blog.brandprotect.com

That's my Trademark, but why is it in your Domain Name? Is the UDRP for me?

You have a business, you want to take advantage of the opportunity to reach out and communicate with your customers, attract potential new customers and perhaps provide the ability to increase your revenue through e-commerce by providing user-friendly transactions online. So, you purchase a domain name in your company name, create a website and it becomes an international success – VERY profitable.  Your business thrives for 10 years with the addition of your website.  Then one day you receive a report informing you that someone else has registered your domain name in the .net extension.  They have placed a monetized link page on that domain.  You are livid. You have worked so hard to establish your business and reputation and someone, with very little effort, has registered a domain name for $5.99 and reap all the benefits of someone mistakenly typing a “.net” into their browser and clicking on a random link that will provide the registrant with the money that you should be getting.  Or worse, in an attempt to get the domain back you attempt to reach out to the registrant in hopes that they will transfer it to you once they see the error in their ways and they respond by saying they know how valuable the name is and that they will transfer it to you for $200,000 since you are a billion dollar company and can afford it.  So what do you do? Do you sue, let it go and hope that not much traffic goes to that domain or dispute the domain through the Uniform Domain Name Resolution Policy (UDRP). Regardless of your approach there is one thing that is certain, this is totally unfair!

This hypothetical story is actually a very real dilemma that brand owners face on a daily basis.  It is not uncommon for a client to approach us on almost a weekly basis with a domain issue and guidance on how to remedy it.  Unfortunately, the law is not always fair and tends to base their decision on precedents and rights.

There are different avenues one can take to dispute a domain name if it is felt that your trademark rights have been violated.  You can opt to use specific country laws like the Anti-Cybersquatting Consumer Protection Act.  Unfortunately registrars (who many believe should be just as liable as the registrant) are not usually a part of these cases.  There are also trademark and unfair competition laws that one can turn to, but both parties have to be under the same jurisdiction.  The aforementioned options involve going to court which means spending a lot of money on legal fees and other resources on a process that can be dragged out for months or years especially if there are appeals.  If none of these choices appeal to you, there is the option of utilizing the UDRP process under ICANN.  So to UDRP or not to UDRP, that is the question…

The UDRP is an arbitration-like process that all owners or registrants of gTLDs (.com, .biz, .net, .info etc.) are subject to.  For many brand owners it has been their next course of action after a letter to the registrant was undeliverable or ignored and has been proven to be a more cost effective way to deal with these issues.  Many brand owners are resorting to the UDRP process through an ICANN approved provider, The World Intellectual Property Organization (WIPO) to settle their domain disputes.  According to an article on Domain Name Wire, in 2009 almost 90% of the cases were found to be in favour of the complainant.  This was also echoed by a colleague, who specializes in UDRP cases, when I attended a meeting at the International Trademark Association (INTA) conference in Boston this year.  The newly established electronic filing system and the speed at which the administrative panel renders their decision are the reason that she and many other IP attorneys choose WIPO as their dispute provider. 

The National Arbitration Forum (NAF), with headquarters in Minneapolis, MN, is another ICANN approved provider.  There is a wealth of information on both the WIPO and NAF websites so please check them out for more details to determine which provider is right for you.  For those of you concerned with ccTLDs and resolving those domain disputes, WIPO does have a domain name dispute resolution service for some ccTLDs.   There is also a comparative study on ccTLDs and gTLDs which is a great resource on the different domain dispute resolution processes around the world.

Besides the cheaper cost and speed of the proceedings, the process is more “informal than litigation and the decision-makers are experts in such areas as international trademark law, domain name issues, electronic commerce, the Internet and dispute resolution. It is also international in scope: it provides a single mechanism for resolving a domain name dispute regardless of where the registrar or the domain name holder or the complainant are located,” according to WIPO. 

