MONSTER news for TM infingers - you will "disappear".

[Gerry]

Obviously, companies are fed up with the registrars doing nothing to stop illegal TM name infringement.

And we all know that ICANN't iWon't do a damn thing about it.

So what is the company to do?

File a lawsuit, get a judge to order the de-indexing of all sites in all major search engines, and company takes ownership of all the domains.

Look for this action to become the defacto method of domain name issues.

Screw the URDP and WIPO people. If there is a clear cut case of infringement (400 sites illegally using your name and selling fake goods under your name), why file an action with a "panel" when you can do the same thing in federal court where a real judge can hear the case. I like the first line in the text, After a series of one-sided hearings - as if the owners of the infringing sites are going to show up and defend themselves.

I am surprised that this had not become the norm.

It will.

Federal Judge Orders Google, Facebook to Disappear Hundreds of Sites

After a series of one-sided hearings, luxury goods maker Chanel has won recent court orders against hundreds of websites trafficking in counterfeit luxury goods. A federal judge in Nevada has agreed that Chanel can seize the domain names in question and transfer them all to US-based registrar GoDaddy. The judge also ordered “all Internet search engines” and “all social media websites”—explicitly naming Facebook, Twitter, Google+, Bing, Yahoo, and Google—to “de-index” the domain names and to remove them from any search results.

The case has been a remarkable one. Concerned about counterfeiting, Chanel has filed a joint suit in Nevada against nearly 700 domain names that appear to have nothing in common. When Chanel finds more names, it simply uses the same case and files new requests for more seizures. (A recent November 14 order went after an additional 228 sites; none had a chance to contest the request until after it was approved and the names had been seized.)

FULL STORY

 

[Deleted member 5660]

I even hear rumors that Twiiter is going to start going after people using their trademark bird logo.

 

[DN BROKER]

its about time

 

[dmyre]

Most TM domains don't need Google or other search engines to drive traffic.
They receive type in traffic...

Aside from that, the domain itself does not also automatically indicate that a TM has been violated.
Chanel.net may not be a violation, but chanelpurses.com would be. It's more about the use of the domain.

 

[Deleted member 5660]

If you have store selling real Chanel purses then chanelpurses.com may be perfectly legal.

 

[Gerry]

If you have store selling real Chanel purses then chanelpurses.com may be perfectly legal.

Only with permission from chanel.

Since Chanel is the one to file, obviously none mentioned in their filing had permission.

 

[Biggie]

don't be so quick to hail this news


it's basically the taking of domain names without due process



the question should be asked, did they try to utilize the current systems in place to prevent misuse of their brand


if the answer is no, then that means those with money can bypass, while you may still have to go thru traditional means


and that's not equality.

 

[south]

don't be so quick to hail this news


it's basically the taking of domain names without due process



the question should be asked, did they try to utilize the current systems in place to prevent misuse of their brand


if the answer is no, then that means those with money can bypass, while you may still have to go thru traditional means


and that's not equality.

Agreed. And as with anything else, once a precedent is set, it's difficult, if not impossible to reverse it. Many laws, regulations, and government actions start off well intentioned, but be careful where they can lead.

 

[Gerry]

don't be so quick to hail this news

I have a suspicion that the legal team representing Chanel did its due diligence when putting together this case before filing action in Federal Court.

Personally, I have no doubt that the legal team and their paralegals visited and documented every site submitted to support their claim.

Honestly, if they did not I equally have no doubt that the judge when have thrown them and their case out of the building.

There are no current systems in place to prevent misuse of their brand. The only system in place are the so called defense regs which is laughable at best.

WIPO and a URDP are nothing more than a panel making a decision, sometimes being a panel of one. And we have seen time and time again that the decisions reached are challenged in a real court and overturned.

Seriously, if I wanted to file an action against someone using one of my TM's, I would never waste time, money, or effort with a WIPO. I am not "money" which means that anyone, irregardless of their means, can pursue justice in the legal system. If i needed hire an attorney to represent me and was paying by the hour for that representation, I would not be wasting money to appear at a hearing. Regardless of the outcome, either party could then appeal in a real court. So why start elsewhere.

