16/11/2015
Brand Protection…In Action!
Aleksandra Oles, Zaneta Petrova, Sarah Casnico, Ruben van Dijken, Alessandro Ceraulo, Ginevra Pedrotti, Ivan Tizzanini

Summary: 1. Introduction. - 2. Numbers. - 3. Definitions. - 4. Domain Names and trademarks (brands)–Cybersquatting and Traffic Diversion. - 5. Cases. - 6. Conclusion.

1. Introduction

Nowadays the internet (1) is the centre of our activities. The internet creates a lot of opportunities, but with the growing number of opportunities there is a growing number of threats. In this essay we would like to define main terms and present problems that some of the companies have. For example: stealing data and trademarks, know-how and patents. We chose the topic because of a huge increase of crimes committed on the internet. Increasing crimes on the Internet is not new. The concept of internet abuse was born in the late 80s. People are always trying to find new ways how to break the law, on the Internet it is quiet easy because of inadequacy of rules. During the last years almost every company has been computerised.

Entrepreneurs should be really careful, every companies’ data that they put on the Internet can be easily stolen.

 

2. Numbers

Statistically brand (2) abuse on the Internet makes company to loose a huge amount of money. Since 2016 it was around £2.7 trillion.

In the introduction we stated that some of the threats of increasing Internet use are stealing trademarks, know-how and patents. How many intellectual property rights are registered every year? If we know this, we can imagine what dangers we are dealing with. As we can see, the numbers of patents, trademarks and designs are large. In comparison to Italy in 2014: applications filed 36, applications published 18, patents granted 8.

 

3. Definitions

A company uses its domain as a trademark: is an identification string thatdefines a realm of administrative autonomy, authority or control withinthe Internet. This kind of trademark has to be registered in the Domain Name System (DNS). But even the registration can’t protect entrepreneurs from illegal acts like traffic diversion (3), piracy and cybersquatting (4).

The first one is a threat that brand owners use to drive internet traffic through offenders websites. In fact, it happens when a third party website uses a brand’s trademark as a method of diverting potential customers to their websites. Because of the fact that trademarks can be used in various context, we want to focus on domain names and how companies can protects themselves (their image) on the Internet. Techniques to divert traffic are the illegitimate use of paid advertisement at search engines and increase visibility of competitors. Companies can lose revenue and customers trust.

The second one is piracy also known as copyright infringement: the use of works protected by copyright law without permission. The only entity can use copyrights like right to distribute, reproduce or perform the protected work is the author or another holder. Copyright infringement disputes are usually going through the negotiation or litigation in civil court.

This crime is very widely known and depends on huge number of factors. The last one is registering, selling or using a domain name with the intent of profiting from the goodwill of someone else's trademark. It generally refers to the practice of buying up domain names that use the names of existing businesses with the intent to sell the names for a profit to those businesses.

 

4. Domain Names and trademarks (brands) – Cybersquatting and Traffic Diversion

Surfing the internet is based on the use of alphanumeric addresses . It leads to an inseparable link between domain names and trademarks; since most of the trademarks consisting of letters or numbers can be registered as domain names (for example www.yourbrand.com).

The ownership of a trademark does not automatically confer ownership of the corresponding domain name . Integrating protection of the brand on the Internet is so important to make sure that the domain name corresponds to the trade mark in the records of interest .

ICANN is a non-profit, public-benefit organisation formed in 1998. Its staff operates the Internet’s Domain Name System (DNS), coordinates allocation and assignment of the Internet’s unique identifiers, such as Internet Protocol addresses, accredits generic top-level domain (gTLD) name registrars, and helps facilitate the voices of volunteers worldwide who are dedicated to keeping the Internet secure, stable and interoperable. It promotes competition in the domain name space and helps Internet policy development.

While designed to serve the function of enabling users to locate computers (and people) in an easy manner, domain names have acquired a further significance as business identifiers. This is the reason of conflict with the system of business identifiers that existed before the arrival of the Internet and that are protected by intellectual property rights.

Domain name disputes arise largely from the practice of cybersquatting, which involves the pre-emptive registration of trademarks by third parties as domain names. Cybersquatters exploit the first-come, first served (5) nature of the domain name registration system to register names of trademarks, famous people or businesses with which they have no connection. Since registration of domain names is relatively simple.

