A recent report by Nominet (infographic here), the operator of UK-based domain suffixes, shows that the number of domains removed doubled last year.
From 1 November 2016 to 31 October 2017, 16,632 domains were suspended following law enforcement referrals. The top three referrers were The Police Intellectual Property Crime Unit (PIPCU) (13,616), the National Fraud Intelligence Bureau (NFIB) (2,781) and Trading Standards (131). PIPCU’s dominance shows that initiatives such as Operation Ashiko, which targets the sale and distribution of counterfeit websites with brand owners’ help, have a purposeful role in online anti-counterfeiting measures.
It’s important to take a proportionate and holistic approach to brand enforcement. Initiatives such as this are a very cost-effective means of addressing an issue at the outset. Indeed, the range of legal grounds that may be cited (from IP infringement through to computer misuse and financial services legislation) make this a versatile option and a useful resource for brand owners to have in their online enforcement toolkit.
We’ve previously noted the rising trend in domain identity theft, including duped individuals’ details being used and legitimate business’ domain being squatted on. In addition to law enforcement’s involvement, brand owners should consider filing domain inaccuracy complaints. These complaints can be successfully made either by gaining a wronged individual’s cooperation, e.g. a letter from them confirming the domain inaccuracy, or by conducting investigations to show that the domain owner’s contact details are bogus and that the domain should be deleted.
Where these low-level enforcement measures don’t work, the next step for brand owners will depend on the domain in question. If the domain concerns the brand owner’s trade mark, a simple DRS complaint (the UK UDRP equivalent) can be filed. Where the domain is unrelated but the content is of concern, brand owners will need to consider engaging with all of the providers that are powering the website, including the Registrar, ISP and Host. DMCA and E-Commerce Directive takedown letters can prove effective here, as can reference to the infringer’s breaches of the relevant intermediaries’ terms and conditions. If these fail, brand owners would be well advised to consider revisiting further investigations to determine if formal legal proceedings are warranted.
All in all, whilst there’s no push button panacea to online IP infringements, the UK offers a good base level of assistance to brand owners. Brand owners should make sure they use these cost-effective resources and stepped escalation strategies as part of a wider brand toolkit.