This suite of templates covers what to do if you discover that someone else is using a website that infringes your intellectual property rights.
They might be using your brand name or trade mark as the name of their website, they could have copied some of your content (written, photographic, recorded or illustrated, for example), they could be asserting or implying an untrue association with you...
There are multiple ways in which they could be freeriding on your creativity, investment and hard work.
Our guide, created in collaboration with the fab legal experts at Stobbs, takes you through the steps you can take, and the options that may be available, if this happens to you.
If you want to complain about someone having registered a similar domain name for their website, where they've not copied or undermined any other rights you might have, you'll need our separate guide on how to handle someone using a similar domain name.
It's quite possible, and does happen, that someone infringes your rights while using a similar domain name at the same time. If that's the case, you can use the templates in this guide and simply drop in the sections relating to domain names from our domain name infringement template letters, which you can easily find within our domain name infringement guide.
What IP rights does your website contain?
Typically, a website will contain a collection of intellectual property (IP) rights:
What you publish (not the ideas or concepts, but how you present them) in your choices of words, pictures, video or sound recordings is material that automatically entitles you to copyright protection.
It makes no difference where you've presented them, whether it's on your website or in brochures, reports, marketing materials, etc.
You don’t have to do anything to generate this protection. It doesn’t need to be registered.
And if someone takes those blocks of words, images or recordings and uses them without your permission, they’ve infringed your copyright.
Your website also hosts trade marks that you own. Your brand name, choice of logo and any slogans you use may all be trade marks. Your domain name may contain your trade mark too.
Whether you’ve officially registered your domain name, trading name, brand name, logo, etc. as a trade mark or not (it’s not expensive to do, so you really should!), you're entitled to protect it and to object to other people freeriding on the creativity, reputation, investment of effort and money, etc., that you've put into it making it part of your brand identity.
It’s harder, but not impossible, to defend against third parties using your rights if you haven’t registered your trade marks. If you’ve not registered trade marks that are relevant to your business, it’s worth taking some expert advice on how to present the most robust persuasive case.
Someone may exploit a similar domain name in several ways, for example they might:
register your domain with a different suffix and sell similar or identical goods and services – e.g. they use the same word mark as your trade mark and simply put .co on theirs rather than .com. This is not uncommon with infringers. For example, someone registering Farillio.co would be using a similar domain to Farillio
register an almost identical domain name, e.g. Farullio or Faryllio, which either look visually, or sound phonetically pretty much the same and sell similar or identical goods and services
For more information on protecting your trade marks, see our guide to trade mark enforcement.
And if you want to know more about registering trade marks, registering a trade mark tutorial with Stobbs' Emma Reeves is a fantastic compendium of what you need – from explaining all the key essentials to providing step-by-step instructions on how you can apply for registration online.
Passing off rights
Passing off is a legal right to protect yourself against someone holding themselves out as you/your business – or creating (whether deliberately or inadvertently), a situation where such confusion is caused in people’s minds, that they assume the infringer is in fact your business or part of, or affiliated in some way with, your business.
It's harder to prove than the other two rights, but it often goes hand in hand with them. What you're looking to demonstrate here is that the third party is misrepresenting the 'goodwill' in your business for their own commercial gain.
Goodwill includes the intangible assets that add to a business's value but that cannot easily be identified or valued as tangible assets, unlike equipment and property.
These intangible items include trade marks and the reputation of a business. They may also take into account factors like the strength of your brand identity, customer relations and loyalty, ratings and staff satisfaction.
To prove passing off, you need to show that:
your market reputation is already of a sufficiently high level for the public to automatically assume that the copycat trader is you
the other trader's misrepresentation to the public has caused you a loss of business (or other relevant damage, such as reputation loss) as a result.
So it can be harder for very new businesses to lever – because, often, that brand strength and recognition is still in the course of being shaped and grown.
But even if you're pretty new to the market, you may still want to include this strand of argument as part of any complaint that you make. (Our templates contain the wording to assist you in doing so.)
So what can you do about this infringing website?
Like any dispute, it's important to be proactive and to demonstrate that you are the reasonable party; you're clearly attempting to resolve your concerns professionally, fairly and responsibly.
You can, of course, get lawyers involved from the outset. But this can be costly and, with the right guidance, you may be able to take a number of the early steps on your own, with expert help where it's needed.