Cybersquatters can register numerous examples of such names as domain names. As holders of these registrations, cybersquatters often put the domain names up for auction, or offer them for sale directly to the company or person involved, at cheaper prices than cost of registration.

Alternatively, they can keep the registration and use the name of the person or business associated with that domain name to attract business for their own sites.

Domain name disputes in the gTLDs (generic top-level domain) are object of the Uniform Domain Name Dispute Resolution Policy (UDRP). In addition, most of these new registry operators have developed/ are developing, specific dispute resolution policies designed to resolve disputes occurring during a start-up, or "sunrise" phase. WIPO (6) (World Intellectual Property Organisation) currently administers challenges under these start-up phases for both .info and .biz . Registration will also provide special proceedings to resolve disputes concerning compliance with their respective registration restrictions.

The register does an examination of the question formal requirements and the existence of its own registration for a domain name absolutely identical. However, during the registration no one checks pre-existing trademarks identical or similar to the domain name applied for or in respect of domain names identical or similar already registered in other registers .

Because of these reasons, the procedure takes place for the recovery of domain names managed by national or international organisations, which allow the owner of a brand to get the ownership of the domain name registered illegally by thirds . The reassignment procedures are available for registers like .eu and .it and for most of the general-purpose registers .

Since 2006 the Czech Arbitration Court (Arbitration Court attached to the Czech Chamber of Commerce and Agricultural Chamber of the Czech Republic) has been operating as the dispute resolution provider for .eu domain names, resolving cybersquatting and other disputes relating to trademark domain names.

 

5. Cases

An interesting decision about cybersquatting is: “Google Inc. v. FilarcoService Ditta Individuale, Filice Marco”. (Dossier no. 06911) (7)In this case the Respondent had registered the domain name googleitalia.eu and Google Inc. denounced him for:

1. Identity or confusion of the disputed domain name to the trademarkon which the Complainant has rights under national law and / orcommunity.

2. Lack of a right or a legitimate interest of the Respondent in the disputeddomain name.

3. Registration or use of the disputed domain name in bad faith.

The Commission of Arbitration:

1. Risk of confusion of the domain name with the prior rights of the Appellant. The Commission considers the confusion demonstrated by the Appellant of the domain name to which this procedure with the same name on which the Appellant has a right. An examination of the documentation provided shows that the Appellant is the owner of the earlier trademarks registered in the European Union. Despite the Complainant has claimed to be the owner of domain names registered in variousgTLD and ccTLD, all containing the word "google", it did not provide any evidence to prove such ownership. Therefore, the Commission for the purpose of this procedure considers only the CTM. The disputed domain comprising the word "google", corresponding to the ideological core (so-called "core") of the Community Trade Mark of the Appellant, and the general term and / or description and / or geographical "Italy". As confirmed in numerous decisions, the addition of a geographical expression is insufficient to undermine the likelihood of confusion between the domain name and a famous mark. See. Vanguard Trademark Holdings USA LLC, Vanguard Trademark Holdings USA LLC v. Eduard Eertink, Czech Arbitration Court Decision 06737 09.26.2014, alamocostarica.eu. For these reasons, the Commission considers that neither the addition by the Respondent of a generic word and / or descriptive and / or geographical, or the extension ".eu" (a technical requirement), affect the attractiveness of the dominant component of the marks of the Complainant and, therefore, the domain name "googleitalia.eu" is confusingly similar to the marks of the Complainant, for which Community law recognizes or grants a right.

2. Lack of rights or legitimate interests of the Respondent. The Complainant also has the burden of proving the absence of proof to the head in a right or legitimate interest in the disputed domain name.

Article 21 of the Regulations, as implemented by Article B11 of the ADR (8) Rules states that the legitimate interest can be demonstrated when:

"(A) prior to any notice of an alternative dispute resolution procedure, the holder of a domain name has used the domain name or a name corresponding to the domain name as part of an offer of goods or services or has demonstrable preparation to preparation to do so;

(B) the holder of a domain name is a company, an organization or an individual commonly known by the domain name, even in the absence of a right recognized or established by national and / or Community law;

(C) the holder of a domain name is making a legitimate noncommercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of the name in which a right is recognized or established by national and / or Community. "

The Commission considers that this test has been reached in this procedure are based on the competition of the following circumstances:

- The Complainant stated that he never authorized the Respondent to use in any way the trademarks of the Complainant itself;

- There is nothing in since the Respondent, Marco Filice - Filarco Service individual company is commonly known by the name corresponding to the disputed domain name;

- The domain name "googleitalia.eu", before the receipt of the Complaint, redirect to a website containing the figurative mark of the Complainant and offered a paid service for visualization and localization of businesses on maps and the Appellant is, therefore, , it can be inferred that the Respondent has not made a legitimate use, non-commercial or correct the domain name, without intent to mislead consumers or harm the reputation of a name on which a right is recognized or established by national and / or Community Appellant.