So let’s say you decided to file a complaint under the UDRP.  The cost and timely nature of the proceedings appeal to you, but what does it take to win a case?  Firstly you will have to prove that the domain is identical or confusingly similar to a trademark where the complainant has rights.  Secondly, the registrant cannot have any rights or legitimate interests.  Lastly and almost most importantly, the domain name was registered and used in “bad faith”.  Despite the majority of cases being found in favour of the complainant, the administrative panel does not look too kindly on complainants who file a UDRP just because they are not happy that someone has used a name similar to theirs.  The complainant must ensure, before they file, that their evidence satisfies the requirements outlined in the policy.  The complainants that have been found to abuse the system will not only have their request denied, but also run the risk of being called out by the panel and have the decision made available for all to see on the internet.  The displeasure of one panellist was demonstrated in a recent case involving Credit Europe Bank who failed to prove that they had rights over the registrant.  A recent article in Domain Name Wire reported that the lawyer for Credit Europe Bank openly stated that “his client’s interests are more important than the domain owner’s, so they should get the domain name.”  Not only did these words not prove his case but also, according to WIPO panellist Richard Lyon, this lawyer who was probably paid a lot of money failed to understand the UDRP process.  Not surprisingly, this did not fair well for Credit Europe Bank or their lawyer.  Many speakers at the INTA conference forewarned us that, one negative ruling in UDRP proceedings can hurt your reputation and follow you if there are plans for future filings.  In fact, the information on Credit Europe Bank was the topic of many Tweets which is how I came to know this case.  I even received the decision in my WIPO domain name decision email alerts.

Lyon also accused Credit Europe Bank of Reverse Domain Name Hijacking, a term reserved for a complaint that was filed in bad faith.  According to ICANN’s UDRP rules, Reverse Domain Name Hijacking is found when a complainant is found to use the UDRP process in an “attempt to deprive a registered domain name holder of a domain name” which “constitutes an abuse of the administrative proceedings.”  Just as quick as you can file a UDRP, the tables can turn.

So, to UDRP or not to UDRP?  There are many factors to consider, but in my opinion, if the domain name has false or hidden registration information and after consultation with your legal team, marketing team and those with a vested interested in that trademark on the value of that domain to your business or if there is a risk of confusion to your customers or potential customers and you have strong evidence to show that the name was registered by the registrant in bad faith, I say proceed.  It is the faster and cheaper way to dispute a domain name and many brand owners/complainants have found this an appropriate way to remedy the situation.

Brands fail to capitalize on Twitter marketing opportunities

During the spring of 2009 we received requests from our clients asking our opinion on the need for their brands to become (more) engaged with social networking sites.  The demand was so great that we held a client webinar on the topic.  One of the areas discussed was the potential of the social media phenom Twitter.

With 100 million users tweeting 65 million times per day, Twitter is a site that should be difficult to ignore by marketers and consumers alike.  However, the reality is anything but, according to a recently released white paper published by the digital marketing agency 360i titled “Twitter & the Consumer-Marketer Dynamic”.  After an analysis of more than 1,800 tweets published between October 2009 and May 2010, the researchers concluded that brands are under-utilizing the Twitter platform, and consumers are far more focused on personal tweets than on professional or promotional updates.

The unexpected findings are that “while consumers use Twitter as a conversational medium, most marketers aren’t using it that way and there remains a ripe and largely untapped opportunity for two-way conversations between brands and consumers.  Currently, a mere 1% of brand mentions by consumers on Twitter represent dialogue between brands and consumers.”  

360i researchers provide some actionable advice, stating “Marketers could benefit from looking for ways to engage consumers more fully on Twitter through a more conversational tone (e.g. asking questions and inviting response rather than simply passing along information).  Encouraging and participating in a dialogue with consumers will encourage more re-tweets, as well as help promote deeper brand relationships.

The fifteen page report illuminates the reader on topics such as:

*who is tweeting?

*what do consumers tweet about?

*the anatomy of a tweet

*which brands are mentioned most often?

*motivations behind consumer brand mentions

Hopefully the report by 360i will ignite interest amongst marketers to step back and revisit their Twitter strategy.  It is an easy and interesting read, and acts as follow-up to our webinar on social media engagement.

Be aware of identity theft when using the POS System

We think our credit or debit cards are safe and secure when swiped on a Point of Sale (POS) terminal. Yes, the common POS terminals found at retailers and restaurants. With LCD monitors, touch screen functionality and the like, the POS terminal appears to be very secure and, for the most part, it is. However, the criminal mind is always one step ahead. Forget stealing data through some sort of complex phishing scheme - thieves are now just taking the hard drive in its entirety. Good old-fashioned break and enters.

