Why Your Trademark Is a Plastic Sword on the Internet

Historically, registering a trademark gave you the right to “prevent an offending use that creates consumer confusion.” Those were the old days in the physical world. On the Internet trademark holders use a plastic sword against domain pirates and other spoilers.

When your intellectual property (logo, domain names, products and other patents) is abused on the Internet, usually the enemy is invisible and there could be a whole army of guerrilla warriors out there. When someone registers a domain name just too close to yours, it will damage your business. A domain in the wrong hands hinders navigation to your website. Someone is deliberately trying to do business with your confused consumers. And it is not easy to recover the domain name. There are 2.500 disputes at WIPO (World Intellectual Property Organisation) per year. The number of cases have been stable the last years, even though online brand infringement in general is sky-rocketing. Have trademark holders given up?

I believe, there are three different reasons:

1. It´s quicker to negotiate with the domain pirate.

2. It costs min. USD 1.500,- per case and could take months.

3. Live and let live. Most brand owners prefer to focus on other tasks

Domain dispute decisions is a gray area. Using traditional trademark law for the Internet is like comparing apples and oranges. The Internet is a different ball game. Is it a trademark infringement when another´s trademark is part of a domain name? When will the registrant be an offender of the brand, when it is also a generic term (think Holiday Inn or Playboy)? Questions like these have led to contrarian and controversial arbitral decisions.

If you do not want to outlaw your brand on the Internet, it is important to implement a pro-active online brand protection strategy. This includes general brand monitoring, getting your domain names in time, take control of social media accounts on Facebook, Twitter etc.