23 May 2018

Defending Travel Trademarks

“I’ve made it part of my practice for years to send each cease-and-desist letter as if it’s going to be on the front page of every newspaper,” said Rafa Gutierrez, Director, Intellectual Property, Uber Technologies, Inc. (USA).

He was speaking yesterday in Session IT01 Industry Breakout: Sharing the Pain: Hot Topics, Cool Solutions, and New Trends in Travel and Leisure Trademark and IP Issues.

“They could publish the letter and make you look like a trademark bully,” he warned.

However, cease-and-desist letters can be effective in securing broad remedies.

“The bad actor may be scared enough to take down the site and also [contractually] agree to refrain from future use,” added Mr. Gutierrez.

There’s an extra challenge for Wyndham Worldwide Corporation (USA): the hospitality company allows its franchisees to register their own domain names.

In terms of domain names, the company focuses less on “brand name plus city,” because it’s more likely to be registered by one of its franchisees, rather than an infringer, said Susan Crane, Group Vice President at Wyndham Worldwide Corporation.

“We’re a little more aggressive if it’s a broader geographic region, such as Daysinn.china or if it combines with a generic term like hotel. Otherwise, it becomes a game of whack-a-mole when you have 20 brands. We’ve really had to focus down on things that we think would be most damaging to the brand or damaging to revenue generation online.”

Mr. Gutierrez and Elena Krafcik, Associate General Counsel, Marketing and IP, Alaska Air Group, Inc. (USA) cited the value of an employee reporting procedure where people can log any infringing websites they discover.

The difficulty for the airline is that part of its name is the name of a U.S. state, meaning that local business owners, such as those operating small fleets of aircraft in the state, may want to use the words “Alaska” and “airline” online.

“These are the kind of folks you don’t want to engage with in a public fight. We try to take a light-handed approach,” said Ms. Krafcik.

She added that in the past, the airline used to  go directly to travel websites featuring incorrect text about Alaska Air Group, Inc. Now, the airline sends a take-down request to the registrar of the web page.

While take-down requests can be acted upon fairly quickly and there’s “not a heavy burden of proof,” according to Mr. Gutierrez, there are a handful of registrars who will “ignore your email for days and days.”

He added: “There was a phishing site host who was not taking the webpage down, so we had to remind them about secondary liability. The site came down later that afternoon.”

Ms. Crane suggested that when a complaint alleges tortious interference in addition to trademark infringement, the site host is normally quicker to act because it feels that it may not have safe harbor protection under the U.S. Digital Millennium Copyright Act.

Ms. Krafcik advised registrants to copy the bad actor into your letter to the site host and try to engage with them directly. “Once caught, a lot of them back off. They’re really after easy marks and low hanging fruit,” she said.

More Buying, Less Fighting

Travel companies also have to police their brands on search engines.  Ms. Krafcik said that Alaska Air Group, Inc. tends not to worry about other companies that show up in search results, as long as it is happy with its own position on the page.

According to Mr. Gutierrez, others can buy your trademark as a keyword as long as it doesn’t appear in the advertising copy itself (which could create a likelihood of confusion).

Ms. Krafcik added: “It’s not unreasonable to search something like ‘Alaska airlines flights’ and find another airline. Our strategy is more about buying [keywords] and less about fighting." This is because it's a complex task to tackle all offending adverts, and even if you do get them taken down, they often reappear the next day, she added.

Christy Hurley, Senior Paralegal, Intellectual Property, Expedia, Inc. (USA), moderated the panel.

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