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Challenges in the Online Environment – Protecting Your Brand

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Due to the sheer size of the Internet, traditional methods of managing your brand in the on-line environment have become challenging. However, brand owners can take a number of steps to protect their brand in the on-line environment particularly in respect of domain name registrations. Such steps are imperative when you consider the amount of email traffic and potential sales possibly being diverted from your website to any allegedly infringing site, and the commercial detriment you may suffer if the allegedly infringing site continues to operate.

Possible steps include:

  1. Register domain names with common misspellings of your brand

    The practice of ‘cybersquatters’ is to register domain names for common misspellings of your brand. This presents a risk of web-traffic being diverted from your true brand. You can defensively build a domain name portfolio to limit or prevent potential abuse. Obtain domain name registration for all major top level and country-specific domains incorporating your brand, common misspellings of your brand, and the well-known products of your brand. It would also be prudent to undertake an analysis on your existing domain name portfolio and take steps to acquire ‘gap’ domain names owned by unauthorised third parties.

  2. Instigate legal proceedings

    You may decide to begin legal proceedings to transfer ownership of the allegedly infringing domain name to your portfolio. This can be relatively simple if the owner of the site is known.

    As a first step, you may send a letter of demand to the owner of the allegedly infringing website, alerting them to your ownership rights for your brand, and threatening causes of action such as trade mark infringement, misleading and deceptive conduct or passing off. Generally, the allegedly infringing owner then has a certain period in which to either enter into negotiations with you, or be subject to legal proceedings in the appropriate jurisdiction. Where the threat or instigation of legal proceedings is sufficient for you to reach a settlement arrangement with the allegedly infringing party, we recommend you finalise the arrangement with broad covenants preventing the allegedly infringing party from any similar future activities in respect of your brand. This is particularly important where unscrupulous ‘cybersquatters’ are involved.

  3. Use available on-line dispute resolution service providers

    Some organisations facilitate the resolution of disputes using ‘on-line’ technology such as emails, teleconferencing, on-line chat and audiostreaming. This approach can assist you to resolve ownership issues surrounding the allegedly infringing domain name using a relatively cheap, quick and efficient method.

  4. Use specific domain name dispute resolution proceedings

    The Uniform Domain Name Dispute Resolution Policy (UDRP) is an international, administrative, dispute resolution procedure that allows brand owners to seek arbitration over the cancellation or transfer of a domain name. The UDRP was established by the international governing agency for the administration of the internet, and generally provides for a cheaper, speedier alternative to litigation in respect of domain name complaints.

    The Registrar of the domain name will (usually) follow a certain dispute resolution procedure such as the UDRP.

  5. Have a third party purchase the domain name on your behalf

    In order to avoid alerting the alleged ‘cybersquatter’ to your intention to acquire the allegedly infringing domain name, you may consider partnering with a ‘friendly’ third party for them to directly approach the ‘cybersquatter’ and negotiate the purchase of the domain name, then on-sell the same to you.

Mason Sier Turnbull is able to assist you with domain name strategies to prevent and defend your exposure to cybersquatters.

Author: Noelene Treloar