A recent episode of CBC’s Marketplace - “Who’s Minding the Store?” exposed the measures thieves are taking to obtain a massive amount of credit and debit card numbers from POS terminals. They break into stores, restaurants, gas stations and any other location where a POS is commonly used. It doesn’t matter if it’s a large retail chain or a small independent store, they are after the POS. Regardless of the size of the retailer, POS terminals contain records of credit and cards that have been used in the past week, month, even year- depending on when the hard drive was last wiped clean.

As a customer, we tend to trust retailers with our credit or debit card information and so assume the hard drive is wiped clean at least on a daily basis; however, this is not always the case. According to Marketplace, many retailers do take action to clean out all of the credit and debit numbers on a daily basis, but the numbers are never really gone. They still exist on the system for thieves to access. Visa and Mastercard have a Customer Information Security Program (CISP) which sets out guidelines for POS software to ensure that it is effectively wiped clean and that your card information is protected. According to POS Helpdesk, most POS terminals do not comply with these standards. POS Helpdesk encourages retailers to update their software to comply with the CISP standards or run the risk of being fined by Visa and Mastercard. Worse still, having customers’ credit information stolen can result in retailers losing the trust of loyal customers and having such incidents going viral.

In fact, if you find that your credit information has been stolen, you should ask where the thieves obtained your information. According to Marketplace, Canadian banks are not obligated by law to tell you where thieves obtained your credit information. However, it doesn’t hurt to ask. If you find out, you may think twice about paying with plastic at that retailer again.

This brings us to the big question surrounding all of this plastic identity theft: How do you protect yourself? You may not like the answer. POS security experts suggest that you pay with cash as much as possible. Sure, it is a little old-fashioned and maybe not as convenient, but the less you use your plastic, the less risk you have of getting your information stolen.

In the end it may not seem like such a big deal as banks and credit card companies usually refund the amount stolen from your credit card or debit card. But the bottom line is that the more thieves steal from banks and credit card companies through POS theft, we – the consumer – ultimately pay through higher bank fees.

Some food for thought for the dog days of Summer.

What does the math say about social media?

Recently an acquaintance of mine had a very unpleasant experience with a major retailer and I began to wonder what options the person had to convince the retailer that it was in everyone’s best interest to resolve the matter as opposed to leaving my friend unhappy.  The reality is that we all have had a negative encounter with customer service in one form or another.  From working in the hospitality field, I have first hand experience with people who had been met with what they believed to be poor service.  The lesson I learned very early on in hospitality, and which I believe to be true in most industries, is not that the customer is always right, but that they believe they are. With the growing popularity of social media this lesson is becoming more and more relevant.

In April 2010, a study based on an online questionnaire conducted by the Harris poll provided hard numbers which seem to validate the concern that companies have over their image being presented via social media. There were previous assumptions that social media users were limited to teenagers following celebrities, which was shown to be incorrect. This poll suggests that users from 18 to 55+ have very little hesitation in using social media to either promote or condemn a product or service by discussing their experiences. Not only are users prepared to share their experiences online, but what is more interesting are the numbers regarding how influential the opinions of people that are in their social media groups or friend lists actually are.

According to the numbers in the study, approximately 29% to 45% of people “agree” or “strongly agree” that their goal in offering opinions through social media is to influence their peers or groups. Additionally respondents answered that 69% to 76% believe that friends or family influence their decision to use or not use a particular company or product.

In a nutshell, this means that a third to half of people who participated in this study use social media to influence others and almost four out of five people say that the reviews of their friends or family via social media influence their use of a brand or company. What is additionally interesting is the decline in influence of celebrity endorsements which only yielded a maximum of 17% amongst 18 to 34 year olds (the youngest demographic polled) who believed reviews from celebrities influenced their use of a brand or company.  Another interesting finding is the influence strangers have via blogs or message boards. The study showed that 41% of 18 to 34 year old respondents were swayed by the opinions posted by people they don’t know on message boards or forums.

