By William (Bill) E. Ryan, attorney
Your business has made a significant investment in establishing a brand, often complimented with at least one registered U.S. trademark. Despite your efforts, counterfeiters and unauthorized sellers use your established goodwill to sell imitation and counterfeit products bearing your brand’s marks. In today’s age that usually entails marketing and selling the counterfeit goods or imitation branding on internet websites and online retailers like Amazon. These products infringe your trademark rights, hurt your hard earned goodwill, and divert authentic, interested traffic away from your domain address.
A common first line of defense in combating the infringing content is to send a cease and desist letter to whatever contact may be available on the infringing website. However, oftentimes the listed contact is unresponsive, and a significant amount of time is wasted just trying to reach the listed contact. All the while, the infringing content remains on the website and continues to damage the brand, stealing sales from you and your licensed retailers. While many brand owners may believe that there is little else they can do, in fact, other powerful combat techniques exist.
The contact listed on the website is not the only master of the domain name. The domain registrar, i.e., the entity that manages the registration of the domain address of the website that contains the infringing content, also has the power to remove subject matter that infringes upon the intellectual property rights of another. Likewise, hosts of seller content, such as online retailers, also have power over the hosted listings. This power is contained within services offered by the registrar and/or online retailer. These services are generally user friendly, easy to understand, and most important, efficient.
The mega online retailer Amazon.com provides such a service via online accessible electronic forms for reporting intellectual property complaints against third party sellers using the retailer’s platform. To report a violation using the forms, the rights owner or agent representing the rights owner will need to provide the online retailer with proof of a registered trademark along with the goods and services protected by that mark and a brief description of the alleged infringement. For a smooth and easy process, it is important that the goods and services listed in the registration include or encompass the infringed goods.
Amazon also provides a Brand Registry service as an additional means to help identify and combat infringing products and listings. To be eligible, one must be an owner of a brand, i.e. own a valid registration for a live standard character mark (word mark) or a graphical mark with a text component. The brand owner must also have a seller account registered with Amazon. Amazon markets the service as “providing powerful tools” including text and image searching and reports of suspected IP rights violations, as well as increased authority over product listings that include the brand name. 1
Many times infringers and counterfeiters will create web pages outside the online retailer platform to drive additional traffic to an infringing product listing. In some cases, the infringers may sell the counterfeit products across multiple online retailer platforms. These web pages may be easily found by entering word for word text of the infringing listing into a search engine, as the related websites will likely include the exact same or substantially similar content. In cases where images used by the infringer may be unique, an image search engine, such as the image search engine offered by Google, may help identify other infringing websites that use the same product image.
When the infringement occurs on a website other than that of an online retailer, the registrar of the website may be able to provide services similar to what online retailers provide. A WHOIS search is a search of databases that store the information of registered users related to a domain address. When searching the infringing web page’s domain address in a WHOIS search, the results will list the registrar of the site, e.g. GoDaddy, Namecheap, etc., as well as administrative and registrant contacts including geographic and electronic mailing addresses. Once the registrar company is known, a rights holder may go to the registrar’s website and file a complaint regarding the infringing site. The complaint department is usually found though navigating the “legal” section of the registrar’s website. The legal site will contain either or both a link to an html electronic form for filling out and an intellectual property specific e-mail address for sending in written complaints. Again, the rights holder will need to provide the registrar the trademark name, registration number, listing of the goods and services as well as a description of the infringement. Frequently, the exact criteria required by the registrar will be spelled out in the body of the website. It is important to follow the recommended format and include every detail to ensure speedy resolution of the infringement.
If the registered trademark is being used in the infringer’s .com address, the registrar will be of little help. In these situations a dispute with the website owner can be initiated through an Internet Corporation for Assigned Names and Numbers (ICANN) approved arbitrator or the court system. A list of approved arbitrators may be found on ICANN’s website. 2 Alternatively, an aggrieved rights holder can file a lawsuit in Federal Court under the Anticybersquatting Consumer Protection Act.
Bill is an attorney with Fay Sharpe LLP. If you have questions about the subject matter of this article or IP law in general, you may reach Bill at firstname.lastname@example.org or 216.363.9230.