Photo by Ina Centaur My law firm’s international IP litigators have handled about double the number of counterfeit matters in the last year as in any year prior year. Not sure if this is because counterfeiting is on the increase or if it is just because American and European companies are getting so sick of it that they are becoming more likely to take action.
There are all sorts of ways to try to shut down Chinese counterfeiters but today’s post focuses on only one of those: trying to shut down the counterfeiter’s domain name.
Chinese companies are quick to register domain names similar to those of the foreign companies whose products they are counterfeiting and we frequently see the following sorts of domain name thefts by Chinese companies selling counterfeit products:
- Domain names that contain a common typo of a known trademark.
- Domain names that take a known trademark and attach a generic word like “outlet” or a word descriptive of the product, such as “shoes.”
- Domain names that are exactly the same as a known trademark’s domain name, but with a different extension. For example, abc.net, instead of abc.com.
It is usually relatively easy to shut down the domain name used by companies selling counterfeit products, even when it is a Chinese company with the domain name. The Internet Corporation for Assigned Names and Numbers (“ICANN”) developed The Uniform Domain Name Resolution Policy (“UDRP”) to resolve domain name disputes.
Anyone who registers a domain name has agreed to the registrar’s terms and conditions, and that includes committing to be bound by the UDRP. The UDRP’s purpose is to prevent cybersquatting, which is defined “as registering, trafficking in, or using, a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else.” Tenneco Automotive Operating Company Inc. v. Naushad Dhukka / SoftDot Technologies, LLC,NAF, FA1104001384326 (May 31, 2011).
When a complainant can show that another party is using a domain name in “bad faith,” the UDRP will either transfer or cancel the offending domain name at the request of the complainant. Our IP attorneys usually recommend the domain name be transferred to our clients so nobody else can grab it at some later date and then force our client to go through another UDRP domain name arbitration.
Companies need to be proactive in locating and excising “bad faith” websites as soon as they are discovered because those offending sites can not only damage a company’s online presence, they infringe upon and can ultimately dilute legitimate trademark rights. Of course, this only shuts down those domain names that are already in existence; it does little to prevent new ones.