How To Trademark | "Changing with the cybersquatters: the evolution of brand protection"

By :  Helen Sloan 
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Category : How To Trademark 

Domain name disputes continue to rise, according to a study recently published by Sweet & Maxwell, with disputes adjudicated at WIPO hitting a record-breaking 2,944 per annum in July this year (a 6% increase on last year). This news comes as no great surprise to trademark practitioners, who have experienced the steady increase of cybersquatting first hand. But while these figures will be worrying news, brand protection strategies are evolving to fight the ever-changing threat posed by cybersquatters.

For Silverberg, Goldman & Bikoff’s James Bikoff, the rise is a natural result of brand and copyright owners responding to “the increase in online shopping and the offering of counterfeit goods and pirated content on websites, many of which originate in China”. In addition Jane Seager, from Hogan Lovells in Paris, notes that cybersquatters - including those from China - are becoming not just more numerous, but also more sophisticated: “They are well aware of how to make life difficult for brand owners by not providing them with a ‘slam dunk’ case, for example by using a number of different aliases and regularly moving their portfolios around so as not to build up a pattern of obvious bad faith - meaning that they do not hold any other infringing domain names in that particular registrant’s name or have any prior decisions against them.”

Today’s cybersquatters are also savvy enough to utilise all means at their disposal to make it look like they have registered the domain in good faith: Seager cites the tactic of claiming that they have used a nickname or pet’s name: “This is often enough to create a doubt in the mind of a panellist, especially as disputes filed under the UDRP are supposedly only intended for clear cut cases of cybersquatting.”

Susan Okin Goldsmith, partner at SorinRand LLP, has also seen domain name cases become more complex and nuanced. “Cybersquatting is increasingly seen as a form of identity theft. I had one case where the client’s entire website was copied by cybersquatters, right down to the page where customers entered personal information and credit card numbers.” She expands:“My clients tend to be more in the B2B or industrial spaces, or they have software products, rather than offering consumer goods and it is a very serious problem for them, especially when people fraudulently pass themselves off as an employee, representative or branch office of a well-known company. We had a case where someone was using our client’s name and logo to set up a competing industrial service in another country. That’s a bit different from the problems encountered with fake goods but just as serious – maybe more so from a liability and reputational point of view.”

So what can trademark owners do to protect themselves? The temptation to purchase potentially infringing domains held by others is something that needs to be carefully considered, Seager warns: “In the long term it only creates more problems for brand owners, who may find themselves with a reputation amongst cybersquatters for buying domain names. This then encourages cybersquatters to register yet more variations in the hope of a windfall gain. Thus it becomes a false economy for the brand owner.”

Registering as many defensive strings as budget allows remains advisable; however, this can only go so far: it would be impossible (not to mention exceptionally costly) to cover every possible permutation of every brand name. So registration needs to be combined with efficient watching services to nip infringers in the bud sooner rather than later.

Yet despite the difficulties involved, it is not all bad news for brand owners and, as Bikoff points out, there are a number of options available: “Our clients are pursuing a range of remedies at this time. From cease and desist letters with demands for domain name transfer to takedown requests to registrars and content hosts. We also engage in UDRP and ACPA litigation and work with government agencies such as ICE and the other federal agencies on criminal investigations and prosecution. Registrars, registries and content hosts are more cooperative today in quickly disabling websites selling counterfeit goods and pirated works. Also, payment providers and advertisers are more likely to take voluntary action against cybersquatters.”

Goldsmith notes that technological developments mean that trademark practitioners also have the benefit of additional information to act upon: “In some ways, it is actually easier now to find the types of infringers encountered by my clients. In the old days you just had to hope you learned about the guy who had business cards or brochures made up with the client’s logo. People now put it all out there, because if you don’t have a website, you don’t exist. So in addition to standard trademark watches, I also have search engine feeds and we watch internet references.”

She concludes with a reminder that businesses should not lose sight of the fact that some of their best weapons in the fight against domain name squatting are right under their noses. “I also try to raise company awareness on the ‘see something, say something’ model because a vigilant employee out in the field is the best watch service of all.”

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