If you can access the details easily, you may find that a simple phone call to the third-party owner is sufficient to resolve the issue - especially where the infringement is relatively new and the site has not been long established.
If not, you'll need to start sending the more formal letters contained here.
The suite of templates in this guide were created with Stobbs IP, who are always on hand to answer queries you may have or requests for support in tailoring them further to your particular circumstances.
Our easy, pay-as-you-go Speak to an Adviser service is specifically designed for these purposes.
Template Letter 1: let's complain about that website
This is the first communication in our suite of templates covering the infringing use of your rights on a website:
Finding contact details for the infringer
Most websites include contact details on them, or some simple sleuthing can generally track down the business owner or the domain name owner.
It's a good idea to check, by phoning if you can, that you've got the right address for correspondence.
The letter should be addressed to the most senior person in the business, and you may also wish to cc it to other members of its senior management as well (whether by individual names (if you can obtain these, e.g. from a Companies House search) or by generic address; e.g. to the owners and directors of...).
It’s highly advisable to send the communication by both email and post, where you can, so that the recipient business cannot reasonably argue that they did not receive your complaint.
Cease and desist
This is a classic legal expression, generally used in legal actions. It’s designed to be attention grabbing and to put a recipient immediately on notice that this correspondence contains something serious.
‘Stop – now, and never restart this/similar in future’ is what it really means.
The well-recognised threat being that if the recipient does not comply, legal action to force them to do so, and probably to also pay compensation and legal costs to the complainant, will follow.
You may want to use this first complaint letter as a means to broker a settlement agreement with the third party. What you're after here is a firm written acknowledgement of their rights and a signed agreement that they will not infringe your rights, now or in the future.
If you decide to try this as a first tactic – and it’s worth a shot, certainly – make sure you include the ‘without prejudice’ label on the template letter and you’ll need to include the settlement section at the end of this letter.
If you decide not to include this settlement wording, remove the without prejudice label on this and any subsequent letters in this series.
And if you do not send this letter under the 'without prejudice' label, you will not need to send the additional 'open letter' that Stobbs otherwise suggest sending at the same time as this first complaint letter.
(See below for more on this recommended 'open letter'.)
What does without prejudice mean?
‘Without prejudice’ means that the contents of this letter are presented for consideration by the infringing recipient in the strictest of confidence.
It means that if the infringer decides not to accept the terms of this letter, your position in relation to taking firm legal action against them is unchanged and not undermined.
It also means that the existence and contents of this letter and any proposed settlement terms cannot be mentioned, orally or in writing, and used against you by the infringer in a tribunal or other civil court of law.
The rules around the ‘without prejudice’ protections are technical and fine – and it is not difficult to undermine them inadvertently, so you do need to proceed with real care when making these kinds of offer.
Briefly, here are a few important facts and cautions to help you maintain the protection of the without prejudice rules and prevent them being invalidated:
1. There must be an existing dispute.
The settlement offer must be a genuine attempt to settle an existing dispute. The infringement of your rights and your willingness to take action to enforce them, satisfies this condition.
2. No ‘unambiguous impropriety’
There must have been no ‘unambiguous impropriety’ by you or the infringer during your discussions and actions to date.
This is a defined legal term and essentially means that there’s has been no blackmail, fraud, physical violence, unlawful discrimination, intimidation or inappropriate threats during the discussions surrounding your settlement proposal.
3. Take good legal advice.
This is money well spent in circumstances such as these.
Your brand and domain name's background history
You'll see the template prompts you to make sure you include all the relevant detail that you can here.
when you established your brand
when your domain name was registered
with which service provider it was registered
where your domain is hosted
when your website was launched
how your site is used (include here who it is used by, how many users/site visitors you have)
your eReputation status (i.e. whether your site displays strong TrustPilot, or equivalent, ratings from your customers)
your email address and domain name
whether the domain name and or website brand forms part of your business’ email addresses. And if so,
- how many people within your business have email addresses And if you can determine this,
- how many emails your business sends on average in any day/week, and
- roughly where are those recipients located when they receive those emails
how the use of your brand has changed over time and when these changes were made
how prominently you reference and connect to your site in other materials (e.g. advertising and marketing materials)
how prominently others showcase or talk about your site (e.g. influence marketers, the press, awards that you’ve won – for your brand or for the site, etc.)
whether other websites or entities link to, interact with, collaborate with or reference your site. And if so, how and how extensively.
how many sales you have made, when and to whom
your annual turnover figures
any instances of actual confusion
The purpose of this detailed factual account, complete with any user or other statistics you’re able to provide, is to demonstrate the strength of your brand.