It therefore appears that brand monitoring and the management of the public perception of one’s company or products requires a much more proactive approach. It is imperative to manage the disappointment experienced by customers before they have an opportunity to share their negative experience with others. Applying the example of hospitality, the alternative to taking a proactive approach would be to allow an unhappy customer to express their negative experience on a message board such as tripadvisor.com or other third party services designed to provide additional revenue such as expedia.com or hotels.ca, which could potentially have a directly detrimental affect on a hotel’s bottom line.

With social media and internet reputation management becoming increasingly available, companies and brands can now take a more proactive approach. Being aware of a negative reputation is as crucial as taking the correct measures to address the potentially harmful affect on a brand or companies. However, it is also detrimental to pursue these matters incorrectly or too stringently. On certain occasions it is more effective to protect your brand or image by requesting that the individual or group remove content rather than taking immediate legal action to force the removal of content. The difficulty lays in how to sift through the thousands of blogs, forums and other social media outlets. This is where contracting the services of an internet management company would come into play. They are able to consult and advise a company on the most tried methods of gauging your brand or product’s online reputation.

Companies should consider creating their own social media best practices and training in-house employees to engage in conversations and respond to negative comments that could be indentified by a service such as social media monitoring. Some companies have taken the option of setting up social media groups and fan pages that are dedicated to their products and services as a proactive measure.

Regardless of the approach one takes to social media, it is here to stay. Be on top of the game to ensure that current and potential customers are getting the right message from your company directly. Don’t hide from negative criticism, but opt to engage your critics in a way that is mutually beneficial to all parties to ensure you are truly protecting your brand.

Facebook, Your Privacy Settings and Avoiding Identity Theft

Can you go a day without checking your Facebook? Are you concerned with your privacy? Over the past 2 months, Facebook has been a hot topic in social media news regarding privacy; with the rise of Facebook phishing scams, malware and identity theft, more people are concerned with how their personal information is being used. Since Facebook was launched 6 years ago, it has become a central hub of social networking. People share more and more personal details about themselves by the second, through status updates, joining groups, personal interests, photos etc – the world has definitely become more connected. But what about privacy?

You can very well write on your status “I am on vacation in London, shopping at Oxford Street” Before you know it, your account can be compromised with hackers sending out messages to all your friends with something like … “hey, I am in London, I got robbed, I have no money, can you please Western Union me some money?”  Robert McMillan for Computerworld states how Researchers at VeriSign's iDefense group found a Russian hacker by the name of Kirllos who put up “1.5M stolen Facebook ID’s up for sale”.  This pertinent information could be used for all kinds of identity theft scams. Here is a helpful article that lists the 5 Facebook Scams You Should Protect Yourself From.

With countless changes, improvements and added features to the site,  people are confused about their privacy settings.  I came across an interesting article by Kurt Opsahl, Electronic Frontier Foundation, illustrating a timeline depicting Facebook’s shift away from privacy. When Facebook first started off, it was a private space for discussion which was soon transformed into a space that gave people a platform to communicate in many diverse ways. It opened up individual social networks but also became a tool used for advertising. The complex changes and added features on Facebook have critiques and some government regulators in countries fear that this will create a sense of confusion for users when it comes to their privacy settings. A recent article by Sophos states,

“93% of Facebook users would prefer Facebook's privacy options to be opt-in rather than opt-out. That said, a few months prior, we found that:
46% of Facebook users accepted friend requests from strangers
89% of users in their 20s divulged their full birthday
Nearly 100% of users post their email address”
Between 30-40% of users list data about their family and friends”

The recent rage around privacy and Facebook gave rise to a “Quit Facebook Day on May 31st.” Let’s face it, although this created a sense of urgency for the company to act upon the privacy controversy, “Quit Facebook Day” fell flat and not many people quit. The reality is that Facebook is popular and gives people great ways to stay connected. If you are a Facebook user, educate yourself about protecting your privacy on Facebook, think before you click on any links and who you accept as a friend. Alison Diana from InformationWeek  points out how “In the last five years, Facebook's privacy policy has grown from about 1,000 words to today's 5,830 words, according to the New York Times”. This gives more reason for users to start paying more attention to their privacy settings and be informed.  Facebook, recently tried to simplify their privacy settings along with providing better resources for their audience. For more information, people can now “Like” the Facebook and Privacy group where you can get updates, information on how to control your privacy settings and also give feedback.
Here are a few measures you can take to protect your Facebook account and information:

  1.    Be watchful of what you post and who you accept  as a friend

  2.    Don’t click on any suspicious  or “tempting” links

  3.    Be mindful of Malware

  4.    Make your contact information private. Personal information on your profile, like email address, telephone number, home address, date of birth should be set to private/hidden on your profile. Also do not ever post your phone number, BB pin or email address on a friend’s wall

  5.    Protect your photo albums – there is a Facebook Privacy page where you can customize who can see your photo albums. Remember, if you select “Everyone” that means your photo albums are basically public for everyone on the internet to see

  6.    Keep in mind , Facebook does  share  information you make public to third-party applications. You can  now opt out of this;  follow these recommendations  by Sophos for Facebook best practices: application and website settings. I encourage you to take a look at this as it gives great advice and simple instructions

  7.    You can also go to Account Settings and under “Account Security” you can select “Yes” to receive notifications for logins from new devices or other computers.

Lastly, educate yourself and others and be proactive when it comes to sharing and privacy.

 

The Rise of Mobile Malware

We've all heard the warnings about malware: don't click links in emails from unknown senders, don't click suspicious links on facebook, install software found online at your own risk.  What you likely haven't heard about is how mobile malware is on its way, and will change the way you think about your phone.

For years now, phones have been moving beyond simply placing and receiving calls - you can get email, play games, listen to music, download or stream full-length movies, read ebooks, surf the web, do your online banking, control the lights or garage door or door locks or temperature in your house, or videochat with a friend.  And those are just the common tasks - I'm not going to start listing all the quasi-useful mini-apps you can kill time with.  While these functionalities are a gold mine from a commercial standpoint, the average user still doesn't take full advantage of all these features.  Regardless, the ability for the end user to install applications on their phone makes the phone more of a portable computer than a phone, in the traditional sense.  Unfortunately for them, most users still consider their iPhones and BlackBerrys phones, and not portable computers.

I say "unfortunately", because this mentality is what the malware writers will bank upon - people don't think that their devices are at risk, simply because they are using phones, and not computers. 

Until recently, there has been little to no reason for a malware author to expend any effort to write a piece of malware for a phone - there was little reward for their efforts.  All of this added functionality - combined with a sharp drop in the learning curve - has brought forth a veritable horde of potential victims.  Because of this, new tactics are being used - the malware is not only being designed to steal your information and send it to the perpetrators, but can be used as "ransomware" (applications which lock out some or all functionality until you pay a "ransom"), give full control of your phone to the perpetrators, or force your phone to call premium long distance numbers which rack up your phone bill.

Now, I know there are many readers saying to their screens "but I have an iPhone - Apple's ‘walled garden' approach protects me from applications like that!" - and you are correct.  For the time being, iPhones are exempt from malicious applications due to Apple's development policy.  Well, not all iPhones, only about 90% of them.  The other 10% are "jailbroken" - essentially, users have installed an alternative operating system on their phones which allows them to customize the interface, run multitasking (this feature was recently announced as being included in the new iPhoneOS, however multitasking has been available on the "grey market" for several years), or install applications that have not been reviewed by Apple.  

Jailbroken iPhones, BlackBerrys, Android devices, and Windows Mobile devices are all susceptible to mobile malware, since anyone can write and release an application for them.  An Austrailian teenager wrote the first iPhone malware a few months ago, as a Proof of Concept, and that resulted in some nefarious characters altering the code and releasing it into the wild.  Thousands of jailbroken iPhones were infected, with all data that was on the phones being accessible by the perpetrators, and the phones were held hostage until the user paid a ransom.  Spanish security company firm S21sec wrote an app for jailbroken iPhones (also as a Proof of Concept) which showed that the device could be infected and used as a node in a botnet, for doing things like Denial of Service attacks or distributed computing (sometimes used for cracking complex passwords).  In the past few weeks, both Android and Windows Mobile devices have been compromised, and malware released in the wild.  BlackBerrys have remained relatively untouched at the time of writing this, however it is only a matter of time before someone invests the time to write malware for that platform.  

To give you an idea of how much data can be acquired by these apps, here's a list of what S21sec was able to do with their mobile malware:

• Full VNC access (remote control)
• Access to all messages (email, SMS, MMS), contact list, wifi passwords, photos (and their accompanying GPS data), browsing history, keyboard and photo caches, and current GPS coordinates
• Keyboard overlay created, allowing them to capture everything typed into the phone
• "Nuke" the phone (basically, turn it into an expensive brick). This was done by sending a 6-character command to the phone remotely

At present, there is little stopping malware authors from creating these applications and releasing them for public consumption.  If you consider how little people have thought about the security of their devices, and how quick and easy it is to try out the latest hot app, there are likely a lot of users out there setting themselves up for a surprise.  Let's just hope that we don't all have to start paying for anti-virus applications for our phones.

Protecting the World Cup: Ambush Marketing and I.P. Violation

Every four years the eyes of the world are on a 110 metre by 75 metre patch of grass as the best footballing nations of the world take to the pitch in the hope of lifting the FIFA World Cup Trophy. There were nearly 30 million (non unique) viewers of the 2006 World Cup held in Germany and it would be a good bet that there will be somewhere around the same number watching this time around as the event makes its hosting debut on the African continent. With those kinds of TV numbers being thrown around FIFA's official partners and supporters who have spent large sums of money to acquire the advertising rights to this event are going to need assurances that no one, knowingly or not, encroaches on these exclusive Intellectual Property rights.

Now having been recently involved in monitoring I.P. rights for a different worldwide sporting event and being a lifelong supporter of the game of football, I was instantly intrigued when I saw the January/February issue of the World Intellectual Property Review had an article outlining the steps that FIFA was taking in order to keep their partners' I.P. rights exclusive; the focus here was mainly on combating "ambush marketing". The crux of the article is that in addition to having to build FIFA approved stadiums to house the matches, ensuring the necessary security for the participants, officials, and spectators, and constructing the infrastructure needed to make everything run smoothly FIFA mandated that the South African government would need to have preventative and punitive measures in place in case any of the official partners' I.P. rights were to be violated.

According to the article, the World Cup falls under the category of a "protected event" as laid out in Notice 683 of 2006 of the Government Gazette). This means that all of the provisions in Section 15 A of the Merchandise Marks Act of 1941 can and will be applied to any case of I.P. violation throughout the full duration of the tournament; from the 11th of June 2010 to the 11th of July 2010.

Since I've dealt somewhat with Intellectual Property rights in this context I can say with a fair amount of certainty that there is a lot of grey area when it comes to things like fair usage. Some people will genuinely attempt to profit from ambush marketing whereas others will unintentionally infringe. While there are what FIFA calls opportunities for local businesses and traders, they must make sure that they are not in violation of any of the paid sponsors' I.P. rights. In FIFA's own words:

The rights protection programme is aimed primarily at tackling organized ambush marketers, counterfeiters, and unauthorized traders, all of whom seek to profit from an event to which they have not contributed.

As of the writing of the article there have only been a handful of cases of I.P. violation that FIFA has needed to deal with, most of which were settled out of court. One such case of ambush marketing that occurred after the article had gone to print involved South African airline kulula, who ran an ad campaign stating that they were the "Unofficial National Carrier of the You-Know-What". That in and of itself may have been tolerated but when the airline used South African flags in conjunction with football imagery, FIFA stepped in and demanded the cease and desist of the campaign.

We can probably expect the cases of ambush marketing to increase as the event draws nearer; I am reminded of the story of the supporters of the Netherlands national football team in 2006 that were forced by game-day officials to watch a match in their underwear because they had worn orange lederhosen that were sponsored by a Dutch brewer Bavaria, complete with corporate logos and all. Since Bavaria was not an official sponsor of the World Cup, the officials confiscated the pants and the supporters were out of luck. You'll all be happy to know that Holland won the match so at least the supporters had something to cheer about, even if it was a little breezy in the stadium that day.

