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Question regarding DMCA Takedown

Santa Clarita, CA |

I currently run an internet website whos domain name and brand name is trademarked.

I have a competitor who has setup a site to badmouth our company which contains our trade marked name in their url as well as some of our images on their website.

Do we have the right to send DMCA notices to their host and google for this issue and if so can we only force them to stop using our images or can we force them to take down the domain which is misleading our customers by using our name.

Thank you

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Attorney answers 3

Posted

DMCA takedown notices are for copyright infringement only, not for trademark infringement. The copyright infringement issues would be resolved if they removed the images.

However, you may well have the ability to get the domain name transferred to you using the UDRP procedure. Check the link below for more information. Unfortunately, a UDRP Complaint costs significantly more than a DMCA takedown notice, but in my experience they are usually very effective and fast and much cheaper than litigation.

Clifford D. Hyra

Clifford D. Hyra

Posted

To be clear, you could send DMCA takedown notices for the image copying.

Posted

By way of explanation, DMCA is not a hammer for the copyright agrioeved. Instyead it is a carrot to offer the web host. ‘If you take down the offending page I will not be able to sue you for contributory infringement, which I otherwise would.’

I see no reason the same offer could not be made to the host of a web page that contains an alleged trademark infringement—although the procedure is not specified by statute. The Lanham Act (trademark law) absolves the “innocent” publisher of a TM infringement, and I assume a court would extend the innocence to a web host. But as soon as you give a notice similar to a DMCA notice, they are no longer innocent.

Discuss both of these with your I.P. attorney, along with anything else that concerns you.

Information here is general, does not create a lawyer-client relationship, nor a substitute for consulting with an experienced attorney on the specifics of your situation.

Clifford D. Hyra

Clifford D. Hyra

Posted

There is no harm in asking the host to take the webpage down due to the trademark infringement, so I suppose it is worth a try. However, most hosts will take down a webpage after receiving a DMCA takedown notice as a matter of course. The same is not true for a letter about trademark infringement. Some companies like Google (Adwords) and Sedo may delist a domain after a claim of trademark infringement, but many hosts will tell you to take it up with a UDRP action. They are not in a position to adjudicate claims of trademark infringement and there are no established legal procedures for them to follow.

Posted

One aspect that would require further facts is the use of your trademark in the URL. Your competitor has the right to start a domain called www.xyzcompanysucks.com. The UDRP Procedure is limited to only the clearest cases of cybersquatting, and would probably not work for you in this instance. You need to discuss this with an attorney in a confidential setting to fully understand your rights before large amounts of money are spent.

Clifford D. Hyra

Clifford D. Hyra

Posted

This is not correct. Please see http://www.wipo.int/amc/en/domains/search/overview2.0/#13.

Andrew Kevin Jacobson

Andrew Kevin Jacobson

Posted

I think it depends of the circumstances: See Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206. That decision concerned the domain name <covancecampaign.com> for a criticism website, and it was decided that: “upon consideration of the degree of initial confusion arising from use of the Disputed Domain Name coupled with the very limited potential for the public to be misled in the actual circumstances of use, the Panel finds that the Respondent is making a legitimate non-commercial or fair use of the Domain Name for the purposes of the first limb of paragraph 4(c)(iii) of the Policy.” The respected panelist in that case also stated: “The overriding purpose of the Policy is to prevent cybersquatting in favour of legitimate trademark owners but in doing so paragraph 4(c)(iii) of the policy clearly seeks to balance the trademark owner’s right against the rights of a domain name owner in circumstances where use of the trademark as part of the domain name is truly for the purposes of criticism and the domain name owner in no way seeks to make a commercial use of the trademark or to tarnish it. Nowhere is it expressly anticipated by the Policy that this paragraph may not operate if the domain name at issue is found to be identical or confusingly similar to the Complainant’s trademark.”

Clifford D. Hyra

Clifford D. Hyra

Posted

I agree, it depends on the facts as well as on the panelist (unfortunately, the panelist matters all too much in these proceedings).

Andrew Kevin Jacobson

Andrew Kevin Jacobson

Posted

I completely agree -- I wish it weren't so dependent on a single panelist.

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