solution in certain circumstances, brand owners need to be very careful not to become known for purchasing domain names in such a fashion as this may lead to an explosion of cyber-squatters only interested in extorting transfer funds. Therefore, this approach is best limited to circumstances where the infringement is innocent or where the brand owner desperately needs the domain name in question for commercial reasons.
CEASE AND DESIST LETTER/LEGAL PROCEEDINGS
Legal proceedings for trade mark or copyright infringement are often inappropriate when it comes to online enforcement. Taking proceedings is a very costly option and is only likely to achieve a positive result when the infringer is clearly identifiable, there is solid evidence of infringement and the infringement is on a wide enough scale.
If the target is based in the UK, there is the option of using the new small claims track at the Patents County Court, which provides for a more cost-effective way of dealing with infringers, with a cap on damages of £5,000 (due to be increased this year to £10,000).
If considering legal proceedings, a letter before action, in the form of a cease and desist letter with undertakings, is needed. The advantage of sending this letter, if it works, is that the brand owner will obtain signed undertakings from the registrant not to infringe their IPR in the future, as well as to transfer the domain name in question. This provides the brand owner with the opportunity to sue the infringer for breach of contract if there are any further infringements.
However, online infringers are notoriously difficult to contact or negotiate with and often it can be difficult to pin down the actual entity behind the website so it is not always a worthwhile option.
DOMAIN WATCH SERVICE
There are a number of service providers who will monitor the registration of new domain names that are identical or similar to a trade mark. The watch service will enable a brand owner to monitor and identify new infringers and other problematic domain names as soon as possible and should certainly be considered as part of an overall enforcement strategy.
Google alerts in relation to a particular trade mark will provide the recipient with information every time the trade mark is used on the internet. However, depending on the popularity of the trade mark, this service ought to be used with caution as the information received can be so voluminous as to outweigh its potential value.
GENERIC TOP-LEVEL DOMAINS
The introduction of generic top-level domains (gTLDs), which is due to happen later this year, will create further considerations for brand owners in enforcing their rights online. Given the many enforcement issues already faced by brand owners, the new gTLD system, while it may have benefits, will likely add an additional layer of monitoring and enforcement woes for brand owners to be aware of, and indeed an additional cost.
Brand owners that do not see a sufficient business case for registering their own gTLD, or do not wish to incur the additional expense of doing so, should be aware of the objection mechanism whereby they can object to the registration by a third party of a gTLD that infringes their trade mark.
A brand owner that is serious about protecting its brand online will need to put together a comprehensive strategy that incorporates the above enforcement options. In developing a strategy, the brand owner needs to consider how the internet is used by its business, as strategies will vary from one brand owner to the next, depending on the product or service on offer and the geographical spread of the business.
Once an effective strategy has been put in place, brand owners can identify and prioritise the infringements that are proving most detrimental to their business, thereby using their strategy in a way that provides return on its investment. The more systematically and consistently the strategy is applied, the better the protection it will provide for the brand. This will ultimately lead to far more success in mitigating loss of revenue and brand dilution through the internet.