With the Defence the Respondent objected to the claims of the Appellant, nor provide any evidence in relation to any prior use of the disputed domain name or a name corresponding to the same; He not stated or shown to be a company commonly known as corresponding to the domain name; neither he showed his potential interest in the use of such domain name.

3. Bad faith in the registration or use of the domain name. The Commission notes that, as the Appellant shown that the disputed domain name is confusingly similar to the name, for which the national law and / or the Community recognize or confer a right to the same name and the absence of a right or a legitimate interest of the Respondent, there is no need for the definition of the present procedure to ascertain whether the Respondent has registered or used in bad faith the disputed domain name. However, this Commission considers it appropriate to more fully evaluate this aspect.

In this respect, Articles 21 (3) of the Regulations and B11 (f) of the ADR Rules provide a non-exhaustive circumstances that may be assessed by the Commission as an indication of bad faith registration or use of a domain name. In this case, the following considerations have led the Commission to conclude that there was bad faith of the Respondent.

i. Given the large and widespread promotional and advertising campaigns undertaken by the Appellant is unlikely that the Respondent was unaware of the brands are well known and / or famous of the Complainant when registering the disputed domain name. In fact, the use of the figurative mark of the Complainant on the website, the content of the site itself, and the statement by the Respondent, demonstrate the full knowledge and intent of Resistant to exploit the reputation of the Appellant and violate the rights of the latter.

ii. The domain name, before the introduction of this procedure, redirect to a website containing the figurative mark of the Complainant and offered a paid service for visualization and localization of business activities on the maps of the Complainant. It should be noted that the Commission cannot take account of the documents produced by the Appellant, defined as correspondence sent to potential customers, because it is of uncertain origin, as it indicates that the sender "Google Maps" and does not indicate the recipient. The reasons for the resistant are unfounded. There is nothing to detect deletion of the content of the website of the Respondent since the start of this procedure, nor the purpose of offering a service via the domain to non-experts in the use of internet, put forward as a justification by it. Moreover, it is irrelevant for the purposes of this procedure, the size of the Respondent. It is therefore proven the fact that the Respondent has intentionally used the domain name to attract Internet users, for commercial gain, to the Internet or other online, by creating a likelihood of confusion with the well-known brands and / or reputation of the applicant as to the source, sponsorship, affiliation or endorsement of the website or the online space or of a product or service offered on the website or on the online space of resistant.

In conclusion the Commission considered the request of the Appellant, decides to revoke the domain name registered by the Respondent.

 

Another interesting decision of the Court of Rome (18.01.2001) is relativeto use of HTML meta-tags, expressed the following rule:

It constitutes an act of unfair competition use in web pages of "meta tags" - meaning those keywords, coded in the programming language HTML and not immediately visible on the web page that the search engines use to locate and index the sites present on network - matching the name of the competitor, in order to bring up among the search results the user's network, your site, and therefore its presence in the market because of the reputation achieved in the field by the holder of a significant competitor market share”.

(TRIBUNALE DI ROMA, ORDINANZA 18 GENNAIO 2001 - Genertel S.p.A. c/ Crowe Italia S.r.l.)

 

In the same way expressed Court of Ancona in March 2003 (9).

Improper use of meta-tags can result in what is called “Traffic Diversion” as meta-tags affect the behavior of search engines and therefore on the consumer.

