Law Practice Magazine
Practice Building Strategies for New Partners
Thinking like an Owner.
Thinking like an Owner.
In 1997, if you had a domain name and a registered trademark for your brand, you were in good shape. In 2007, it takes more to protect a brand on the Internet owing to two key developments. One, the definition of “brand” has expanded to include things that aren’t necessarily trademarkable (such as the names of your key personnel). Second, brands are at risk from being used (and abused) by cybersquatters and others in ways that weren’t foreseeable a decade ago. To quote Aragorn in The Lord of the Rings: The Two Towers, “Open war is upon you whether you would risk it or not.”
Actually, the attack on your brands has been underway for years. But it is about to erupt into a full-scale brand war. Now is the time to act. Here are steps you can take to protect your brands online.
Brands in the Internet age are more than product and service offerings. Consider the results of a survey by branding consultancy Landor, in which the top brands for 2006 were as follows: Google, Las Vegas, iPod, YouTube, eBay, Yahoo!, Target, Oprah Winfrey, Sony and NFL.
As you can see, brands include company names, destinations, sports leagues and people’s names. Your brands are whatever the public uses to identify you. But the survey is not perfect. I would argue that the top brands include not “Las Vegas” but “Vegas,” not “Yahoo!” but “Yahoo,” not “Oprah Winfrey” but “Oprah.” At least not exclusively. If your brand is two words, then your brand portfolio may also include each of the words individually (“Oprah” and “Winfrey”).
Questions to ask are: How do people find you? How do they find your firm? What do they call you? What are the names of your products and services? The names of your key people? These are your brands. You are your brands. You have to know what your brands are if you’re going to protect them.
Registering multiple domains is cheap insurance to protect against possible confusing or infringing use. That is why you should register your brands as domain names in all of the generic top level domains (gTLDs)—including .com, .net, .org, .biz, .info, .us and .ws. Also, you should register domains in the name of your company using the exact same contact information for each domain.
Do you have offices, employees or clients in more than one country? Or are you planning to? If so, consider registering domain names in those countries as well. There are many country domain names, with different rules for who qualifies as a domain name registrant. Some country domains, such as Tonga’s “.to” are the functional equivalent of gTLDs, with registration open to all. Others, such as the European Union’s “.eu,” have more strict requirements about who qualifies as a registrant.
The longer a domain name is, the more ways there are to misspell it. A five-letter domain name has about 100 common misspellings. Misspellings occur primarily in three ways: (1) a user mistypes the name, (2) a user mishears the name and thinks it’s spelled differently, and (3) cybersquatters, typosquatters and phishers register look-alike domain names in an attempt to confuse users.
Since the bad guys already know how to pick “good” misspelled domain names, DomainTools came out with its Domain Typo Generator tool to level the playing field for Web masters. Of course, the Domain Typo Generator can be used for good or evil. Now that it exists, it’s even more important for brand owners to use it and to register misspellings.
It’s not enough to register your domain names, you have to monitor them. Monitoring services such as Mark Alert from DomainTools will alert you when someone registers a domain name with any term or phrase in it that you specify, including parody and commentary domain names (such as www.walmartsucks.org) and any misspelled domain names that you might have missed previously. You also need to keep your existing domain name registrations current—as Microsoft foolishly failed to do by letting MSNHotmail.com expire—because expired domains will promptly get snapped up by cybersquatters.
Many popular Web services, including MySpace, FeedBurner and BlogSpot, allow users to choose brandable URLs, which could include your brands. Because these services are highly ranked by Google, you could find your brands in highly ranked search results for URLs that are not under your control. For example, you’ll see that myspace.com/google is not under the control of Google, and feeds.feedburner.com/pepsi is not under the control of Pepsi. According to MySpace’s terms and conditions, accounts may not be transferred or sold, but there is an arbitration provision in case of disputes. If MySpace accounts were transferable, then you would see more brand cybersquatting on MySpace. On an interesting note, because dispute resolution policies are in place, Barack Obama was able to gain control of a MySpace page that was using his name.
Like it or not, the courts have ruled that competitors can purchase each other’s keywords on paid search services such as Google AdWords and Yahoo Search Marketing (formerly Overture). Yahoo’s policy states: “Advertisers sometimes bid on search terms that are the trademarks of others. For bids on search terms in Yahoo! Search Marketing’s Sponsored Search service, Yahoo! Search Marketing requires advertisers to agree that their search terms, their listing titles and descriptions, and the content of their sites do not violate the trademark rights of others.” In contrast, Google’s policy states: “As a provider of space for advertisements, please note that Google is not in a position to arbitrate trademark disputes between the advertisers and trademark owners. As stated in our Terms and Conditions, the advertisers themselves are responsible for the keywords and ad content that they choose to use.”
In short, Google lets you bid on competitors’ trademarks as keywords, and Yahoo does not, but there are likely brands as keywords on all of the pay-per-click (PPC) search engines. Google is number one for a reason, and so far the courts have backed it up. So what’s it worth to you for your site to be found when people search for your brands? What percentage of your Web traffic comes from search engines (dominated by keywords) versus direct access (dominated by domain names)? Analyze your site statistics, and you’ll likely conclude that you have no option but to purchase your own brands as keywords.
Don’t think that you can use search engine optimization (SEO) or other tricks alone to improve your standing with Google. If you try to trick Google, then you run the risk of having your organic search results demoted (graylisting) or removed entirely (blacklisting). So if Google says that paying for other sites to link to your site is a bad thing, you may have to listen, at least until a viable competitor to Google steps up.
Keeping track of your own Web sites—and those of your competitors—is a process, not an event. Remember, you need to keep track of what brands are being marketed by whom and how. There are some Web-based services that allow you to track URLs and get e-mail updates, but all of those I’ve tried stink.
For Windows, the best monitoring program is WebSite-Watcher by Martin Aignesberger, and a good starter program (without e-mail notifications) is UpdatePatrol (formerly DeltaSpy) by Bitberry Software. For the Macintosh, you can try Subscriber 1.1 and Changes Meter 1.3 .
The basic rule for trademarks is that you should use what you register and register what you use. I put trademark registration nearly last on this list only because, while it is important, it should be just one part of your overall brand protection strategy. Although having a registered trademark will certainly help. Trademark owners prevail in the majority of Uniform Domain-Name Dispute-Resolution Policy (UDRP) arbitration proceedings, and the Anticybersquatting Consumer Protection Act (ACPA) allows trademark owners to bring a civil action. You can, however, register 100 domain names for the cost of the filing fees for one UDRP proceeding.
And what is a trademark? It is anything that you use to identify your products and services with your company—including your company name, product names, service names, logos, taglines, sounds, colors, domain names and some things that the USPTO hasn’t yet encountered. For example, now that Web content is distributed via blogs and feeds, favicons (the “favorite icon” files that appear in the menu bar, bookmark window and elsewhere) become important for branding syndicated content and may be considered trademarkable.
It is not enough to think outside the box because there is no box in the coming brand wars. The only way to keep up is to keep up. Here are some of the hot issues to consider today: