So you have a successful brand and online store but have learned that there’s a website, or perhaps even an Amazon storefront, utilizing your exact brand, right down to the spelling and even your logo! This copycat site is threatening to trade off of your name to divert traffic and potential sales away from you through selling similar or inferior quality products and potentially harm your brand altogether. What if there was a way you could not only shut down the offending site, but also have it cancelled or, better yet, transferred to you, all without having to go to or incur the expense of a lawsuit in Federal court–and in a fraction of the time to boot?
When Someone Imitates Your Brand
This very scenario happened earlier this year to one of our Phoenix e-commerce law firm‘s clients, a successful online seller of niche, seasonal merchandise. For the sake of this article (and confidentiality), let’s say that their company brand is “ELBOW”, which they previously registered as a trademark with the United States Patent and Trademark Office. Elbow markets and sells several thousand separate SKUs and releases a few thousand new items a year through its “elbow.com” website as well as its Elbow branded Amazon store.
Elbow discovered that someone had not only registered the domain ELBOW-STORE.COM but further created a website not only using the client’s name but also the client’s logo to sell products that were in some cases identical to that of Elbow and was also using their name on Amazon.com to sell similar goods to the public.
Legal Options for Dealing with Copycat Websites
I explained the legal options to the client: They could try and sue the owners of the offending site, which they were willing to do. The problem is, suing anyone in (most likely) Federal court, even to obtain a preliminary injunction against the copycat site owner, would be extremely expensive. Also, oftentimes, the purveyors of these copycat sites are located overseas (as was the case here), usually in jurisdictions where enforcement of the laws is, shall we say, inconsistent (again, as was the case in this situation). Even if the nefarious person was here in the States and could be located and served with a lawsuit, they might be operating as a “judgment proof” entity, without anything to collect damages from.
Finally, in this attorney’s experience, in nearly all cases like this the client mainly just wants the website taken down and the offending activity to stop. They’re not looking for damages or some other monetary remedy.
Enter The UDRP
However, for brand owners with registered trademarks, there is another way; one that is far less expensive, usually obtains the needed result much faster and with more certainty. It’s called the Uniform Domain Name Dispute Resolution Proceeding or “UDRP” for short.
The UDRP is a streamlined (and, in the case of most top-level domains, mandatory) arbitration process that most of us who registered domain names are automatically made parties to through our agreement with our particular domain registrar. Chances are, if your business has a website, you are subject to the UDRP, whether you know it or not. This is a good thing, since the odds are so is whoever is copying your brand through their imitation website.
Why is the UDRP such a powerful tool for successful brand owners who attract bad actors looking to trade off of the popular brand?
Speed: In most cases, a final UDRP decision will be reached around two months from the date of the filing of the initial UDRP complaint, as opposed to several months (if not years) for a lawsuit in Federal court.
Cost: Generally, a complainant in a UDRP proceeding will be looking at several thousands of dollars (in both legal and filing fees) to complete a UDRP proceeding, as opposed to tens of thousands or more likely hundreds of thousands of dollars to litigate in Federal court.
Remedy: Under the UDRP, the only result a complaining party can have is either cancellation of the offending web domain or its transfer to the complainant, that’s it. No money damages of any type are allowed for. This might seem like a drawback to certain brand owners but, as I mentioned earlier, most of my clients just want the imitating site taken down and the activity halted. So, while my client wouldn’t be able to obtain a judgment for their damages, if they won their UDRP case, they could have the offending “-store.com” domain automatically cancelled or (as we usually recommend) transferred to them, which is what they were hoping to achieve anyway.
If you’re reading this and thinking, well couldn’t whoever is copying my brand just move the domain to another registrar? In the early days of the UDRP, this was an issue, however, under the updated UDRP rules in effect for some time now, the domain name in question is required to be “locked” by its registrar upon a finding that the UDRP complaint meets the minimum standards for a proper complaint, which typically occurs within a day or so of electronic transmission of the filing. The owner of the offending domain will then receive the Complaint at the same time as the selected UDRP arbitrator, leaving the copycat domain owner no opportunity to jump ship to another domain registrar.