The inclusion of so-called "meta tags - keywords" deceptive, those tags of html code whose function is to indicate to the engines search the content covered within a given site incorrectly, is considered to be avoided. When you need to find a web resource and do not know the exact address of the same, the web surfer can go through a search engine; it will use the keywords typed to find resources relevant to those specific parameters. It often happens that keywords are used in the meta tags for an attractive aim: webmasters type in html code some keywords that have nothing to do with the site in which are inserted only to attract the attention of users. In this way a diversion of traffic, better known as "traffic diversion” is caused. Consequently, the query submitted to the search engine returns resources that have nothing to do with the content sought by the user as the meta tags are not present in the browser window but hidden in the listing source html the page itself.

The uncontrolled use and misuse of meta tags - keywords might also violate the right to a name and the misleading advertising rules. The meta tags, then, must not contain the names of persons without their authorization and terms do not correspond to the actual content of the site that are likely to mislead consumers.

 

6. Conclusion

Except for Budapest Convention, in the European Union states we still donot have the same rules to protect brands. That is the reason why therights and remedies depend on the particular country law and on UDPRs(Uniform Domain-Name Dispute-Resolution Policy) (10). Businesses shouldconsider which markets are important to them and make sure that therights in their brands are effectively protected in those markets. It mayseem expensive at the time, but it is worth doing it in the longterm. Theinternet is a powerful advertising medium. Often the brand is one of themost important piece of intellectual property owned by a company.As you can see in the presented cases it is very hard to avoid being thevictim of cyber crimes. We conceptualised a kind of recipe forentrepreneurs how to make the best protection for their companies.

 

Step 1 - Registration

It stops the others to have the same brand on the market.

 

Step 2 - Advertising

The company should not be afraid of putting money to advertisethemselves because if they are well known on the market, there is lesspossibility to confuse consumers.

 

Step 3 - Control

Entrepreneurs should take care of checking the competition regularly because it will help them to keep the position on the market.

 

Step 4 - Legal actions

This is the last step that the company should do because of the cost and probability to loose the case. Before suing somebody to court the owners of the companies should try to settle the case.

In our opinion, this is the best way to avoid the risk of this Internet crimes, but it is not the only one.

 

Notes:

(1) The Internet is a global system of interconnected computer networks that use the standard Internet protocol suite (TCP/IP) to link several billion devices worldwide. It is a network of networks that consists of millions of private, public, academic, business, and government networks of local to global scope, linked by a broad array of electronic, wireless, and optical networking technologies. The Internet carries an extensive range of information resources and services, such as the inter-linked hypertext documents and applications of the World Wide Web (WWW), the infrastructure to support email, and peer-to-peer networks for file sharing and telephony.

(2) A brand is a name, term, design, symbol or other feature that distinguishes one seller's product from those of others. Brands are used in business, marketing, and advertising. Initially, livestock branding was adopted to differentiate one person's cattle from another's by means of a distinctive symbol burned into the animal's skin with a hot branding iron. A modern example of a brand is Pepsi which belongs to PepsiCo Inc,Gillete from P & G,etc.

(3) Traffic Diversion: threat is the use of a brand owners trademarks in order to drive internet traffic through offenders websites. Business impacts: lost revenue and customer confusion/frustration.

(4) CyberSquatting threat consist in the use of a brand name in a domain name that results in the loss of online revenue, with business impacts as erosion of brand equity and decreased consumer confidence.

(5) First-come, first-served (FCFS) – sometimes first-in, first-served and first-come, first choice – is a service policy whereby the requests of customers or clients are attended to in the order that they arrived, without other biases or preferences.

(6) The World Intellectual Property Organization (WIPO) is one of the 17 specialized agencies of the United Nations. WIPO was created in 1967 "to encourage creative activity, to promote the protection of intellectual property throughout the world." WIPO currently has 188 member states, administers 26 international treaties, and is headquartered in Geneva, Switzerland.

(7) https://eu.adr.eu/adr/decisions/decision.php?dispute_id=6911

(8) Alternative dispute resolution (ADR; known in some countries as external dispute resolution) includes dispute resolution processes and techniques that act as a means for disagreeing parties to come to an agreement short of litigation. It is a collective term for the ways that parties can settle disputes, with (or without) the help of a third party.

(9) The Court of Ancona, by order of urgency (ex art. 700 c.p.c.) of 24.03.2003, inhibited a company to use

the trademark of another company which "meta tags" to direct users to their own websites.

(10) Under the policy, most types of trademark-based domain-name disputes must be resolved by agreement, court action or arbitration before a registrar will cancel, suspend or transfer a domain name.

 




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