Pre-emptive measures
Protect your brand
In order to give legitimacy to a scam, fraudsters will adopt the brand name of your business. In some jurisdictions it will not be possible to take effective action from a trade mark infringement perspective (as discussed below) if your brand is not protected by registered trade marks.
The Hogan Lovells IP team can review your current trade mark portfolio and identify and fill any gaps in protection that might leave you vulnerable to fraudsters.
Watch your brand
One of the most effective ways to identify a potential scam is to monitor your brand. As a first step, fraudsters may register a domain name and/or incorporate a company name featuring the brand of the business they seek to emulate. Implementing a domain name watch and a company name watch at company registries (for example Companies House in the UK) will help with early detection. This is something that the Hogan Lovells IP team can assist you with.
Fighting a scam
There is a balance to be struck between doing enough to protect your brand and reduce reputational damage, without assuming too much responsibility for fighting the scam. Where that balance lies will depend on the circumstances of the fraud. Below we set out some actions you could take to fight a scam that is already underway.
Police report
One of the first steps you will want to take is to file a police report, for example with Action Fraud in the UK. The Hogan Lovells Financial Services Litigation and Investigations team, which includes a specialist fraud barrister in London, can assist you with this.
However, until and unless a substantial number of individuals have been defrauded by the scam, Action Fraud is unlikely to investigate the scam in a meaningful way, which is why it is advisable also to consider some other civil law action as further set out below.
Report scam to regulator
If your industry is regulated, for example by the FCA for financial services in the UK, you should consider reporting the scam to your regulator so that they can warn the public about it. Again, this is something that the Hogan Lovells Financial Services Litigation and Investigations (and other regulatory teams) can assist with.
Publish a notice on your website
Consider alerting customers to the fraud by publishing a notice/alert on your website. It will need to be visible on a main part of your website and not hidden away. We can offer guidance on appropriate wording to ensure that any customers that are impacted take the appropriate steps without your firm assuming any liability.
Take-down the fraudulent website
If the fraud is operated via a website that replicates your copyright works (e.g. your logo or a key investor information document), you may be able to ask the hosting provider of that website to take it down, effectively shutting down the scam. The ability to do this will depend on the jurisdiction in which the hosting provider is located. The international Hogan Lovells IP team will be able to advise you on this course of action in most major markets across the globe.
Recover the domain name
If the domain name on which the fraudulent website is hosted features your brand you could file a domain name complaint with the relevant registry (for example WIPO for top level domain names) to obtain an order to transfer the domain name to you, again effectively shutting down the scam. The international Hogan Lovells IP team has lots of experience in this area.
Complaint management
To the extent that your firm does become subject to a wide-scale fraud, we can provide assistance and advice to your legal and complaints management teams, through our consulting practice and the Financial Services Litigation and Investigations team.
Threaten the fraudster with IP infringement proceedings
It is notoriously difficult to identify the true individual behind a scam, in particular because registration details are not verified by the domain name registry (and so a domain name could be registered as “John Doe”) and in some jurisdictions it is surprisingly easy to incorporate a company using false information. That said, private investigators are often able to uncover the true identity and/or contact details of the individual.
In the event that you do uncover the individual, you may wish to send them a cease and desist letter asserting trade mark and/or copyright infringement. Ultimately you may not wish to bring proceedings but a sharply worded letter hand-served on the individual should send a strong message of zero tolerance to an individual who otherwise thought they could hide behind smoke and mirrors online. Again, the Hogan Lovells IP team has significant expertise in this area.
Not all of these options will be applicable to everyone. It's important that any solution is tailored to address your reputational risks. If you would like to learn more about how we can help you to fight online scams, please contact Sahira Khwaja (Partner, IPMT, London), Emily Sharkey (Senior Associate, IPMT, London), Ben Summers (Counsel, Financial Services Litigation and Investigations, London) or Michael O’Donoghue (Senior Associate, Financial Services Litigation and Investigations, London).
