Co-Authored By Josie Isaacson, Gonzaga University School of Law, J.D. 2015.
As the Internet has arguably become the main venue for global commerce, and as domain name registration becomes even more user-friendly, it comes as no surprise that trademark owners and right holders are facing an ever-increasing battle against foreign domain name infringement.
Facebook recently faced and effectively overcame this problem. A U.S. representative of the Ghana-based social networking website Ghana Nation, registered a similar domain to Facebook’s name (facebookghana.com). When Internet users accessed the website utilizing the domain, they were redirected to Ghana Nation’s website. After failed attempts to privately acquire the domain, Facebook filed a Uniform Domain Name Dispute Resolution Policy (UDRP) arbitration complaint against the registrant at the World Intellectual Property Organization’s (WIPO) Arbitration and Mediation Center.
In this UDRP arbitration proceeding (Facebook Inc. v Host, Case No. D2015-1057 (WIPO Aug. 14, 2015), Facebook provided conclusive evidence of their rights to the domain name and that bad faith use of the domain occurred. This included: (a) evidence of the well-known recognition of the FACEBOOK trademark around the world; (b) registration of the FACEBOOK trademark in multiple countries, including the United States, the European Union and Ghana; (c) evidence of the ownership of several Facebook-related domains across multiple top-level domains (e.g., facebook.biz and facebook.org) and multiple top-level country extensions (e.g., facebook.us and facebook.eu); (d) evidence that the registrant had no affiliation with Facebook; and (e) evidence showing that the registrant used the domain to take Internet users to a competing social media platform. Based on this evidence, the WIPO Administrative Panel warranted a transfer of the domain from the registrant to Facebook.
As Facebook’s recent cross-border domain name dispute illustrates, trademark owners or rights holders need to take important measures to protect themselves against foreign domain name infringement. However, before digging into what steps they can take to protect themselves against such acts, it is important to first understand how domain infringement occurs and the available enforcement tools to protecting trademarks from foreign domain name infringement.
How Does Domain Name Infringement Occur?
Unlike other forms of trademark infringement, domain name infringement, whether in a domestic or foreign context, occurs in three specific ways: cyber-squatting, typo-squatting, and domain name confusion.
Cyber-squatting is where a person or entity registers a domain of a famous or already existing trademark before the actual trademark owner or rights holder is able to register that particular domain. The registrant (squatter) does this usually in an attempt to sell the domain (or extort) t0 the trademark owner when the owner eventually wants to use or acquire rights to the domain, or when the squatter’s use of the domain leads to divergent Internet traffic towards the squatter’s domain website. The British Broadcasting Corporation (BBC) faced foreign-based cyber-squatting in 2000, when a U.S. entity who had a history of buying up confusingly similar domains to known company names and brands (e.g. www.chasevisa.com and www.yahow.com) registered the domain www.bbcnews.com before the BBC had the chance to acquire the domain.
BBC brought a WIPO UDRP proceeding against the registrant that same year (British Broad. Corp. v. Data Art Corp., Case No. D2000-0683, WIPO Sept. 20, 2000). Despite the fact that BBC did not register the domain first, BBC’s extensive worldwide use of the BBC NEWS trademark for decades firmly established BBC’s trademark rights to BBC NEWS. Further, the fact that the registrant purchased the domain long after BBC had been using the BBC NEWS mark worldwide, and as the registrant had a history of purchasing domains that were confusingly similar to well-known trademarks, the WIPO Administrative Panel was able to establish that the registrant had no legitimate interest to the domain, granting its transfer to BBC.
Typo-squatting is where a registrant registers a very similar or misspelled version of a famous or already existing trademark, preying on the common mistakes Internet users make when typing a domain name address. Microsoft has combatted foreign typo-squatters multiple times, including their 2004 WIPO UDRP proceeding against a U.K.-based squatter over the domain micorosft.com (Microsoft Corp. v. Macafee, Case No. D2004-0027, WIPO Mar. 1, 2004). As in Facebook and BBC’s proceedings, Microsoft was able to establish their rights to the MICROSOFT trademark through trademark registrations in multiple countries, domain name registrations including MICROSOFT across multiple top-level domains, and the registrant’s history of registering confusingly similar domains similar to existing brands. As such, Microsoft prevailed over the domain registrant and won rights to the domain name.