This explanation, in turn, evidences just how damaging this third-party website is to your business interests, and how significant the level of confusion is, or is reasonably anticipated to be, amongst your contact base.
There are various elements of copyright that could be infringed – as we described earlier in this guide.
If someone copies your photos, graphics, logos or designs, that will be a copyright infringement. (Logos may also be a trade mark infringement.)
If they've lifted your written words, like wording in your blogs, this is also copyright infringement. As is copying a sound or video recording.
You'll see the template also includes wording relating to stolen copy. Written content too often ends up being copied by someone else.
How much needs to have been stolen before it’s a copyright infringement?
Any unauthorised use of someone else’s copyrighted work is against the law.
There is no hard and fast rule about how much text would need to be shown as evidence of copyright infringement and much will depend on the circumstances. A portion, extract, snippet or partial screen shot might well suffice to constitute an infringement.
If you can prove that any such portion, extract, snippet or partial screen shot derives from your work and has been copied from it, you can probably prove copyright infringement.
The settlement wording – linked to the 'without prejudice' label
The template letter contains, towards the end, a section titled 'Resolution', which attempts to persuade the infringer to act swiftly and responsibly to bring the infringement(s) to an end.
You do not have to do this, but it does have benefits and it's often worth attempting as a first communication.
For example, subsequent correspondence may focus entirely on the wording of these undertakings, so that your recipient can negotiate and then you can hopefully both sign an agreed position.
Many alleged infringement cases can be resolved efficiently with the help of these proposed commitments.
But you're not obliged to offer them.
If you don't want to include this 'Resolution' settlement wording, delete the drafting option and the ‘without prejudice’ label at the top of this letter (as well as in any subsequent letters sent as part of this series).
You will not need to send a separate open letter complaining about website infringement if you take this approach.
Reserving your rights
This is also a well-used term in dispute-related correspondence.
In this case, it means that whatever you may choose to do or say in this correspondence, you are not prevented from pursuing and enforcing all your legal rights to protect your domain name and the IP rights relating to it.
You'll see that this wording is optional. You should only include this wording if you deleted the ‘Resolution’ section above and do not intend to give the infringer a chance to agree a settlement at this stage.
If you decided to include the recommended 'Resolution' wording, delete this reservation of rights wording.
What deadline should you set for a reply?
14 days from date of sending is generally considered a reasonable time frame to expect a reply from the infringer before you consider taking any next steps.
Listing and evidencing your trade marks
In Annex C of the template letter, make sure you include, for each trade mark or application that you choose to list:
- the trade mark itself and any and all visual representation of it
- whether it was just the one mark or was registered as part of a series comprising subtle variations of one mark
- the date it was registered (or applied for if not yet registered)
- the name of the registry with which it was registered. In the UK, it will be the Intellectual Property Office (IPO)
- the registration number that it was given
- the goods and services for which it is registered.
Ongoing trade mark applications
You're not permitted to include trade mark applications in formal legal infringement proceedings, so it's worth getting some advice about whether you include here your applications for trade marks that have not yet been granted.
It can be helpful to list them here though, since they arguably do provide further evidence of your commitment to and continued evolution of the brand to which your domain name relates, and which the infringing domain name is damaging.
Unregistered trade marks
If you haven't registered any of your trade mark(s), but you have been using them for some time, they may be treated as unregistered trade marks. To evidence them, and give yourself the best prospects of a persuasive case, you will need to include:
- details of the mark itself and any and all visual representation of it
- the date you started to use the mark
- where you've used the trade mark
- what you've used the trade mark for
The more extensive your use of these unregistered marks and the longer you have been using them, the better your prospects of successfully persuading your infringer to stop infringing your rights.
Provide as much evidence of customer recognition of your trade marks as you can, e.g. where they've been referred to in third-party publications (news-sites/publications and magazines are always helpful), on other websites, on packaging, on labelling, at events that you might have sponsored, etc.
Additionally, the greater the degree of overlap between you and the infringer's customer audience, products and services, the stronger (and therefore more successful) your objection is likely to be.
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