Shutting Down The “-store“
Not surprisingly, Elbow asked our Phoenix Internet law firm to move ahead with the UDRP process. Within a week or so of working with the client’s team, we were able to prepare the Complaint and supporting evidence for electronic submission to the World Intellectual Property Organization (WIPO) (the body we selected as to serve as the arbitration panel) to kick off the UDRP process.
To give you some idea of timeframe, our firm filed the UDRP case for Elbow on April 15th, and we received a decision from the WIPO panel on May 25th! So, give or take, the whole process took 40 days. Such a timeframe to resolution would be unheard of in an actual trial court in all but the rarest of circumstances.
What was the result for Elbow? The WIPO arbitration panel in the matter found in favor of the client and ordered the offending domain name transferred to Elbow (or, rather, the new registrar designated by it). Within a few days, we received a notice from the copycat domain registrar confirming their acknowledgement of the UDRP result and letting us know that, once they received the details on the new account where Elbow wanted the domain transferred to, they would take care of it (and they did). As a result, the copycat domain became the property of our client and no longer under the ownership or control of the offending party.
Takeaways for Online Business and Brand Owners
The exact requirements, ins and outs, and strategic considerations of a UDRP proceeding are beyond the scope of this article and will be the subject of future articles. However, if you and your brand are the target of a copycat website, here are the biggest takeaways:
You can fight back: if a competitor or other party is attempting to infringe upon or copycat your successful e-commerce site or brand through a website, there is something you can do about it. Not only that, but the UDRP offers you a highly effective tool that does not involve lengthy, expensive, and uncertain litigation.
Register your brand ASAP: Having a Federally registered trademark is basically a must-have requirement for a viable UDRP complaint. A trademark can include just your plain word mark, as well as any design marks (i.e., logos) that you are using as part of your brand or online business, or both. In the case of Elbow, they had only registered their actual brand name as a trademark and not their actual design mark or logo, however this was not fatal to their chances, as the word mark itself was a major component of the infringement. Although Elbow didn’t have their logo registered as a trademark, we were still able to slip into the UDRP complaint the wrongdoer’s use of the logo as a further demonstration of their bad faith.
[NOTE: If you have not yet registered your trademark, logo design, or trade dress, our Phoenix trademark law firm handles trademark evaluation and registration with the USPTO, responding to inquiries from USPTO that might occur post-filing, as well as post-registration filings]
Don’t Go It Alone: Keep in mind that the UDRP, as its name suggests, is a proceeding and one that comes with its own set of procedures, applicable rules, standards of practice, and case precedent. While you may be tempted to go it alone, we don’t recommend this. UDRP panel decisions are littered with the proverbial bodies of brand owners and businesses who tried to “wing it” on a UDRP case on their own. Even actual attorneys and in-house counsel for major companies often lose their UDRP cases by not knowing the rules or not taking the process as seriously as they would litigation before an actual trial judge.
Lastly, larger companies and in some cases individuals will sometimes try and abuse the UDRP process to intimidate or bully persons and smaller businesses with legitimate rights to their domain name. Although we mainly represent UDRP complainants, keep in mind that we also represent individuals and business who are on the receiving end of a UDRP complaint for their validly selected domain name. Keep in mind that there are defenses available to help you hang on to your valuable domain name property!
If you have more questions about the UDRP and whether or not your given domain situation might apply, don’t hesitate to visit our website and send me an e-mail directly. We are an e-Commerce law firm based in Arizona but have represented clients all over the United States and internationally.
Ben Bhandhusavee is the Founder of BHANDLAW, PLLC, a technology and e-commerce law practice advising founders and management teams on select e-commerce and intellectual property matters, as well as corporate and technology transactions. The firm serves corporate and individual clients throughout Arizona, the United States, and internationally. For more information, feel free to reach out using the contact form on the right or call us at (602) 222-5542 to schedule a meeting. Connect with Ben on LinkedIn or Avvo.