Domain Name Confusion
Domain name confusion can occur when two entities have the same name or when a parody site registers a famous mark as a domain name before the actual famous person or entity can register it. Although not cross-border focused, a good example of such confusion is the U.S. case of People for the Ethical Treatment of Animals, Inc. (PETA) v. Doughney, 113 F. Supp. 2d 915 (E.D. Va. 2000), where the actual PETA organization brought suit against a parodist registrant who operated the website “People Eating Tasty Animals.” The registrant lost on parody grounds, and the domain was transferred to PETA, because the PETA trademark was used in the domain name and the parodist page did not simultaneously appear to Internet users–meaning Internet users would be confused between the domain names of PETA and parodist.
How Do You Combat Foreign Domain Name Infringement?
Now that you know how domain name infringement occurs, it is important to now look at what steps a trademark owner can take to prevent such acts.
Prior to taking more formal resolution procedures, such as initiating a UDRP arbitration or legal proceeding, a trademark owner can send a simple demand letter to prompt a domain registrant to transfer a similar or confusing domain to the trademark owner. A formal settlement agreement can help to ensure the transfer of a domain to the business or trademark owner if the registrant consents to the transfer. However, if the registrant refuses to transfer the domain, the trademark owner would need to proceed with more formal domain name dispute resolutions, as provided below.
The UDRP is the main dispute settlement tool to combat foreign domain name infringers by facilitating a streamlined, multi-jurisdictional, and often less expensive dispute resolution process. It was adopted by the Internet Corporation for Assigned Names and Numbers (ICANN; a non-profit corporation that manages the Internet’s domain name system), as a way to simplify domain name disputes, by creating one set of rules that every domain registrant must follow. UDRP arbitration can be sought by a trademark owner or rights holder through WIPO’s Arbitration and Mediation Center (as shown in cases above) or the National Arbitration Forum. The benefits of the UDRP are that it offers a speedier and cheaper option to obtain dispute resolution over a domain, through streamlined evidentiary and procedural processes, with the flexibility of allowing a trademark owner or rights holder to seek enforcement through national legal systems.
However, the UDRP has potential downsides as well. The only remedy available from a UDRP proceeding is either the transfer or cancellation of the disputed domain name, disallowing the recovery of damages. Further, as a UDRP panel does not have to follow strict precedent and has a relatively less-defined evidentiary standard, the UDRP arguably has more unpredictable outcomes than litigation. Lastly, as the parties to a UDRP proceeding can always seek litigation, a UDRP arbitration proceeding may be a non-permanent dispute resolution measure.
So if you choose a UDRP proceeding, what must a trademark owner or rights holder prove to have an infringing domain name transferred or cancelled? According to URDP Rule 3(b)(ix), a successful UDRP complaint must establish three primary elements including that:
- The registrant’s domain name is identical or confusingly similar to a trademark or service mark in which the trademark owner has rights;
- The registrant’s has no rights or legitimate interests in respect of the domain name; and
- The registrant’s domain name has been registered and is being used in bad faith.
While these elements seem straightforward, trademark owners and rights holders should work with a qualified attorney to evaluate the merits of their case prior to initiating a UDRP proceeding.
The final alternative in combatting domain name infringement is litigation. The upsides to litigation include the availability of damage recovery and formal precedent and procedural rules of evidence. The downsides are increased legal costs, longer proceedings, and often jurisdictional issues, especially for cross-border domain disputes. Like UDRP proceedings, trademark owners and rights holders should work with a qualified attorney to evaluate the merits of their case prior to initiating a legal proceeding.
How Do You Prevent Foreign Domain Name Trademark Infringement?
Before seeking these identified enforcement procedures, there are a number of measures a right holder can take to ensure favorable outcomes to any foreign domain name dispute. These include trademark prosecution, domain name registration, and domain name monitoring.
The most important way to prevent foreign domain name trademark infringement is to first acquire trademark rights to the domain name in question. Regardless of the country, trademark registration (aka prosecution) is the most effective way to establish trademark rights as it grants the greatest amount of rights possible to a trademark under a country’s laws, and a presumption of exclusive ownership to a trademark in that country. While it is impossible to know what country (or countries) a potential infringing domain registrant will be located, a trademark owner wishing to prevent foreign domain name trademark infringement should consider trademark prosecution in the countries they offer their goods and services. Beyond a prudent means to protect trademark rights, proof of prior trademark registrations in multiple countries strengthens any domain name infringement case against a domain registrant. As in Facebook’s UDRP action, Facebook was able to establish its rights to the facebookghana.com domain based on its prior trademark registrations for FACEBOOK in Ghana and the United States, where the registrant and their principal was based, as well as other major markets such as the E.U. As with any means of trademark protection, trademark prosecution is an essential protection tool.
