As the internet’s role in business continues to grow, so too does the risk of online infringement of IP. One form of such infringement is referred to as domain name infringement. A domain name is an address used to access a website and it is becoming increasingly commonplace for people to register a domain name that infringes on a protected trade mark.
From a trade mark perspective, issues mainly arise in scenarios where the domain name includes a registered trade mark, or a sign confusingly similar to a registered trade mark, and the domain name resolves to a website that may also use the trade mark but which certainly includes content that is the same or similar to that offered under the registered trade mark. The third party website is, in turn, being used in a damaging way or in such a way as to divert traffic from the legitimate trade mark owner’s website.
So what can a trade mark owner do if they come across domain name infringement? For immediate action, take down notices are often employed, but for more permanent resolutions issuing cease and desist letters and, or, launching a domain name dispute are recommended. These various options are discussed in further detail below.
Takedown Notices
Takedown notices can be sent to the domain’s administrative body or webhost, typically through the completion of online abuse complaint forms. The main purpose of a takedown notice is to seek the removal of website content or to suspend the domain name at issue. Once a domain name is suspended, the registrant will be prevented from adding content to the website and emails linked to the domain name will also be disabled. This can be extremely helpful as it serves to buy the trade mark owner some time.
However, the trade mark owner will not be able to retrieve the domain name and prevent its future use with a takedown notice. To do this, a domain dispute needs to be initiated. With a takedown notice, the domain name owner can in time re-register the domain name or re-activate the infringing website and potentially continue its infringing activities. Additionally, in our experience, some administrative bodies and webhosts are less co-operative than others, and the process can become a frustrating loop of contacts and referrals from them.
The 2013 Registrar Accreditation Agreement (RAA) requires ICANN-Accredited registrars to:
1. Maintain an abuse contact to receive abuse reports;
2. Take reasonable and prompt steps to investigate and respond to abuse reports;
3. Publish on the registrar's website a description of its handling of abuse reports; and
4. Provide an abuse email address and telephone number in Whois results.
Despite these requirements, registrars are often reluctant to permanently remove infringing domain names, typically only suspending them temporarily or pending a UDRP complaint. Only in cases of clear and blatant IP infringement on major platforms, such as Meta or Etsy, have we seen more consistent success with takedown notices.
Therefore, in the context of domain name infringement, while takedown notices are inexpensive and easy to complete, they tend to only offer a temporary solution and usually need to be followed up with a more permanent solutions such as a domain dispute.
Cease and Desist Letters
Issuing a cease and desist letter is also an option for handling domain name infringement. A cease and desist letter can request a number of undertakings from the infringer including, for example, the cessation of all current activities under the domain name and the transfer of the domain name to the trade mark owner.
However, there are two main issues with the effectiveness of cease and desist letters, as follows:
Privacy protections: The first issue with cease and desist letters is that it can often be difficult to identify the owner of a domain name. The governing authority that oversees domain names (the Internet Corporation for Assigned Names and Numbers or “ICANN”) allows companies to offer privacy protection services to a registrant to shield their contact details. On this basis, it can be difficult to locate an individual/entity that should be sent the cease and desist letter.
Non-responsiveness: A second issue is that in most cases, domain name owners tend simply to ignore cease and desist letters, meaning further action down the line is required, in any event.
Thus, while sending a cease and desist letter is a good way to strengthen a potential future cause of action, it rarely serves as a means to stop infringement on its own.
Uniform Domain Name Dispute Resolution Policy (UDRP)
In our experience, the UDRP has been the most effective approach to resolving domain name infringement. The UDRP is administered by the World Intellectual Property Organization’s (WIPO) specialist Arbitration and Mediation Center. It is designed to solve conflicts between a domain name registrant and a trade mark owner, often on an international scale. The procedure is available in disputes where a party claims there has been an abusive registration of a domain name. To challenge a domain name registration, the party/complainant must show that:
1. The domain is confusingly similar to a registered trade mark;
2. The registrant has no legitimate interests in the domain name; and
3. The domain is being used in bad faith.
The case is then adjudicated on by a panel of experts in the area of domain names who can order that the domain name be transferred to the trade mark owner or cancelled, or, alternatively, retained by the domain name registrant.
The biggest advantage of the UDRP procedure is that it can prevail where cease and desist letters or takedown notices fail. Domain registrars tend to avoid making the decisions themselves on whether a domain should be removed, and instead wait for a decision to be made by a superior body, such as WIPO. Further, it is a cheaper alternative to taking legal action and it is relatively speedy, usually lasting no more than three months.
If either party is not satisfied with the outcome, they may escalate the case to the competent national court in which local laws will be applied. It is also possible to submit a case to the national courts, though this approach is usually more time-consuming and costly.
Final Thoughts
Not all cases of domain name infringement are the same. Some cases require persistent and concerted efforts, particularly if it is not a clear-cut case. In most cases, the UDRP procedure will be the most effective way to stop third party use of a registered trade mark or a sign that is confusingly similar to a registered trade mark in a domain name and on its associated website. However issuing cease and desist letters and takedown notices can also be helpful and certainly assist in substantiating claims of bad faith as may be required in subsequent actions taken against the infringer.
If you are experiencing any of the issues mentioned above and need assistance with cease and desist letters, takedown notices, or filing a UDRP complaint, please don’t hesitate to reach out to us at dublin@frkelly.com. We have considerable experience in all of these areas.