BrandProtect goes to Boston for INTA

Boston is the place for INTA’s 132^nd Annual Meeting.  From May 22^nd – 26^th, the Boston Convention and Exhibition Centre (BCEC) found right in the heart of Boston will house various committee meetings, academic sessions and networking opportunities.

 

Founded in 1878, the International Trademark Association (INTA) is a non-profit membership organization that is composed of 5900 trademark owners, professionals and scholars that come from over 190 countries.  The goal of INTA is not only the advancement of trademarks and intellectual property (IP) but to encourage fair and effective commerce worldwide. 

 

Rosemary and I have the privilege to attend this year’s meeting and are quite excited about it.  This will be my fourth INTA Annual meeting and every year that I attend I come back with valuable up to date knowledge that is helpful to both me and the clients we serve.  Not to mention, the giveaways at the booths are fantastic, but I digress…

 

I am enrolled in various academic sessions and table topics, but the three sessions that I am most eager to learn from will be 1) an Internet Law update on domain names, Ad Words and auction sites moderated by the provocative J. Scott Evans, 2) protecting your domain name with the impending launch of the new gTLDS and 3) a table topic on Uniform Dispute Resolution Policy (UDRP) proceedings.  INTA is a time to learn best practices for trademark rights protection on a global scale.  I am surrounded by some of the most esteemed minds in the business which helps me to discover effective strategies to deal with IP and trademark issues that I deal with on a daily basis.

 

The INTA 132^nd Annual Meeting is not only for the trademark professional but also for brand owners who want to keep themselves educated and up to date with issues in the world of IP and trademarks.  I encourage anyone who has a vested interest in trademarks to become a member and attend the annual meeting.

Internet Threats - Will You Know What To Do?

We created a short video to make people and businesses aware of some of the internet threats that we all face today. To be prudent in today's internet world, you need to be prepared to respond quickly and effectively to internet threats before they affect your customers, suppliers, stakeholders or employees. You need to have someone to call who understands these challenges and can act on your behalf.

 

As the leader in internet threat management, BrandProtect has been empowering many of the largest organizations in the world, including 5 of the top 10 banks in North America, for over a decade to gain control over how they are represented online, by uncovering and mitigating the issues that put their rights, reputation and revenue streams at risk.

In addition to its more comprehensive enterprise services, BrandProtect also has developed internet911, a program designed for small to mid-sized companies.

The sources for the stats in the video came from various website articles and reports that can all be found online. Some reports are only available to purchase, while others simply require you to fill out a form with your contact information.

1) The Aberdeen Group has estimated that $221 billion a year is lost by businesses worldwide due to identity theft. The Aberdeen Group
http://www.spamlaws.com/id-theft-statistics.html

2) More than 11.1 million adults in the U.S. were victims of identity theft and fraud in 2009. Javelin Strategy http://www.esecurityplanet.com/features/article.php/3864616/Identity-Theft-Cost-Victims-54B-in-2009.htm https://www.javelinstrategy.com/

3) In the last three months of 2009,over 1,000,000 computers in both China and the United States were hacked. McAfee http://www.mcafee.com/us/local_content/reports/threats_2009Q4_final.pdf

4) 8 percent of all registration data was simply false. That's 8 million fake domains in operation. ICANN
http://www.icann.org/en/compliance/reports/whois-accuracy-study-17jan10-en.pdf

5) 14 % of branded searches online go somewhere other than the brand owner’s site. Hitwise
http://www.imediaconnection.com/content/25034.asp

6) Over $400 Billion of counterfeit goods are sold online, with technology products making up over ¼ of this. Havocscope.com
http://www.havocscope.com/activities/counterfeit-and-piracy/

7) There has been a 70% rise in the proportion of firms that report encountering spam and malware attacks via social networks during 2009. Sophos

-and-

8) Over 72% of firms believe that employees’ behavior on social networking sites could endanger their business’s security. Sophos http://www.ithound.com/computing/view_abstract/3511/it-amp-systems-management/security-solutions/security-monitoring/security-threat-report-2010-social-networking-sites-web-clicks-biggest-source-malware

9) $559 Million in Online Fraud. The Internet Crime Complaint Center
http://www.ic3.gov/media/annualreport/2009_IC3Report.pdf

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eBay: “More sinn'd against than sinning”?

