How to defend your brands on the Internet

How to defend your brands on the Internet.

By Erik J. Heels www.erikjheels.com

First published 7/1/2007; Law Practice magazine, "nothing.but.net" column; American Bar Association

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 your brand on the Internet, because the
definition of "brand" has expanded to include
things that aren't necessarily trademarkable
(such as the names of your key personnel) and
because your brand is at risk from being used
(and abused) by cybersquatters and others in
ways that weren't foreseeable a decade ago.

Theoden: "I will not risk open war."
Aragorn: "Open war is upon you whether you would risk it or not."
- The Lord of the Rings: The Two Towers

Your brands are under attack. The attack has been underway for years. It is about to erupt into a full-scale brand war. Now is the time to act. Here are some steps you can take to protect
your brands.

Step 1: Know Your Brands

You are your brands. According to a brand survey by New York branding consultancy
Landor, the

top brands for 2006 were as follows:

Brands, in the Internet age, are more than product and service offerings. As you can see from the above list, they include company names, destinations, sports leagues, and

people. 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 ("Oprah Winfrey"), then your brand
portfolio may also include each of the words
individually ("Oprah" and "Winfrey").

How do people find you? What do they call you? What are the names of your products and services? Your company? Your key people? These are your brands. You are your brands. Know your
brands.

Step 2: Register Your Brands As Top-Level Domain Names

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). Registering multiple
domains is cheap insurance to protect against
possible confusing or infringing use. Also, you
should register domains in the name of your
company using the exact same contact
information for each domain.

Step 3: Register Your Brands As Country-Specific Domain Names

Do you have offices, employees, or clients in more than one country? Or are you planning to? If so, then you should register 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 Community's ".eu," have more strict
requirements about who qualifies as a
registrant.

Step 4: Register Misspelled Domain Names

The longer a domain name, 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 your domain name, (2) a user mishears
your domain name and thinks it's spelled
differently, and (3) cybersquatters,
typosquatters, and phishers register look-alike
domain names in an attempt to confuse users.

An example of a typo domain name is www.amazon.com (correct) vs.
www.amaxon.com ("x" substituted for "z"
– adjacent keys on a QWERTY keyboard).
"Sticky key" typos are also in this
category, such as

www.amazonn.com (two "Ns") as are
omitted characters such as

wwwamazon.com (missing the first dot).
Amazon owns all of the misspelled domain
names mentioned in this paragraph.
An example of a misheard domain name is Ohio's Universal Tube & Rollform Equipment Corporation, which had the misfortunate (or fortunate, depending how you look at it)
website

www.utube.com. Then YouTube launched its
video sharing service at

www.youtube.com, and when Google
purchased YouTube for $1.65 billion in
October 2006, traffic to www.utube.com
skyrocketed.

YouTube ended up purchasing the utube.com
domain name for $29 million, and I think
the domain name was worth more than that.
An example of a look-alike domain name is G00GLE.COM (with zeros where the letter "Os" should be). You can imagine how banks
and other financial institutions could be
targets of phishing schemes involving
look-alike domain names.

It's no longer sufficient to register generic domain names and country domain names. If you are serious about protecting your brands, then you also need to register misspelled domain
names. Since the cybersquatters, typosquatters,
and phishers already know how to pick "good"
misspelled domain names,

DomainTools released its Domain Typo Generator
tool to level the playing field for
webmasters. Of course, the

Domain Typo Generator can be used for good
or evil, so now that it exists, it's even more
important for brand owners to use it.

Step 5: Monitor Your Domain Names

It's not enough to register your domain names, you have to monitor them as well. Monitoring services, such as the
Mark Alert service from DomainTools, will
help you find misspelled domain names, parody
and commentary domain names (such as

www.walmartsucks.org), and any misspelled
domain names that you might have missed. 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 get snapped up by cybersquatters
when they expire.

