RESOLVED, that IPO supports in principle legislation to address online trademark counterfeiting that enables brand owners to file suit not only against domestic websites selling or offering for sale or distributing counterfeit products, but also as to Foreign Counterfeiting Websites, in order to obtain a court order that would require (a) that financial service providers cease processing payment transaction to the defendant(s) and the Foreign Counterfeiting Website, at least in the United States, (b) that internet advertising service providers cease providing such services to the defendants and the Foreign Counterfeiting Website, at least in the United States, and (c) any other injunctive relief the Court may determine as appropriate. Additionally, the Legislation should:
- Focus on trademark counterfeiting only;
- Provide for nationwide personal jurisdiction and venue over any “Foreign Counterfeiting Website,” so long as such is consistent with due process; and
- Permit e-mail service of process to a domestic or Foreign Counterfeiting Website without requiring leave of court based on the e-mail address listed in domain registration for the administrative or ownership contact and to the e-mail address found on the website, if no real or actual address is available for providing notice to the potential defendant.
A Foreign Counterfeiting Website is defined as a website:
- based overseas (based on contact information contained on the site and/or registration information in the domain name registration);
- alleged to be offering goods with “counterfeit marks” as defined in the Lanham Act, 15 USC §§ 1116 and 1127; and
- directed at the U.S. market, which can be assessed based on statements on the website (e.g. shipping information, price quotes in U.S. dollars, and ability to purchase from the US).