Protecting Germans II: The Steps

This is the second in a series of blog posts (previous) on how Mozilla is using its trademarks to try and make sure everyone gets a genuine copy of our software, for free. I will continue to use Germany as an example.

When we discover a wilful trademark infringement, we normally take the following steps, in increasing order of seriousness:

  1. Contact search engines to ask for the site to be delisted.

We have a good relationship with the major search engines, and being delisted or having their advertising removed does a great deal to “cut off the air supply” of fraudulent sites.

  1. Report the site to consumer protection agencies such as computerbetrug.de, antiabzockenet.blogspot.com and boocompany.com.
  2. Send a cease and desist letter.

In most cases, sending a C&D sorts out the problem. If it doesn’t, we:

  1. File a DENIC domain dispute and request cancellation or transfer of any infringing domain names.

Where there is a domain name involved which infringes Mozilla’s trademarks, we can file a domain dispute alongside sending the C&D. For German domains, this is very quick and cost-efficient (national stereotypes at work :-). Upon cancellation of a .de domain by the infringer, DENIC automatically transfers the domain to Mozilla. (For other TLDs, it’s not so automatic.)

We have already obtained numerous domain names this way. Examples include “mozilla.de”, “mozilla-europe.de”, “mozillamessaging.de” and “mozilla.fr”, as well as dozens of typosquatted domains.

Unfortunately, for subscription traps, a C&D rarely has any effect. So we move on to:

  1. Obtain a preliminary injunction (PI).

In Germany, PIs are also quick and cheap. Typically, it takes 1 or 2 days to obtain a PI. The proceedings are ex-parte (you only need one side in court), the other side is not even notified of the application for a PI and there is no discovery of evidence. You make your case, and the judge decides.

PIs become effective upon service. If they are not complied with, they can be enforced through penalty payment proceedings. However, a quicker way to take the site down is by approaching the provider. Under German law, internet providers are liable for infringing content once they are made aware of the infringement. Thus, a letter to a provider, accompanied by a copy of the PI, usually leads to the immediate shutdown of the site. (Remember, the site has already been warned of proceedings by the C&D; this is not coming out of the blue.)

So far, Mozilla has needed to file 6 7 (another one this week) PIs, and all of them were successful. In two cases, the other side appealed, but the PI was confirmed on appeal.

4 thoughts on “Protecting Germans II: The Steps

  1. I’m not sure if it’s related but does Mozilla something with typosquatted domains like http://www.mozila.cz/? This domain doesn’t offer Mozilla related content but many people which want something about Mozilla are directed to wrong site. This is just one example but I think that we can see many such examples around the world.

  2. Pavel: if the domain is not one of our trademarks and is not abusing them, then we have little grounds on which to claim we should own it. And it certainly has to be lower priority than those sites which are actively abusing our trademark.

  3. In the case of a name like mozila, the usual European intellectual property laws give you easily the right to claim it’s abusing your trademark by using a name that is that similar to your own.

    Currently the name is parked, so maybe Mozilla could acquire it without spending too much.

  4. Pavel, Gerv, I am just now seeing Pavel’s reference to “mozila.cz”. It would have been good had you reported that directly to me (anthonia.zimmermann@hoganlovells.com) or filed a Bug Report via mozilla.com about the domain name :) Of course we can do something against the domain name registration since it infringes Mozilla’s trademark and trade name rights. I noticed that the domain is still parked. I will speak to Liz and Harvey about it.