Step 6: Register and Monitor Third-Party URLs

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 in URLs that are not under
your control. For example, you'll see that

www.myspace.com/google is not under the
control of Google,

feeds.feedburner.com/pepsi is not under the
control of Pepsi, and

ipod.blogspot.com is not under the control
of Apple. 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.
And because dispute resolution policies are in
place,

Barack Obama was able to gain control of a
MySpace page that was u... (www.myspace.com/barackobama).

Step 7: Buy Keywords On Google And Yahoo

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 (formerly Overture
Services, Inc.) requires advertisers to
agree that their search terms, their listing
titles and descriptions, and the content of
their Web 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 PPC search engines. Google is number one
for a reason, and so far

the courts have backed them up. What is it
worth to you for your website to be found when
people search for your brands? What percentage
of your web traffic comes from search engines
(dominated by keywords) vs. direct access
(dominate by domain names)? Analyze your website
statistics, and you'll likely conclude that you
have no option but to purchase your own brands
as keywords.

Step 8: Don't Game Google

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 bad, then you may have to
listen, at least until a viable competitor to
Google steps up to the plate.

Step 9: Monitor Websites

Keeping track of your own websites – and those of your competitors – is a process, not an event. 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 email updates, but all of those that I
have tried stink. For Windows, the best
monitoring program is
Website-Watcher
by Martin Aignesberger, and a good starter
program (without email notifications) is

UpdatePatrol (formerly DeltaSpy) by Bitberry
Software. For the Macintosh, you can try

Subscriber 1.1 (OS X) and

Changes Meter 1.3 (OS X).

Step 10: Register Your Trademarks

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, because while it is
important, it should be only one part of your
overall brand protection strategy. And in the
coming brand wars, having a registered trademark
certainly helps. 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.
But you can 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
become important for branding syndicated
content. Is a favicon (the "favorite icon"
favicon.ico file that appears in the menu bar,
bookmark window, and elsewhere) a trademark? I
think that it is.
Clock
Tower Law Group recently filed what I
believe to be the

first favicon trademark application.

Step 11: Ignore The Box, There Is No Box

In the coming brand wars, it is not enough to think outside of the box, because there is no box. Just when you think you've got everything figured out, the rules change, and
more issues arise. The only way to keep up is to
keep up. Here are some other issues to consider:

ICANN is planning to introduce more generic domain names. Trademark owners should be
prepared to register new domain names for
all of their brands.
Domain tasting allows cybersquatters to test domain names for five .... Domain
tasting should be banned, and

it might be banned.
Misspelled domain names are often sold at domain auctions. It may be cheaper to
purchase your cybersquatted domain names
than to fight to get them back. Or maybe you
can stop the auction from happening.
Domain name research equals domain intelligence. Many people are monitoring domain name registrations to get advance notice of new products. If you want to

keep a product launch secret until it
launches, then you will need to be clever
about how your register your domain names
(using non-company DNS servers and taking
advantage of private or proxy
registrations).
Search engine arbitrage makes pay-per-click (PPC) advertising more .... When someone engages in
search engine arbitrage, they are taking
advantage of a value gap for certain
keywords, sending traffic for those keywords
to their own sites, where they then place
other ads. The presence of search engine
arbitrage makes PPC campaign bargains hard
to find, and it makes managing PPC campaigns
for small companies more difficult. You
should consider outsourcing your PPC
campaigns to a company familiar with search
engine arbitrage and related issues.
Add your brands as meta tags on your website, because the courts sa...
Consider getting a vanity phone number for your brand.
Google bombing can temporarily promote your website. Whether you like it or not.
Another reason to monitor Google (and other
search engines) daily. Compare "miserable
failure" and "greatest
living American."
JavaScript-enabled hidden links add more confusion to the search la....
Be virtual. Your brands may be in use in virtual worlds such as Second Life by Linden Research.

Summary: Register, Monitor, Trademark, Repeat

I have been thinking about this article for months. Every time I tried to complete this article, it needed to be updated with some new development. By the time you read this, about
two more months will have passed, and this
article will again need updating. In other
words, new issues are appearing almost daily.

To paraphrase Aragorn, the brand wars are upon you. Ride out and meet them. For your brands. For your company.

How to defend your brands on the Internet