The Internet provides an unrivalled method of communicating with customers, but it can all too easily be exploited, says Janet Satterthwaite of Venable LLP. The answer is a sensible domain name and search engine policy that monitors for misuse of your IP.
The success of the Internet has allowed today’s businesses to more readily interact with their target audiences, to freely provide information about their brands and corporate set-up and, in many cases, to sign up customers or sell goods, at the touch of a button; however, it has also opened businesses up to the threat of cyberpiracy, brand infringement and, more recently, phishing and pharming. Without a tailored domain name and digital content policy that monitors and protects against these risks, you may be opening your products and services up to infringement.
Protect your domain names
Cyberpirates, also known as cybersquatters, register variations of your brand in order to generate profit by driving traffic to their own websites or from selling the names for a profit. Competitors and pirates can also misuse your brand in order to gain favourable search engine placement.
Thanks to the ICANN Uniform Dispute Resolution Policy (UDRP) and other tools, brand owners can recover domain names with relatively little expense. In clear-cut cases, it takes experienced counsel only a few hours to prepare a complaint that establishes the brand owner’s rights and shows why the respondent registration was registered and used in bad faith. If the case is not a clear case of cybersquatting, then a court action may be advisable, as the UDRP is not set up to handle cases where each side may have a valid argument.
But, as quickly as one threat is dealt with, another emerges. ‘Automated registration programs’, many of which are US-based, are proving to be the latest cyberpiracy trend. These programs seek out popular websites, create variations of the domain names, and register them. They then generate a web page with links to websites with related topics – a profit-generating drive because many of those legitimate linked sites pay per click for traffic to be driven to their sites via these links. These companies tend to change aliases in WHOIS, but those of us who deal with cyberpiracy every day generally are aware of who they are.
Brand owners should work with their domain name management company and IP counsel to develop a strategy that works best for them
In addition to the UDRP and various country-code top-level domain name (ccTLD) DRPs, some national laws may also be available. for example, the US Anticybersquatter Consumer Protection Act may be used to recover almost any generic top-level domain name (gTLD). Since the underlying registries for all top-level domains are located in Northern Virginia, the court here has ultimate control over every name. The Digital Millennium Copyright Act can, in the right circumstances, be used to shut down a pirate site.
Monitor search engines
For most brand owners, the new frontier is search engines. Anecdotal experience suggests that consumers do not try to guess the correct domain name, but go directly to a search engine to find it. As a result, Google and other search engines are selling brandowners’ trademarks to competitors, so that when searching for brand A, a consumer may encounter a ‘sponsored link’: for brand B, the competition.
International courts are inconsistent on whether a brand owner can successfully block Google from selling its trademarks to third parties. The French Courts have had no trouble ruling that this was trademark infringement and ordering Google to stop; as in the case of hotels Méridien v Google France in early 2005; however in a US case brought by Government Employees Insurance Company in 2005, a federal court ruled that the sale of trademarks by Google was not trademark infringement per se.
Keep up-to-date with the latest threats
Brand owners should work with their domain name management company and IP counsel to develop a strategy that works best for them. The management company will have policing tools while the outside trademark counsel will be knowledgeable about which ccTLDs are a problem, the latest cyberpirate trends, watch services and the most up-to-date practices on developing and running a domain name management strategy.
‘Good domain management suppliers will have an understanding of IP and their clients’ requirements, as well as a comprehensive online delivery tool to expedite them,’ explains Dominic Speller, domains specialist, at CPA. ‘They should also be able to tailor access for all of the different stakeholders involved in digital content management. Accessing only the pertinent information required for each job function can be complex, but the domain name management supplier should understand who all these stakeholders are and be able to support them across a potentially intricate relationship structure.’
The general consensus among brand owners with well-developed domain name management strategies is to register the names you need and perhaps a few strategic defensive registrations. When you spot infringement, take immediate action.
This article first appeared in IP Review, issue 15
