Handsoffmybrand.com: A cautionary tale

With online retail increasing year on year, company websites continue to be one of the most important tools for retailers. Even businesses that don’t sell their goods or services online still use their website as a key vehicle for advertising and business development.

It’s always galling and sometimes fatal to the success of a business when someone else sets up a site using your brand.

If the site uses your brand to sell inferior or cut-price goods or services, or to sell products which don’t fit with the values or ethics of your business, not only may this dilute your own sales, it could also damage your business's reputation and cause a loss of goodwill in the brand. This unlawful action is what lawyers call infringement. So how do you tackle it?

Step one: Identify the perpetrator

  • Look for clues in the content of the site indicating who the owner/registrant of the website is.
  • Carry out a WHOIS search to find the registrant of the site’s domain.
  • If the registrant has used an agency there are ways to obtain information about the registrant’s identity from the agency.
  • It’s also possible to search for the registrant and operator by IP address.

Step two: Contact the registrant of the website

  • Send a letter setting out your intellectual property rights in the brand (for example – the name, copyright in the logo, trade mark etc.) and demanding that they cease and desist from infringing your rights.
  • Be aware that some countries (UK and Ireland) do have “unjustified threats” law to prevent you making an allegation without foundation. Mere notification that an intellectual property right exists or is registered doesn’t amount to a threat of proceedings. No other country in the EU has similar provisions, but it is something to be aware of when dealing with multinational disputes.

Step three: Contact the site operator/web host

  • If the letter to the site owner/registrant does not have the desired effect, or if it has not been possible to identify the site owner, you should contact the site operator or network hosting the site.
  • They often have policies and rules that prohibit sites they operate, administer or host being used to breach any national laws (such as trade mark or copyright infringement or passing off). You can cite these to persuade them to take the infringing site down.

Step four: Where the domain name itself is an infringement, use the relevant domain name dispute procedure

  • Each of the top level domains (TLD), such as .com, .co.uk, .net, .gov etc., has its own administrator. Each of those administrators has different procedures enabling parties to challenge the use of a domain name within its TLD.
  • Although the rules for each TLD administration contain subtle differences, they are largely similar.
  • To successfully challenge the use of a domain name you will need to show, in broad terms:

- that you have rights in respect of a name which is identical or similar to the domain you’ve complained about; and

- that the domain name in the hands of the website operator is an abusive registration. For example, it was registered, acquired or used in a manner which took unfair advantage of or was unfairly detrimental to your rights.

Through the above steps, we’ve quickly and cost effectively stopped the misuse of our clients’ brands throughout the world – most notably in China, which is notorious for the misuse of well-known brands and the sale of counterfeit goods.

If you have encountered misuse of your brand, online or otherwise, contact mjefferies@thrings.com or 0117 9309552 for a fee quotation. We are happy to discuss fixed fees and other pricing options.

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