Protecting Your Brand From Copycat Websites

How We Can Help

Assessing the underlying infringement: We review the get-up of the copycat website including the overall impression created, whether your text and/or images have been copied and branding used to assess the strength of any trade mark infringement or passing off claim you may have, taking into account your existing trade mark protection and reputation in the market.

Challenging the domain name: Where your brand name has been incorporated into a domain name, we can bring a complaint under Nominet's Dispute Resolution Service (in respect of .uk domains) or the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) (in respect of most other domains), seeking transfer or suspension of the infringing domain. These procedures are available even where a business or individual has proven difficult to identify or contact, since a successful complaint typically results in the disclosure of registrant details that are not otherwise publicly available.

Identifying the party responsible: Where the owner of a website has been concealed, hosting providers, registrars, and platforms will typically decline to disclose registrant or account-holder details on request, and will often only do so once formal proceedings, such as a UDRP or Nominet complaint have been brought.

Other Steps

While a hosting provider, registrar or platform may not disclose the identity of the person behind the website or account, it may be prepared to take down infringing content or disable access to an infringing website following a complaint. This can be a relatively cost-effective first step and is therefore often worth pursuing, particularly where there is good evidence of infringement. It can also send a clear message to the infringer that their activities have been identified and are being challenged.

On occasion we may draw on specialist enquiry agents to help find out who is responsible and where they are located. This can assist in identifying the appropriate party against whom further action can be taken, where removal of the infringing content alone does not resolve the issue.

Challenging a trade mark application: Where the infringer has attempted to register a trade mark which is the same as or similar to your brand, we can oppose the application before it proceeds to registration, or apply to invalidate or revoke it if registration has already taken place.

Sending a formal letter of claim: If the infringer can be identified in many cases, a letter supported by clear evidence setting out the infringement and requiring the infringer to cease using the branding in question, together with any related domain names or social media accounts, is often sufficient to resolve the matter without the need for further action.

Litigation: Where an infringer does not respond to correspondence, or persists in the infringement, we can bring proceedings for trade mark infringement and/or passing off, seeking remedies such as an injunction, damages, or an account of profits. The infringer must be identified but if an address cannot be found, it is often possible to seek permission from the court for alternative means of service of the claim. Often the infringer will not respond to the claim in which case a default judgment can be obtained and can be sent to hosting platforms and registrars who will usually comply by taking down the offending website or content.

A Recent Example

We recently acted for a client whose name and branding had been closely replicated, with minor alterations, by an individual operating a number of websites and social media accounts. The identity of the individual behind this was not apparent, and initial enquiries to the hosting providers to establish who was responsible were unsuccessful. We brought UDRP complaints, which, each time resulted in decisions in our client's favour and the transfer of the domain names to our client. To assist in identifying and locating the individual responsible, with a view to bringing a direct claim, we also engaged an enquiry agent, whose work complemented the information obtained through the UDRP process. In parallel, we took steps to have infringing content removed from the platforms on which it appeared, which provided a further and often more immediate means of stopping the infringing activity and limiting its continued use and dissemination online.

The matter illustrates a practical point that is easily overlooked when dealing with online infringement: having evidence that your brand is being copied does not necessarily mean that you immediately know who to pursue. Where the operator has deliberately kept their identity obscure, there are number of steps that can be taken to seek the removal of infringing websites and content. And although tracing the infringer is an important part of the wider enforcement strategy, it is not a barrier to taking immediate action.