SeARCHING: A Practical Guide

Transcription

1 SEARCHING FOR TROUBLE: SEARCHING FOR DOMAIN NAMES AND WEB CONTENT As long as one keeps searching, the answers come (Joan Baez, American singer and song writer)

2 Typology of searching on the Internet for IP rights protection:

3 Different types of searches Inasmuch as domain names are concerned, watch or search can be identical or similar.

4 What can be found by searching? Thorns in the domain bouquet: domain names might be similar to trade marks in many aspects, but domain name registries are far from being Trade Mark Offices, and ICANN bears no resemblance whatsoever to WIPO! Therefore: Whilst you can search TMs by applicant s name, no comprehensive domain search by registrant s name is possible. cctld registries fiercely oppose communicating data about registrants, on the basis of data protection regulations. Therefore, when speaking of a domain name audit, it has to be understood that the audit will / can be on the denomination only, not on the owner company. even if such searches by registrants name were possible, what could be done about the numerous anonymous domains? AFNIC, the French Domain Registry, displays for instance on its Whois that The AFNIC's database is protected by the provisions of the French Law of the 1st of July 1998 transposing the European Directive of the 11th of March 1996 on database legal protection in the Intellectual Property Code. Moreover, the user is bound to respect the French Data Protection Law. The infringement of the French Data Protection Law can carry penal sanctions. As the user will access personal information, the user must refrain from collecting or misusing this information. In a more general way, the user must refrain from any act likely to infringe the privacy or reputation of individuals. the introduction of IDNs (Internationalized domain names) is an issue for domain searching: vodka-lemon.rf. xn----7sbfiwjjjjch.xn--p1ai

5 What can be found by searching? Thorns in the domain bouquet: The ING domain syndrome: domain names suffer from numerous ING syndromes such as cybersquatting (aka domain squatting), a practice defined in Wikipedia 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. ( and its variants such as typosquatting, phishing (a way of fraudulously attempting to acquire sensitive information), slamming etc.. Thanks to ICANN, domain tasting has been significantly reduced. Example of variations around GOOGLE in the.at,.es,.ru,.us and.fr registries Domain g0ogle.at googl.at gogleearth.es qoogle.es goog1e.ru googlandroid.ru gooooooooooooooooogle.ru ggogle.us googell.us goglee.fr

6 Pitfalls in the Web content: replica of your goods, abuse of your marks and reputation What can be found by searching? Domain parking and Pay Per Click issues (PPC): practice of parked domain monetization, when a page with advertising is used to monetize type-in traffic: the domain resolves to a web page containing commercial links, generally targeted to the assumed interests of visitors. For example, the website corresponding to the domain name [louivuitton.com] redirects to the page of a parking page with commercial links to (replica) luxury handbags, Louis Vuitton, Gucci, etc. Trade mark owners generally do not appreciate it when a domain confusingly similar to their mark redirects to a site advertising for competitors! Such pages are also known as PPC for pay per click, a typical Internet advertising model where advertisers pay their host only when the ad is clicked. (See PAY PER CLICK on Wikipedia,

7 What can be found by searching? Pitfalls in the Web content: Activists Bacardi, Danone, Dell, Coca Cola, Microsoft, BP et al: they don t like you /your company, and they say it, loud. They call for the boycott of your products, or associate them with negative context. They can benefit from the freedom of speech, but should they for that purpose use your mark in the domain names and your logos in the content of the web pages?

8 Do you speak ADWORDS? Google does! What can be found by searching? Adwords is indeed Google s famous (and successful) ad targeting product, which allows advertisers to purchase trade marks (including competitors TM) as key words. These keywords trigger sponsored links in the search results. The ongoing question is whether the use of a trade mark for ad triggering purposes by a third party is or not an infringement. On 23 March 2010, the ECJ issued a landmark decision which provided that the Adwords service does NOT constitute trade mark infringement. To establish a trade mark infringement, the use of the TM for the sale of goods/services is required. According to the ECJ, Google s role is limited to that of an information service provider, which does not violate TM rights. In Interflora v Marks & Spencer - (C-323/09), 22 September 2011 the ECJ confirmed its strict interpretation of article 5 (2) of the EU Trademark Directive, according to which the sole use of trademark in keyword advertising does not per se constitute an infringement of trademark with a reputation, In addition, the Court made clear that the owner of a trademark with a reputation can only prevent third party from using its trademark in keyword advertising when this use takes advantages of, or dilutes, the distinctive character and the reputation of the trademark (free-riding) or when the advertising is detrimental to that distinctive character (dilution) or to that reputation (tarnishement).

9 Let s socialize on social networks! What can be found by searching? Social networks are those online platforms where people who share the same interests and activities might (virtually) meet, exchange and interact, for instance by and instant messaging. In a broad sense, the social networks category will also include online (virtual) community services, Facebook, Twitter, MySpace etc are only the tip of the iceberg; there are over 3000 such platforms. This way of communication is widely popular: - there are currently over active Twitter accounts - over videos are seen/daily on YouTube

10 Let s socialize on social networks! What can be found by searching? On Facebook, for instance, you can find heartwarming pages for a TM owner: some companies do use Facebook for presenting their products and for channeling the enthusiasm of their fans: Ferrero Rocher, for instance: a page which is liked by people! the car manufacturing company SKODA conducted an unusual Facebook marketing campaign (in Belgium): Generous Skoda! : the more people liked the page, the cheaper the online model for sale was. ( This communication is also ongoing on Twitter ( and YouTube (

11 Let s socialize on social networks! What can be found by searching? it is however not without good reason that Facebook has also to be so closely watched by the same TM owners: let s take the case of the software Microsoft Access : the corresponding page can be found (without need to have a Facebook account) at this address: You can find interesting related posts there, such as, by way of example: I m in a bad need of Microsoft Office or just Microsoft Access. It can be an older version. Anybody got a copy? The names of accounts such as Brand bags for sale or First Class Replica Bags & Accessories speak for themselves! So is the case of the account for Viagra Natural Provigrax (

12 What can be found by searching? Let s socialize on social networks! To summarize on social networks, the risks for a trade mark are: unauthorized reproduction of the mark, fraudulent/ fake identity and of course sale of fake products, including pharmaceutical products as in the Tamiflu page hereunder

13 HOW TO SEARCH it is recommended to keep the following points in mind: Depending on the nature of your activity (B to B or B to C, commercial site or information site), your visibility and therefore your vulnerability on the Internet will not be the same: The offer on the Internet is to this day mostly targeted at luxury goods, jewelry, perfumes, textile and sports goods, as well as at software and multimedia goods Prevention is easier and cheaper than cure: Contemplate the centralization of your domain name portfolio, together with a domain audit, and data harmonization of the Whois. You may already have set up a domain watch service for your brands; with the forthcoming opening of the new generic Top Level Domains, you will also have to watch for more new registrations, also in non-latin characters: domain monitoring will become even more important.

14 HOW TO SEARCH Set up a corporate policy for using addresses, graphic charter, logos, as well as marks by your subsidiaries and affiliates, licensees etc. Regulate the enthusiasm of your fan groups regarding the use of your mark. Watch the web content for unauthorized use of your marks: e-reputation, social networks, adwords, auctions, etc. Define the boundaries of your web content watch: Think of inclusive (must be in the results) and exclusive (should not be in the results) filters, in order to reduce the noise. Forget about comprehensive results for a web content search/ watch: in that case also, too much is the enemy of good.

15 By way of Conclusion The Internet has to be used with caution. The Internet has to be watched: from the point of view of domains as well as from the point of view of web content to track cybersquatters and infringers. The Internet is also a great way to promote one s trade mark.

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