A recent story out of Ireland highlights the importance of understanding territorial trademark protection requirements when registering trademarks—both at home and abroad.
Techdirt and The Spirits Business recently reported about Leo Mansfield, an entrepreneur from Northwestern Ireland who opened a retail outlet in Clifden, Ireland in 2009 called Conn O’Mara, a play on the name of the geographical region where the store is located (CONNEMARA). Since opening his store, Mansfield has decided to produce and sell beer under the store’s name, and filed a trademark application for CONN O’MARA at the Irish Patent Office for beer and alcohol beverages including whisky in Class 32 and 33 (Trademark No. 253618).
U.S.-based Beam Suntory, a subsidiary of Japan beverage behemoth Suntory, filed a notice of opposition at the Irish Patent Office against Mansfield’s CONN O’MARA trademark application citing his trademark’s likelihood of confusion with its CONNEMARA trademark for whisky owned by its locally-owned distillery, Cooley Distillery. Mr. Mansfield has since begun a public relations and petition campaign to contest Beam Suntory’s trademark opposition. Specifically, Mansfield has made statements that CONNEMARA is the name of the geographical region in which his store and the Cooley Distillery are located, and as such, Beam Suntory cannot monopolize use of a geographical region name as a trademark. He has even gone so far as starting a public petition against Bean Suntory’s opposition proceeding.
Mr. Mansfield defense of his store is admirable. However, his story drives home the importance of brand owners understanding differences between trademark protection requirements from country-to-country.
If Mr. Mansfield case had occurred in the U.S., he may have been able to defend against Beam Suntory’s opposition and obtain registration for his trademark. With limited exceptions, the U.S.’ federal trademark act (Lanham Act; 15 U.S.C. § 1052(e)(2)) prohibits registration of a trademark that is “primarily geographically descriptive” of the goods of its owner. As such, Beam Suntory’s CONNEMARA trademark, as used by Cooley Distillery, would not be entitled to protection in the U.S., meaning Beam Suntory likely could not have brought forth an opposition.
Unfortunately, Ireland provides no similar registration restrictions on geographically descriptive trademarks. Ireland’s trademark legislation, the 1996 Trade Marks Act, does not bar registration of a trademark for being primarily geographically descriptive. As such, Bean Suntory’s trademark rights to CONNEMARA in Ireland are not only valid, but will likely prevent Mr. Mansfield from successfully defending against Bean Suntory’s opposition.
What’s The Takeaway? Brand owners wishing to seek trademark protection for their brands in multiple countries need to consider whether their brand names and logos would be entitled to trademark protection not only in their own country, but also in their expected foreign markets of expansion. Working with a qualified trademark attorney with multi-jurisdictional strategizing experience can help to ensure differences in trademark protection across jurisdictions are taken into consideration.
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.
After eight years of negotiations, it was reported on Monday, October 5, 2015, that a final agreement to the Trans Pacific Partnership (TPP; Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States and Vietnam) was reached. While a final text of the TPP agreement has yet to be released, and is reported to not be available for at least another month, some TPP member state governments have provided some details concerning the TPP’s IP provisions.
Ars Technica reported that New Zealand government officials announced that the TPP agreement will require New Zealand to extend its copyright protection term from life of the author + 50 years to life of the author + 70 years, thereby requiring New Zealand to adopt copyright protections beyond minimum requirements provided in existing international copyright treaties such as the Berne Convention for the Protection of Literary and Artistic Works and the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
Despite the potential expansion of copyright protections under the TPP, such reporting also revealed that the TPP agreement will not require New Zealand to adopt stronger Internet Service Provider (ISP) enforcement provisions against repeat copyright infringers. According to the reporting, New Zealand will not be required to adopt a “six-strike” enforcement program, namely requirements mandating that a New Zealand ISP terminate an infringer’s Internet account after six cases of reported copyright infringement, as established amongst many U.S. ISPs.
It remains unclear whether all TPP member states will be required to adopt these copyright protections, as well as what other mandated IP protections are included in the TPP. Further information about the TPP’s IP chapter and its implications on TPP member states will be reported here once available.
For those who did not have a chance to attend my January 20, 2015 presentation Online Copyright and Trademark Enforcement in the U.S. and Abroad, the Washington State Bar Association International Practice Section’s Blog, The Global Gavel, has provided a summary of my presentation. It overviews the main issues discussed and key takeaway points. Those with further questions should feel free to contact me.
A link to the presentation summary can found here.