 

[DomainsInc]

This is more about selling counterfeit items than violating word marks.

 

[Dave Zan]

Good luck trying to enforce the decision, especially on parties not within the court's jurisdiction.

 

[Gerry]

Good luck trying to enforce the decision, especially on parties not within the court's jurisdiction.

If the names are registered in the US and hosted in the US, does that not constitute jurisdiction?

 

[Mark Talbot]

Seems like Nevada is fast becoming the place to settle domain, TM, Copyright disputes involving the internet. It is also a nice place to legally steal domains from you.

AKA :: Righthaven llc

 

[Gerry]

AKA :: Righthaven llc

Righthaven has been stomped into the ashes by one of our very own members.

 

[Mark Talbot]

Righthaven has been stomped into the ashes by one of our very own members.

Is there a thread here on that?
I would love a good read.

 

[Gerry]

Is there a thread here on that?
I would love a good read.

Go to WIRED.com and do a search on Righthaven. There are several articles that have been published. Marco occasionally posts on the forum.

 

[Dave Zan]

If the names are registered in the US and hosted in the US, does that not constitute jurisdiction?

One thing I learned from lawyers is that a court order only applies to parties or entities within its specific jurisdiction, or those the law specifically covers. Definitely you follow those made in the jurisdiction you're domiciled at or doing business in, but not necessarily those issued outside of that.

So if I'm in Montana, obviously I have to comply with a order made by a Montana court. If I get an order from, say, California or even outside the country, I don't have to follow either one unless some specific law says otherwise.

Now, I could be wrong on this, but one exception is if I get an order from the Ninth Circuit Court of Appeals. That court covers Alaska, Arizona, Idaho and Montana, though I can't recall how many other states are within the Ninth Circuit's coverage.

Thus, I wonder how exactly is that Nevada judge's order going to be enforced on, say, Facebook since they're in California. Not unless there's maybe some obscure lawful agreement between NV and CA I'm not aware of, or if Facebook chooses to comply with it anyway.

Anyway, I won't mind being corrected (especially by a lawyer) as long as it's factually verifiable. All this is AFAIK.

 

[Gerry]

That court covers Alaska, Arizona, Idaho and Montana, though I can't recall how many other states are within the Ninth Circuit's coverage.

Interesting that you mention Arizona. The tail end of the judgement in favor of Chanel is that those domains found to be in "violation", A federal judge in Nevada has agreed that Chanel can seize the domain names in question and transfer them all to US-based registrar GoDaddy. And, GoDaddy, of course, is in Arizona. Most likely just coincidence.

On the flip side of this, good luck trying to force Google to comply since Google in the past has been less than cooperative with US courts.

 

[Biggie]

This is more about selling counterfeit items than violating word marks.

i think some missed this point, so i've bumped it.

 

[Gerry]

i think some missed this point, so i've bumped it.

Yes, and no.

How were the sites investigated? For the most recent batch of names, Chanel hired a Nevada investigator to order from three of the 228 sites in question. When the orders arrived, they were reviewed by a Chanel official and declared counterfeit. The other 225 sites were seized based on a Chanel anti-counterfeiting specialist browsing the Web.

We all know that there are products/services companies can order that will alert them to potential TM violations.

Ultimately, it will be up to someone within that company to make the determination which sites/names are actually company owned/authorized and which ones are not.

Start with a list of suspicious sites and go from there.

It is interesting to note that an investigator ordered from three sites (all fake goods) and assumptions were made regarding the other 225 sites. Of course, they were not just assumptions because someone within the organization would know which sites were legit.


Honestly, I can not even begin to imagine how huge the forgery market is. The only concept I can come up with to put this into perspective (for my own benefit) is, If someone is willing to pay money for something, someone, somewhere will forge it to take your money. Its all market driven and consumer driven. Naturally, the more popular an item becomes the more prone it is to being duplicated and forgeries made.

Still, I have a difficult time imagining some astronomical dollar amount in lost revenue to these companies. On a global scale, every product in existence that has a popular following from perfume to iPhones to Rolex watches...the dollar amount lost would be the GDP of many nations.