In today’s digital age, branding and intellectual property can be a business’s most valuable asset. With the rise of online businesses, ‘cybersquatting’ and online trade mark infringement have become increasingly prevalent, meaning securing legally registered rights in your brand from the outset is especially important. However, this is often just the first step, as businesses must also enforce those rights. Whether that may be against someone registering a domain name that mirrors your brand or using your trade mark without permission, the internet has become a battleground for brands big and small.
In this article, we explore some strategies for defending your trade mark/brand rights online, especially when the potential infringing party may be located in a foreign country.
Cybersquatting
Cybersquatting is the registration of a domain name using a trade mark or confusingly similar name without the legitimate rights to do so. The Uniform Domain-Name Dispute Resolution Policy (UDRP) (established in 1999) is an international dispute resolution mechanism for resolving issues relating to cybersquatting. This is especially beneficial when the registrant of a domain is located in a foreign country.
The UDRP process is typically completed within 60 days of the World Intellectual Property Organisation (WIPO) receiving a complaint.
When making a complaint to WIPO regarding a domain name you must be able to establish that:
- the domain name is identical or confusingly similar to your mark;
- the domain name owner has no legitimate rights of its own; and
- the domain name has been registered in bad faith.
Some examples of bad faith include situations where the domain name was registered:
- to prevent the rightful owner from using the mark in a corresponding domain name;
- for the purpose of disrupting the business of the rightful owner; or
- in order to redirect traffic to its website by creating confusion with the rightful owners trade mark.
For New Zealand domain names (i.e. domain names ending in .nz), the Domain Name Commission (DNC) has a dispute resolution scheme.
Similar to the UDRP process, to object to the use of a domain name you must be able to show that:
- the domain name is identical or similar to a name or mark in which you have rights; and
- the domain name, in the hands of the registrant, is an unfair registration.
Unfair registration under the DNC scheme rules means the registration:
- took advantage of, or was unfairly detrimental to, the rightful owners rights when it was registered or otherwise acquired; or
- has been, or is likely to be, used in such a manner which is unfair.
For example, a domain name registration may be classed as ‘unfair registration’ if:
- the person using the domain name is using it in a way that is likely to confuse, mislead or deceive people or businesses into believing that the domain name is registered to, or connected to the rightful owner; and
- the registrant has knowingly given false contact details to a domain registrar.
Additional options for dealing with online intellectual property infringement
When dealing with online intellectual property infringement, there are several other options available in addition to formal legal action, including:
- filing a complaint with the domain host or registrar of the infringing website, as they often have policies in place to address trade mark or intellectual property violations;
- contacting platforms such as Amazon which offer streamlined processes for brand owners to report intellectual property infringements through their Brand Registry program; and
- submitting complaints directly to social media platforms to have infringing content removed.
These methods may provide quicker resolutions to prevent further damage to your brand’s reputation and can be a helpful starting point when dealing with businesses or individuals located in foreign countries, where legal proceedings may be more complex or costly to pursue.
If you are dealing with a cybersquatting issue or potential intellectual property infringement, our team can provide you with some practical guidance.
Disclaimer
This article is provided to assist clients to identify legal issues on which they should seek legal advice, and by its nature cannot be comprehensive and cannot be relied on as advice. Please consult the professional staff of Lane Neave for advice specific to your situation.
