A recent case in the United States has highlighted the dangers that brand owners face in the online world where infringing content can be disguised in a foreign language. The case1was brought by the well-known casino operator based in Nevada Las Vegas Sands Corp (LVS) and involved the registrants of 35 domain names (Defendants). The decision has implications for Australian trade mark owners as it highlights the ease with which individuals can register anonymously websites that display infringing content and associate themselves falsely with a particular brand.

Background

In June 2014, LVS commenced proceedings in the Nevada District Court against the registrants of 35 domain names for trade mark infringement. The registrants of the infringing domain names used a combination of:

  1. the SANDS trade mark (owned by LVS);
  2. the Chinese equivalent to the words "GOLD SANDS" using Chinese Jinsha characters; and
  3. images of LVS’ VENETIAN RESORT logo

LVS had been unable to identify the registrant/s of the various domain names, as this information was hidden through the use of privacy protection services.  Privacy protection services are offered by popular registrars including Go Daddy, Name.com and eNom, and provide registrants with the opportunity to ensure that their name and contact details remain out of public view in a whois search.  These services are employed commonly in cases where registrants of domain names operate monetised websites or if they wish to redirect traffic to websites containing infringing material.throughout numerous websites operating out of China (Websites), in order to affiliate falsely those websites with LVS.

LVS brought proceedings claiming that the use of the domain names constitutes:

  1. trade mark infringement;
  2. false designation; and
  3. trade mark dilution under the United States Lanham Act;
  4. common law trade mark infringement; and
  5. unfair competition.

Court OrdersLVS argued that the Websites, which were accessible to citizens in the United States, lured prospective gamblers to overseas online casinos.  It also claimed that the unauthorised use of its trade marks by the domain name registrants threatened to dilute its reputation in the gambling world.  LVS requested that the Court order the domain name registrars to remove or disable the domain name server information for the infringing domains.

On 30 June 2014, the Nevada District Court issued a temporary restraining order requiring the domain name registrars to remove or disable the Websites pending a trial. The Court stated that the issue of a restraining order would "protect consumers against deception and confusion arising from the use of Las Vegas Sands Corp federally registered trademarks by persons other than Las Vegas Sands Corp".2

Importantly, the Court also ordered LVS to subpoena the relevant privacy protection service/s for the purpose of identifying the unknown registrants.  The Court reasoned that its order was justified on the basis that LVS would be likely to succeed on its claims of false designation of origin claims and trade mark infringement if the proceedings progressed to a trial.

Following this order, LVS were able to remove at least some infringing use of its brand from the marketplace.  This would have the effect of lessening consumer confusion and thereby protecting the LVS brand.

On 10 July 2014, the Court issued a preliminary injunction order, requiring that the Defendants be restrained temporarily from transferring the Domain Names to anyone. The Court found that a failure to issue a preliminary injunction would cause LVS to suffer additional irreparable injury and potentially incur further costs.  It was also found that a preliminary injunction was in the interest of the public as it would protect consumers against the deception and confusion arising from the use of LVS' trade marks by persons other than LVS.

A date for a full trial of this matter has not yet been set.

Application in Australia

An important finding by the Nevada District Court was that the Websites were accessible to people in the United States.  If an analogous situation arose under which an individual uses an Australian registered trade mark on its website, but uses a French translation of that trade mark (and therefore sought to conceal or disguise the trade mark in another language), the trade mark owner may consider taking proceedings against the individual.  The trade mark owner would, however, need to demonstrate that the content of the website in question was accessible to people in Australia.

This might be done if the website displayed indicia of specific interest to Australians, for example through the display of the Australian flag or the use of Australian dollars for payment.

In order for a successful claim to be established, the trade mark owner needs to ensure that one of the following claims can be proved against the infringer:

  1. infringement of a registered Australian trade mark pursuant to section 120 of the Trade Marks Act 1995;
  2. misleading and deceptive conduct in contravention of sections 18 and 29 of Schedule 2 (Australian Consumer Law) of the Competition and Consumer Act 2010 (Cth); and
  3. common law passing off.

Similar difficulties would exist in respect of claims that may be brought under the Australian Consumer Law or passing off.One difficulty remains, at least in the contexts of a claim brought for trade mark infringement, that the use of the mark with a different language may result in an argument being made that the mark (or a mark which substantially identifies or depicts similar to the registered mark) has not been used.

Take Home Points

The online world presents considerable difficulty to trade marks owners who seek to enforce their trade mark rights Registrants of domain names globally are able to manipulate the content on their websites in such a way that it has the effect of diluting or tarnishing an overseas brand.  Due to tools, such as privacy protection services, the identity of a domain name registrant can remain unknown even when internet traffic is being diverted for the registrant's commercial gain.  This factor, coupled with the variances in how stringently intellectual property policies are adhered to in different jurisdictions means that trade mark owners can find it very difficult to seek court remedies to prevent this kind of activity.

It is important to note that, in this case, while LVS could not identify initially the registrants behind the Websites containing the infringing material, it was able to obtain an order from the Court to subpoena the privacy protection services to uncover this information.  This would enable it to pursue applicable legal remedies against the Registry – this may be of interest to Australian trade mark owners.

It is important that brand owners understand that the burden of enforcing their rights in the online world falls predominantly on their own shoulders.  As such, it is important for brand owners to monitor online content for potential infringing content, including websites that contain content in another language.  Monitoring and policing potentially infringing material will assist in protecting brand owners, including online gambling brand owners, in ensuring that their trade marks remain enforceable.