Register Domains Early and For All Variations
Registering a trademark as a domain early, including in any popular top-level and country designations, can help to eliminate foreign domain name infringement. In Facebook’s dispute above, early registration of the Facebook trademark in various top-level domains and multiple country designations helped to show that consumers would be confused as to a false connection between Facebook and the infringing domain facebookghana.com. Registering domain names early and across popular top-level and country designations establishes priority in the use of the domain names and starts the growth of an online user base accessing the domains.
In addition to registering domains with the exact trademark, it is also good to consider registering domain names with similar misspellings. Such as with Microsoft, typo-squatters will prey on consumers who incorrectly type a company name like Micorosft. Microsoft’s registering misspelled versions of their name may have prevented their 2004 domain dispute from ever happening.
Domain Name Monitoring
As trademark monitoring services help to detect general trademark infringers, domain monitoring services can help to catch infringing domain registrants. Several service providers offer domain monitoring services, constantly searching for confusing and similar domain name registrations in addition to providing alerts to changes in ownership to specific domains. Such monitoring can help to detect domestic and foreign domain name trademark infringement, as well as help trademark owners strategize the acquisition of domains.
What’s the Takeaway?
In the end, robust trademark prosecution, domain registration, and domain monitoring can help to reduce foreign domain name infringement. If a trademark owner or rights holder does confront a infringing registrant, swift action should be taken to protect trademark interests, including pre-action enforcement, and possible UDRP arbitration or legal action if needed. While most trademark owners do not have Facebook’s resources to fight foreign domain name trademark infringement, most owners can take prudent measures to prevail against foreign domain infringement if the correct steps are taken to secure and enforce domain name and trademark registrations worldwide.
My colleague Rachel E. Buker, blogger for Art and Artifice, and I are giving a presentation for businesses on navigating legal issues online and on social media at The Makers Space at 92 Lenora Street in Seattle on Wednesday, July 9th at noon. It should be a good time and there will be lunch (If you get there quick enough!).
Please RSVP to me at firstname.lastname@example.org if you will be attending. See you there!
Photo courtesy of Abdallah Iskandarani.
Earlier this month, I received a message from WordPress notifying me of the one year anniversary of The IP Exporter. As blogging on cross-border and trade-related IP issues over the past year has had results that I never imagined, I thought I would take this opportunity to take a look back at some of my impressions over the past year.
The outpouring of support and feedback I have received from other legal practitioners and those with an interest in the ever-changing world of cross-border IP protection has been the most remarkable aspect of blogging for The IP Exporter. Attorneys and IP specialists from all over the world have not only read my blog (which is a shock in itself!) and shared it with friends and colleagues, but they actually commented on it and told me that it helped in their research and the actual legal issues they were facing. As a relatively young attorney, I have been heartened by this positive feedback. Also, such communication has led to a number of guest writing and professional legal opportunities that I would not have had without blogging.
Another amazing thing I have found about blogging for the The IP Exporter has been seeing which cross-border IP issues have struck accord with my readers. Each time I blog, I am unsure whether an issue I think is interesting is relevant or important to my readers. Some postings I have made on issues that I think are not earth shattering, such as whether to register a trademark in India under the Madrid Protocol or directly through India’s trademark office (The Controller General of Patents Designs and Trademarks), have been the most read postings I have written.
Lastly, the ability to connect with people throughout the world has made blogging an amazing experience. I never thought people from so many different countries would read The IP Exporter. To date, readers from over 90 countries have read The IP Exporter, and much of my readership comes from places I never expected, such as India, Malaysia and Russia. I am also continually amazed about what I blog or tweet about, much of which takes place in countries on the other side of the globe, have resulted in direct feedback from those in such countries. For instance, when I tweeted in July this year about a story on how a hair salon in Dubai, United Arab Emirates was using promotional materials that were alleged to be confusingly similar to Facebook’s protected branding, I received the above photo soon thereafter by a local resident who found it on his car. Although, it is not a complete surprise that I would receive such feedback in this globalized age, I still find it remarkable.
What’s The Takeaway? Blogging over the past year has been an amazing experience. It has made me grow as a writer and as a legal practitioner. More than personal and professional growth, it has made me realize how large a need there is for people to know more about cross-border and trade-related IP issues. The culmination of these experiences has energized me and my efforts to blog on these topics.
