FairWinds Plays Ball

FairWinds was featured in the CMO Council’s report, “Doing Away with Foul Play in Sports Marketing,” which was published Monday.  The report offers a lot of interesting insights into the issues sports marketers deal with, including counterfeit merchandise, unauthorized ticket sales, online brand hijacking and ambush marketing.  Our piece discussed the various opportunities and challenges these professionals face in the domain name space, from dealing with cybersquatting and other forms of infringement to the risks and marketing potential of new gTLDs.  The piece is available on our website, and to download the full report, visit the CMO Council’s site.

Twizzler.com UDRP: Twisted

Since 1928 children and adults alike have enjoyed the famous TWIZZLERS brand licorice candy and the brand is the subject of many longstanding trademark registrations. In a UDRP dispute over the domain name twizzler.com, the owner claimed that he intended to use the domain for an Internet-based brain teaser, logic puzzle or other similar style of game.  Although a screen shot of the Respondent’s website from 2001 showed a graphic relating to a game, the domain has more recently resolved to a classic pay-per-click site with links to the Complainant, Hershey Chocolate & Confectionary Corporation, and its competitors.  The Respondent claims he did not realize that his domain was resolving to a pay-per-click site and, as soon as he was served with the complaint, he contacted his registrar to have that content removed.

The Panelist acknowledged that the twizzler.com domain is confusingly similar to the Complainant’s trademark, under UDRP 4(a)(i) but went on to deny the claim on the ground that the Respondent had shown a legitimate interest in the domain under Policy 4(a)(ii). In support of this, the Panelist noted that the Respondent “demonstrated his intention to use the disputed domain name for an Internet based puzzle or game website” under Policy 4(c)(i) and that it did not intend to seek commercial gain under Policy 4(c)(iii).  In particular, the opinion noted that, had the Complainant first contacted the Respondent before filing its complaint, the Respondent would likely have removed the pay-per-click content from the site and obviated the need for this dispute.  The question of the Respondent’s bad faith was never addressed.

This opinion is interesting on a number of levels.  First, the Respondent’s claim of an intention to use his domain for a puzzle site was accepted based on a single, very old screen shot and despite the Respondent’s suspicious failure to move ahead with his claimed plans after owning the domain for nearly 11 years.  Next, the Panelist accepted the Respondent’s claim the he was not responsible for the pay-per-click content on his site which defies a long line of precedent that domain owners are, in fact, responsible for and in control of the content on their sites even where the content is placed automatically by a registrar.  See, e.g., MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 (Panel agreed with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website.”); Google Inc. v. Aloysius Thevarajah, NAF Claim No. FA0911001295342 (2009) (“Respondent, as the owner of the … domain name, is responsible for the content on the website under Policy ¶ 4(a)(ii).”). It is not known if this precedent was cited by the Complainant here but the Respondent clearly should have been held responsible for the content of his site.  His removal of the pay-per-click content, when presented with a formal complaint, does not indicate that he did not know of the web content nor that he would have removed it had he been contacted by the Complainant prior to the complaint. Finally, even if the pay-per-click content had been removed, the Complainant’s customers would still have been confused and the TWIZZLERS brand harmed when visitors to the Respondent’s site discovered that it did not resolve.

The lessons for brand owners from this case are twofold: A pre-complaint demand email is good practice in many (though not all) cases to fend off the idea that a complaint could have been avoided.  Further, there is no telling whether the precedent on the Respondent’s responsibility for its web content was cited here or whether it would have swayed the Panelist to rule differently.  But, to help panelists reach the best and most accurate decisions, it is best to cite relevant precedent on all important points even if one might assume that they are obvious or well-established.

What’s in a Name?

We know a rose by any other name would smell just as sweet, but what about jeans?  Would our jeans be just as cute without their designer label?  Brandchannel recently reported that Urban Outfitters has launched a line of “unbranded” denim that boasts, “No branding.  No washes.  No ad campaigns.  No celebrities.”

Jeans

This back-to-basics approach to fashion is admirable, if already a bit played out.  By taking the focus off of the label, Urban Outfitters is trying to highlight its commitment to quality and style.  The company wants us to know that it produces a great product that doesn’t need a special pocket design or branded tag to impress consumers.  That’s all well and good, but it does pose a problem for consumers trying to find these jeans.

Here’s where I feel obligated to point out that a name or a label is very different than a brand.  Products need to be associated with a brand at some basic level.  Otherwise, how can you expect consumers to find the product?  Even brands trying to be “unbranded” turn their lack of brand into a brand itself.  Take, for example, Unbranded Clothing of the UK (unbrandedclothes.co.uk).  The absence of an official brand has become that brand’s identity, which in turn enables customers to recognize and find the company’s products.

I don’t think that these new jeans are a case of true “unbranding.”  Urban Outfitters still wants shoppers to know that they are the ones responsible for these exclusive new jeans, but how do they do that without ad campaigns or some form of branding?  Good question.

I did a bit of digging, and it turns out that unbrandeddenim.com and unbrandedjeans.com are both available.  Urban Outfitters could register either or both of these names and use them to capture visitors searching for these elusive “unbranded” jeans.  But, there are no guarantees that said generic names would be top of mind for interested shoppers.  Is that how you would look for these jeans?

A better plan would be to register urbanoutfittersjeans.com and uojeans.com, both of which are currently available. Urban Outfitters’ best bet is admitting that their brand does play a role here.  They can continue to sell a product with no label but their brand is what’s going to sell these jeans.

Or, if Urban Outfitters is really committed to a complete lack of branding, the company could look into acquiring jeans.com.  Between search and type-in traffic, I estimate the domain could earn approximately 3,000,000 organic visits per month.  According to Internet Retailer, Urban Outfitters has an average conversion rate of 3.98 percent and an average order size of $121, meaning the company could sell tens of millions of dollars worth of jeans through this site by converting the massive monthly generic “jeans” search volume to their customers.

Destination: Facebook

Last month, we posted about how brands are beginning to more frequently promote Facebook or Twitter pages in their advertisements.  Well, we recently found even more data pointing to the increased importance of social media in conducting business online.

Nielsen data reveals that social media usage has increased 43% in the last year, meaning that the average rsrson now spends 23% of his or her daily Internet time on various social media sites (the largest percentage of any category of online activity).  Data also suggests that Facebook is becoming more of a destination than a traffic source, indicating that consumers prefer to read news, watch videos, and interact within Facebook rather than being redirected to an outside site — even one owned by a trusted brand.

So, what does this mean for brands?  It’s becoming more important than ever to protect your brand in the social media space.  With Facebook as a destination, Internet users are increasingly likely to seek out branded content within the confines of the social space.  However, Facebook and other social media platforms still have a long way to go in developing mechanisms that protect trademarks, meaning brands must take responsibility for diligently monitoring their own names.  Additionally, the informal, community-style structure of the Facebook interface allows individuals who are not associated with a brand to start a group or page that reflect their personal opinions of that brand.

While there is no way to completely control conversations about your brand within social media — nor should you attempt to do this — owning your brand’s name and various trademarks as usernames can ensure that users know where to find official and branded content.  Far too many brands have lagged behind on laying claim to their trademarks, division and product names, etc. as usernames, resulting in consumer confusion and negative publicity (need we re-visit the @BPGlobalPR incident?).

The take away for today is that social media is becoming a significant factor in how we seek out and consume content.  Brands need to make sure they are findable on various social media platforms if they wish to be part of the ever-evolving cycle of information consumption.