As the value of domain names increase, typosquatting (conscious misspellings) and cybersquatting (registering a brand as a domain name on another top-level domain like .co instead of .com) becomes increasingly common. This means that there are people that attempt to profit on someone else’s brand by registering domain names with the aim of channelling traffic (usually to questionable sites) and/or attempting to commit fraud.
Infringements can vary in its gravity. In some cases, they can be serious but not disastrous. For example, if it is at a strategically important domain name but where the illegitimate use of the brand is at the moment not seriously damaging the brand. In those cases, the trademark owner usually wants to get control over the domain name. If we can prove that the person behind the registration lacks a legitimate interest and has acted in bad faith, it is often possible to get control of the domain name the legal way. This is usually achieved with a cease-and-desist letter. If that is not enough, the next step is usually to initiate a domain name dispute. For example, if it is a .COM domain, it would be through the UN agency WIPO’s dispute resolution procedure named UDRP. In the case of a dispute, it is about getting control over the ownership of the domain and thus taking down the content on the website.
In some cases, a domain name may constitute a direct and acute threat to the brand. As a trademark holder in that situation, you usually do not have time to wait for the result of a warning letter or domain name dispute. Alternatively, it is only the content on the website, not the domain name itself, that constitutes the infringement.
In that case, a “takedown” is a very efficient tool.
A takedown means that we, on behalf of our clients, report the trademark and/or copyright infringement to the technical providers that the domain name is using and plead our case why the website should be taken down immediately. Usually, the providers then take the website down within a few days. The advantage of a takedown is its efficiency as well as its cost-effectiveness.
There is a direct connection between how well-known a brand is and the risk of that brand being misused on the internet. The bigger the brand – the more infringements. For companies with many domain name infringements, or sites with infringements on the websites themselves (not the domain names), it is just not an option to use the warning letters and disputes procedure everytime an infringement occurs. Then you just want to make the infringement go away.
The disadvantage of just using takedowns is that it does not mean you get control of the domain name, you also need to monitor the domain to see if the page reappears.
Therefore, takedowns are often carried out in at the same time as cease-and-desist letters are sent to the holder of the domain name, as well as potentially continuing with a domain name dispute (if possible). The result is a quick solution to the immediate problem with the infringement, while also providing a long-term solution by getting control of the domain name legally.