What cross-border or trade-related IP issues are you facing?
Last week, I had the privilege of being a guest writer for Seattle-area based Efinitytech on an article dealing with infringing online advertisements. Although it was focused on combatting trademark infringing online advertising on U.S.-based search engines such as Google, Bing and Yahoo!, as well as U.S. social media sites such as Facebook and Twitter, it contained many of the same considerations trademark owners, and their agents, should consider when combatting infringing online advertisements abroad. However, there are a few additional foreign issues trademark rights holders should consider.
1. Obtain A Trademark Registration. U.S. businesses generally need a U.S. federal trademark registration to submit an advertising complaint to a U.S. online advertising website. A U.S. federal trademark registration establishes a presumption of ownership and exclusive rights in a trademark in the U.S. This gives U.S. search engines and social media sites assurances that a filed advertising complaint is valid.
Additional Foreign Considerations: A trademark registration is also generally required to submit ad complaints in other countries. Many countries do not even recognize a business’ rights in a trademark unless it has registered the mark with the country’s national trademark office. As a result, Google, Bing and Yahoo!, their foreign subsidiaries, as well as many other foreign advertising sites, require that a business have a valid trademark registration in the country where they are filing an online ad complaint. This means that if a rights holder wants to enforce their trademark rights against a foreign ad, they generally have to have a valid trademark registration in that foreign country.
2. Advertising Websites Have Different Trademark Enforcement Reputations. U.S. search engines and social media sites have their own track records for responding to advertising complaints. For example, Bing and Yahoo!’s U.S. sites will often remove an infringing ad upon evidence of a valid U.S. federal trademark registration, while Google U.S.’ site generally declines removing ads infringing a descriptive trademark, even if the mark is federally registered through acquired distinctiveness (aka secondary meaning).
Additional Foreign Considerations: The varied reputations of online advertising sites’ handling of trademark ad complaints are even more disparate at the global level. Many foreign sites have good track records, while others less so. Also, some foreign advertising sites have ad enforcement features that offer benefits beyond those offered on most U.S. websites. For example, China’s leading search engine, Baidu, allows trademark rights holders to register their Chinese registered marks with their representatives in order to prevent others from purchasing infringing ads and ad words on their website. However, like Google, Baidu’s IP enforcement system is imperfect, as it has been criticized in the past for failing to stop the sale of ad words to fraudulent advertisers.
3. Multiple Ad Complaints May Need To Be Filed. Trademark rights holders may need to submit multiple complaints against an infringer before an infringer’s ad appears removed. This can be due to the ineffectiveness of an advertising website complaint system, or more likely because an infringing advertiser has made several ad purchases, requiring the submission of multiple ad complaints in order to effectively remove all of an infringer’s advertisements.
Additional Foreign Considerations: None. Additional complaints may need to be filed for foreign trademark ad complaints as well.
4. Consider The Ramifications Of Filing An Online Complaint. Lastly, submitting an online ad complaint may impact an infringing advertiser’s online reputation as well as the trademark rights holder. Based on these ramifications, trademark rights holders should consider reaching out to alleged infringers, either directly or through an attorney, to see if the disputed ad can be removed amicably.
Additional Foreign Considerations: The consequences of filing online trademark ad complaints abroad is as significant, or even more so, then doing so in the U.S. As I have previously highlighted, countries maintain different beliefs and perceptions towards the legal rights that should be given to trademarks and other forms of IP. In particular, several important and emerging foreign markets such as Canada, Chile and New Zealand disagree with forceful online IP enforcement, as seen in their current rejection of copyright website takedowns. This means that submitting online trademark ad complaints may have similar or even more negative reactions in a business’ particular industry (and among the public) abroad than at home. Based on these circumstances, businesses should feel even more inclined to first reach out to foreign infringing advertisers before they submit online ad complaints.
What’s The Takeaway? As combatting infringing online advertisements has many of the same challenges and considerations in the U.S. as abroad, businesses wishing to protect their brands abroad need to identify the countries where they have or may have significant business and develop strategies to protect against online ad infringement. This requires considering foreign trademark registration, identifying major foreign online advertising websites, and developing processes and procedures to monitor and enforce rights against infringing advertising activity on such websites. Doing so can help businesses to more effectively protect their brands in the foreign markets they wish to grow.