NETNAMES
aware of cybersquatting but takes no action, then they could be found liable for the consequences. Tis has significant implications that trademark owners should be aware of.
WIPR: When dealing with cybersquatters, what courses of action can be taken?
C.G.: When new gTLDs and ccTLDs are launched or the registration requirements are liberalised, most registries offer a series of launch phases to protect the rights of trademark owners. Registries usually implement one or more of the following phases:
First phase: Trademarks owned in the local country/region are prioritised. Tey must oſten be registered by a set date.
Second phase: All trademark owners may make registrations.
Third phase: Available to those that can prove an existing relationship with the domain such as already owning an identical .com domain or other key gTLDs or ccTLDs.
Fourth Phase: General availability.
Tis process provides trademark owners with the opportunity to protect their brand names before cybersquatters can cause problems.
A.C.: However, there are several options available to brand owners that are faced with cybersquatting. Brand owners should open negotiations with a cybersquatter already in possession of a trademark- infringing domain. Tis oſten provides a quick and low-cost resolution to the dispute. Brand owners can either choose to undertake the negotiations themselves or engage the services of a domain acquisition consultant. By using a third party, the trademark owner can remain anonymous, which can help keep the cost of the domain down.
WIPR: How are disputes solved if negotiations break down?
A.C.: Formal dispute proceedings should begin with a cease and desist letter, requesting the domain to be returned to the trademark holder. If this is unsuccessful, then trademark owners can turn to the Uniform Domain Name Resolution Policy (UDRP).
Te UDRP allows trademark owners to arbitrate certain claims against a domain name registrant before an approved dispute resolution service provider. Te Internet Corporation for Assigned Names and Numbers has set criterion for what it calls “evidence of registration and use in bad faith”. Complaints must be submitted to an approved dispute-resolution service provider.
Trademark owners should consider skipping the UDRP stage if they believe the cybersquatter
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may file an appeal against an adverse UDRP ruling. Te cybersquatter has up to 10 days to file a lawsuit to prevent the transfer or cancellation of the disputed domain name.
Te next option open to a trademark owner is the filing of a lawsuit. A trademark attorney can allege violations of the Anti Cybersquatting Consumer Protection Act (the ACPA) or other laws in the Federal Court on the trademark owner’s behalf. Te ACPA, which was introduced in 1999, is intended to give owners of trade and service marks legal remedies against defendants who obtain domain names in bad faith that are identical or confusingly similar to a trademark or service mark. A trademark owner should also use the ACPA if they are looking to win damages in addition to acquiring the domain name.
WIPR: What can be done to protect brands online?
C.G.: Te rapid release of new gTLDs coupled with the liberalisation of ccTLDs means that trademark owners are continually presented with new opportunities as well as new threats. Trademark owners are advised to create and implement a domain strategy for their company. Tis can involve:
• Registering domains for a company name, brand names and associated keywords in .coms, relevant ccTLDs for primary markets, and relevant regional and sponsored TLDs such as .eu or .travel
• Registering domains for new products, campaigns as well as potential new markets to protect brands in advance
• Creating a ring of protection for brands by registering well-known acronyms, shortenings and common typos of brand names and products.
Representatives from the legal, marketing and information technology departments as well as a member of the executive team need to be involved to make a domain strategy comprehensive. Te strategy needs to evolve as industry developments occur. A domain name expert can provide ongoing strategic advice to help maintain an effective strategy.
A.C.: There are also a wide range of online brand protection products that can scour the Internet for trademark infringements. A monitoring and alert system can notify a trademark owner every time a domain is applied for that contains their brand name. Tis can highlight an attempt to set up an abusive website, such as
CompanyNameIsRubbish.com.
Delving deeper into websites to detect further trademark infringements is also possible. Tese products look for the use of a brand name in a website’s meta-tagging or for a brand name
Andy Churley is experienced in the fields of reputational risk, IT security and knowledge management. He is a chartered engineer, a European IT professional and holds a Bachelor’s degree in engineering and a Master’s degree in business administration.
with specified keywords on website pages. Image-monitoring technologies can detect the infringement or abuse of company logos. Tis can help to detect phishing, counterfeiting or those looking to gain advantage through association.
Reputation monitoring is also worth pursuing. Customers, competitors, shareholders or disaffected employees can all post negative comments online that can have a noticeable effect on a brand’s public perception and its revenues. It is impossible to manually monitor all the blogs and forums where this might occur, but there are a variety of technologies and automated solutions for trademark owners to achieve this and protect their reputations online.
Adam Churley is head of products for the corporate brand management division at Group NBT, which includes NetNames. He can be contacted at:
andy.churley@
envisional.com
Chloë Garrett is marketing manager at NetNames, a division of Group NBT. She can be contacted at:
chloe.garrett@
netnames.com
Chloë Garrett has focused on developing knowledge and expertise in the field of online brand protection issues during her marketing career. Garrett holds an honours degree in politics and a professional diploma from the Chartered Institute of Marketing.
World Intellectual Property Review September/October 2010
71
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