Rogue website problem

Scenario

The World Health Organization (WHO) faces a problem. An imitation website, featuring an organisation calling itself the World Health Department (WHD), can be accessed on www.whd.biz [at the time of posting this item, that URL was a parked domain]. A logo closely similar to that of the WHO adorns the WHD's home page; the artwork and fonts are generally similar too. There are no email, phone or fax contact details but, under "contact", an address in Prague, Czech Republic, is listed. From this website the WHD offers "WHD-approved" medicines and pharmaceutical products. Some of these products are genuine pharma products with expired "use-by" dates; others are suspected of being counterfeit or of having no curative function. The WHD also sends materials to distributors and suppliers of pharmaceutical goods and to the health ministries of a number of developing countries; while carefully worded so as not to state that they are invoices for goods purchased, they look superficially as though they are.

Reports reach the WHO that this site exists and that its sales offers and not-quite-invoices have deceived or induced a number of businesses and recipients to place orders or pay money. There are concerns that the activities of the WHD will place the health of consumers at risk, diminish the financial resources available for health in developing countries and damage the reputation of the WHO itself, since some people are convinced that the WHD is a service provided by it or under its auspices.

The WHO has written to the person named as owner of the website and has asked him to cease and desist. The individual in question has neither ceased nor desisted and, since the site earns him valuable income, he is unlikely to walk away from it without a struggle. Now the WHO comes to you and seeks advice, informing you that it does not hold any registered trade marks for its name or logo but that it is entitled to a degree of legal protection under Article 6ter of the Paris Convention on Industrial Property Rights.

The brief is to sketch out a responsible, affordable and legal plan for taking out WHD's www.whd.biz website as swiftly and efficiently as possible, ensuring that it attracts as little traffic until this is achieved and that, as far as possible, there is no repetition of this deception by its perpetrator.

The prize for the best entry is a brand-new copy of Alexander Tsoutsanis's excellent Trade Mark Registrations in Bad Faith, just published by Oxford University Press (details here).

The winning entries

Charlie Winckworth (Hogan Lovells) writes:

"There are two very different aspects to this. The domain name (and the website it hosts), and the registrant of that domain.

Starting with the registrant. Even if you could accurately identify a real person (which is doubtful), and assuming the WHO and their advisers prefer to keep outside the realms of "unfortunate accidents", there is nothing they can do to stop the perpetrator registering another domain name which is vaguely similar to "WHO" or suchlike. Even if they got an injunction and somehow managed to enforce it in Sweden, Belize, Panama (and all the other countries the registrant might choose to host the next site), he could ignore it and host another domain in another territory. This is a case of you needing to ignore the registrant. The only thing that lies that way is costs.

Now to the domain name. You could go to court, but that is costly and would require quite complex arguments about what rights the WHO may be able to enforce (or not), alleged counterfeit drugs and possibly parallel imports from outside the EU. Court action, even on an interim basis, may also not be as quick and effective as some of the other routes.

There are three, possibly four routes of attack.

First, you find whatever email address the website uses for communicating with potential buyers. This is likely to be listed on the site itself, and is often a free email account with Gmail or Yahoo etc. Both providers have complaints services which can be contacted in the event of infringement of third party IP rights, crimes, and breaches of the provider's terms and conditions, and provided you make a good enough argument to do so, they will suspend or hopefully cancel the email address. This would have a serious impact on the registrant's trading ability.

Secondly, assuming that the rogue site gets most of its traffic via Google, you should write to Google and file a DMCA complaint and ask that they remove their search engine link. This relies on there being copyright material hosted on the fake site, which if is it a good fake site, it probably has. Again, this is quite a simple process.

Thirdly, you file a UDRP complaint on the basis of WHO's rights, and the bad faith of the registrant etc. The chances of success would be very high, although of course the UDRP system takes a couple of months to play through.

Fourthly, you contact the host of the website, setting out the same sorts of points you raised with Gmail/Yahoo. A few faxes and phone calls should enable you to get the website pulled. The registrant could re-host it with someone else in a few days' time, but you have caused him hassle and cost him valuable time. Besides, you can do it all again if and when he re-hosts.

So, what happens when you win your UDRP complaint and have the domain name? Surely the registrant can just do all this again under a new domain name? As above, yes he can, but there is nothing the WHO can do about it, other than take steps to protect itself reactively each time. Given that I could register a domain name in the name of my stapler one minute, and my dog the next, often, the more pragmatic the approach, the better and more effective it is. Besides, if the WHO and their lawyers cause administrative and other difficulties for the registrant, he might think about taking on another agency/organisation next time...

The four steps above are eminently affordable - something like £5,000-£7,000 at this firm's rates".

Martin Husovec (Member of European Information Society Institute, o.z.) writes:

"If the World Health Organization lacks the legal standing to enforce its rights, I would suggest the following. Legal entity authorised to protect consumers in the Czech Republic could demand that a perpetrator such as the WHD cease and desist their illegal conduct on the basis of unfair competition law or consumer protection law.

A consumers' body can claim that
(a) such competitive conduct is contrary to the standard practices of competition and may be detrimental to consumers, or that
(b) such conduct constitute an unfair commercial practice under Article 5 of Directive 2005/29/EC.

Protection of the WHO's name or logo under Article 6ter of the Paris Convention on Industrial Property Rights could be an argument in favour of misleading and detrimental practice on the part of WHD.

The eelevant provisions in Czech law are :
§ 44 (1) Unfair competition shall be such competitive conduct that is contrary to the standard
practices of competition and that may be detrimental to other competitors or consumers.
Unfair competition is prohibited.
§ 54 (1) The right to demand that a perpetrator cease his illegal conduct and remedy the
objectionable state of affairs may be claimed (except for cases stipulated in § 48
through to § 51) by another competitor as well as by a legal entity authorised to protect
the interests of competitors and/or consumers.

Plus unfair commercial practices are embodied in Consumer Protection Act - provisions basically mirror Directive 2005/29 concerning unfair business-to-consumer commercial practices in the internal market and amending Council Directive 84/450/EEC, Directives 97/7/EC, 98/27/EC and 2002/65/EC of the European Parliament and of the Council and Regulation (EC) No 2006/2004 of the European Parliament and of the Council (‘Unfair Commercial Practices Directive’)".