Brand owners and eBay shared many a court date throughout the Aughts.  In Europe, the online platform was besieged by lawsuits in France, Germany, the UK, Spain and Belgium by luxury brand owners l'Oreal, LVMH, Hermes and Rolex, while on this side of the pond a high profile case launched by Tiffany in 2004 played out in the U.S.  At the end of the decade the outcomes of the cases were mixed.   In France in 2008 eBay lost two cases; one to Hermes and the other to LVMH. The French courts decided in favour of the rights owners, with eBay order to pay Hermes 20,000 euros while LVMH received 38.6 million euros.  eBay was found to be liable for infringement as the auction house was identified as a broker rather than a host of counterfeit goods.  A contradictory ruling was made in May, 2009 in the L'Oreal vs eBay case, also launched in France, where eBay was recognized as a host, rather than a broker, and along with that status was entitled to certain exemptions.  L'Oreal was found not to have proven infringement by eBay's promotional activities relating to its sale of advertising space.  In the L'Oreal Belgium case the Court of Commerce decided eBay had no obligation to monitor its site for counterfeits, while the Rolex decision in Germany echoed the sentiment stating eBay was not the seller of counterfeit goods, and only had the obligation to remove them once notified.  The saving grace for eBay is that they do remove auctions of counterfeit goods once notified.

Tiffany ended the decade waiting out a decision of their appeal of a 2008 lower court ruling against them.  They had alleged direct trademark infringement, contributory infringement, false advertising, unfair competition and direct and contributory dilution on the part of eBay. The decision was four years in the making, and the District Judge Richard Sullivan said "The court is not unsympathetic to Tiffany and other rights holders who have invested enormous resources in developing their brands, only to see them illicitly and efficiently exploited by others on the Internet, nevertheless, the law is clear: it is the trademark owner's burden to police its mark." Tiffany appealed the decision, but a few days ago, any hopes they had of a hail mary breakthrough were dashed as the 2^nd U.S. Circuit Court of Appeals agreed with the prior lower court ruling clearing eBay on the trademark infringement allegations.

So, with disparate decisions on the books, is eBay a saint, providing a much needed service to the public with 100 million listing appearing at any one time, or are they a sinner, a willing participant in the sale of counterfeit goods and responsible for tarnishing the image of iconic brands around the globe?  In my role at BrandProtect I've had the opportunity to work with eBay and their VERO program for a few years.  We continually sweep the site with a view to removing unlawful listings selling replicas of our clients' products as well as listing that use unauthorized copies of their copyrighted images.

Amongst the redeeming qualities I think eBay has are they:

Communicate rules of conduct

eBay has a user agreement that each user must read and accept prior to using the service.  The agreement requires users refrain from violating laws, including those concerning third party rights.  eBay imposes sanctions such as cancellation of listings and account suspensions in cases where users may have violated these rights.  There is a section concerning intellectual property rights that includes information on what users may list and sell

Are compliant with their policies -  they close down the culpable -quicky!

eBAY's commitment is that 70-80% of listings are removed within 12 hours and 75% of them removed within 4 hours.  My experience has been that once notified, the auction house makes every effort to remove these infringing items quickly.

Are cordial, clear and concise in their communications

Enough said!

As of this writing what IS certain is that Tiffany and eBay will be heading back to court yet again.  The appeals court is returning Tiffany's lawsuit to the trial court for further action on a false-advertising claim. On the infringement issue, however, Tiffany Chief Executive Officer Michael J. Kowalski said in a statement "eBay knew that counterfeit merchandise was being sold on its site -- and eBay took no effective steps to stop it.   eBay deliberately misled consumers for profit, and unfortunately the court has justified its actions."  Tiffany said it may appeal this decision to the U.S. Supreme court.  So it looks like this decade may look very much like the last, with trademark owners continuing to battle it out with eBAY.