This article was first published in the World Trademark Review magazine on 27 May 2021.
When it comes to infringement in the online space, brand owners have a multiplicity of actions at their disposal. If the domain name infringes on a trademark in the domain string, most brand owners would pursue domain arbitration. However, before launching a domain dispute, they can take steps to try to resolve the matter amicably. A formal cease and desist letter notifying the infringer of existing trademark rights can go a long way to retrieving a domain name.
Alternatively, other actions are possible to stop an online threat that causes issues for brand owners and their customers. Those actions are known as ‘takedowns’. While a takedown notice may be based on various grounds, the main purpose is always to seek the removal of the website content or the suspension of the domain name at issue.
Takedowns are an effective solution for certain types of infringement but should always be used as part of a brand owner’s overall enforcement strategy. It is also important to remember that each case is unique; therefore, the approach must be tailored to increase a takedown’s chances of success.
Takedowns can bring immediate relief for brand owners by removing a serious threat from the Internet. For example, if a domain name has been used to send phishing emails to employees or clients, the best course of action is to first demand the suspension of the domain name at the concerned registrar. With proper evidence, most registrars will comply with a takedown request based on phishing grounds, which may result in the suspension of the domain name.
The suspension of a domain name will prevent registrants from adding content to it and will disable emails. In this way, brand owners can take immediate action on a domain name that is considered high risk. However, if they also wish to retrieve the domain name and ensure that it will not be used again for fraudulent activity, the next step is to launch a domain dispute. Research suggests that domains that were previously used for phishing activity are highly likely to be used in the same manner in future. Initiating domain arbitration will enable a brand owner to secure the domain name and prevent it from being used illegally again.
Phishing is not the only form of brand abuse online. Selling counterfeit goods is another major issue for brand owners. Often, when a person tries to sell counterfeit goods, they will use copyrighted images taken from a brand owner’s website. However, initiating a takedown based on counterfeits can be complex and, without evidence to corroborate the claim, most registrars and internet service providers (ISPs) will not take action. Therefore, brand owners should focus on copyright infringement when possible.
A copyright takedown notice is often more straightforward as specific laws exist in many jurisdictions. If a US ISP is used, a Digital Millennium Copyright Act notice should be sufficient to remove the content. In the European Union, a similar safe harbour provision exists under Article 14 of the EU Electronic Commerce Directive (2000/31/EC). Under these laws, ISPs will not be found liable if, upon obtaining actual knowledge of illegal activity, they act quickly to remove or disable access to the information. This prompts most providers to act on any takedown notice that they receive.
The URS is another mechanism that brand owners can use to obtain a domain name suspension. The URS is a more formal action than a takedown, which relies more on the goodwill of the provider to take appropriate action. The URS is reserved for clear-cut cases of domain abuse and therefore extremely quick. A complainant can obtain a domain name suspension for the remainder of its registration period in about 21 days. This suspension can also be extended by one year if requested at the time of filing. Therefore, the URS can be a good option to consider when the domain itself infringes a trademark.
Although takedowns are an efficient solution to stop an immediate threat to a brand, they should be carried out in combination with other legal measures when it comes to online infringement.
Even if a takedown can provide immediate relief for a brand owner, it should be seen as a temporary action and primarily used to supplement legal action.
When performing a takedown, brand owners should know who to contact. In most cases, the ISP is the go-to provider to contact when it comes to copyright infringement. ISPs control content and can act quickly to remove the content of a website.
Registrars may also take down domain names for illegal content voluntarily. However, they will need a solid legal basis to do so. Indeed, registrars are not deemed responsible for content appearing on domain names registered with them. That being said, many registrars have specific provisions in their terms and conditions that cover illegal domain use (eg, phishing, malware or spam). With tangible evidence of unlawful use, registrars are more likely to suspend the domain name at issue. However, they are cautious when doing this to avoid any liability claim in the case of a wrongful takedown.
Therefore, it can be complicated and time consuming for brand owners to identify the relevant provider to deal with their issue. For this reason, it is essential to hire experts in the field who understand the domain name system.
Takedowns can also be tricky for other reasons. The jurisdiction of the provider is of paramount importance. Some jurisdictions may not be as cooperative when it comes to enforcement, unless it based on a court order. For this reason, brand owners may become frustrated with the amount of time and effort involved.
Thus, if the domain name also infringes on a brand, the UDRP can bring the relief that the brand owner needs. It is a relatively quick and inexpensive procedure, and the brand owner can secure the domain name in its portfolio in about two to three months.
Finally, if a brand owner enforces its rights through takedowns alone, the number of infringements is unlikely to decrease. The simple reason is that when sending a takedown notice, the registrant of the domain name is not contacted directly. As soon as a website has been taken down, it is easy for the domain owner to change the ISP and restore the content. Alternatively, if a domain name has been suspended, the domain owner will likely register more domains to continue carrying out its fraudulent activity, especially if it profits financially from this. The best way to stop this from happening is to initiate legal action and take the domain names away from infringers permanently.
Senior Legal Advisor