Month: August 2011

When dealing with domain names that contain a brand or trademark and are owned by third parties, one of the first things brand owners must consider before determining a course of action is how those domains are being used. Many times here at FairWinds, we see domains containing our clients’ brand names hosting pay-per-click (PPC) ads or being used for other obviously trademark-infringing purposes. In those instances, the process of recovering those domain names on behalf of our clients is usually fairly straightforward.

However, we also occasionally see these kinds of domain names being used in ways that cause serious headaches for brand owners, but technically might constitute fair use under copyright and trademark laws. One example is what we call gripe sites, like IHateYourBrand.com or YourBrandSucks.com. While the content on these sites can wreak havoc on brand image, under the right circumstances it may constitute free speech and, as I mentioned, might be protected under copyright and trademark laws.
Similarly, fan sites can also constitute fair use. Fan sites that host no commercial content typically don’t cause brand owners quite as much grief, because their owners use them to sing the praises of a brand, product or service. One example is StarbucksMelody.com, a blog that describes itself as “An unofficial site, for any and all Starbucks enthusiasts everywhere!” The site is run by a woman named Melody Overton, who is a coffee aficionada and a Starbucks customer. She has she never worked for Starbucks, she just digs coffee.

Fan sites pop up around all kinds of brands and products. Unsurprisingly, the Internet is home to a rich ecosystem of fan sites dedicated to video games. There are even fan sites devoted to gaming systems that predate the Internet (and even the author of this post). That’s right, I’m looking at you, Atari.

While fans have a ton of love for the gaming company, Atari doesn’t seem to have a whole lot of love for the websites they build as platforms for their fandom.  According to gaming sites, Atari has been on the digital warpath, sending letters to the owners of fan sites demanding that they shut the sites down and turn over the domain names. One recipient and self-proclaimed “retro-gaming nut” Andrew Davie, who runs a site at Atari2600.org, posted a farewell message on the site’s homepage where he pointed out, “The ’2600 platform has been near and dear to my heart for a long time.”

Here at FairWinds, we know better than almost anyone how important domain names and websites are in protecting brands and trademarks. But Atari’s aggressive “game-over” tactics may ultimately cost it some very loyal and long-time fans.

Readers of FairWinds’ Weekly News Brief will have already learned about Go Daddy’s announcement about its pricing structure for domain name registrations in the .XXX TLD. In the Sunrise A period, each domain will cost $209.99 the first year, which includes the application fee and the first year registration, and renewals will cost $99.99 per year. For Sunrise B, trademark owners will pay a one-time fee of $199.99 to block their trademarks for ten years. Those who participate in the .XXX landrush will be charged $199.99 the first year, which includes the application fee and the first year registration, and $99.99 per year for renewals. After that, General Availability domains will cost $99.99 for both the first year registration, and for yearly renewals.

We’ve already discussed on this blog the great lengths ICM Registry, which operates .XXX, is going to in order to provide resources for trademark owners to protect their marks. The fact that Go Daddy, one of the most widely recognized domain name registrars, is pricing .XXX domain names at $100 a pop is also likely to further deter cybersquatting in the TLD. Normally, cybersquatters squat on domain names because it is a quick, easy and, most importantly, cheap way to earn money. Setting the price to register .XXX domain names so high is likely going to discourage many cybersquatters who do not want to pay the registration fee.

While new schemes could evolve that make cybersquatting in .XXX profitable, many small-time cybersquatters are unlikely to have the stomach to pay to play this game.

On September 7, 2011, the Sunrise period for the new .XXX TLD will open with two concurrent rounds. Sunrise A will allow members of the adult industry with verifiable trademarks and domain names in other gTLDs to reserve their names in .XXX, while Sunrise B will give trademark and intellectual property rights holders from outside the adult industry the chance to block their marks from being registered as .XXX domains. So, for example, a brand like Disney will be able to ensure that no one can ever register Disney.XXX (and thereby ensure that my childhood memories remain undefiled).

This week, Easyspace, one of the largest web hosting companies in the UK, reported that hundreds of businesses have rushed to pre-register their trademarks with the company before the Sunrise period opens. According to Easyspace, only about 20 percent of those have been adult companies.

The .XXX policy of allowing trademark owners to completely block a domain name is somewhat revolutionary. These domains will resolve to a generic informational page, meaning trademark owners will not have to face the challenge of what kind of content to point their .XXX domains to. After all, is there really any “right” way to use, say, Hormel.XXX?

It is encouraging to see trademark owners taking advantage of this resource and taking the proper steps to safeguard their brands and marks in this new space.

Ken Hittel, VP Corporate Internet, at New York Life Insurance Company (NYL), a client of FairWinds, did a great interview for Forbes.com this week about social networking. Hittel expertly argues that allowing consumers to speak freely, even negatively, on social networks has actually helped NYL build a positive brand presence.

He explains that the few negative comments that have appeared have been drowned out by a chorus of positive comments from loyal customers. Essentially, negative comments are an opportunity for the community to unite around the brand, and as a result, build up the brand’s image. The leap of faith involved in exposing a brand to the uncensored openness of social media may seem risky, but working for an insurance company, Hittel is used to managing risks. His approach has paid off, with NYL’s Facebook fan base closing in on 100,000 members.

Hittel also points out that brands, even if they feel they are not “ready” for social media, need to be on Facebook and Twitter. The best approach, he says, is not to try to control social media, but rather to manage it by being present and participating in it. At FairWinds, we know that it all starts with getting there, and being where your customers are looking for you, by owning the best usernames and handles.

Congratulations to Ken on all his success!

Late last week, Facebook filed a lawsuit against 25 typosquatters over domain names that are typographical variations of Facebook.com.

Last summer FairWinds found that over 48 million visitors per year are diverted away from Facebook by typo domain names. In the lawsuit, Facebook contends that the “defendants’ schemes…diminish the goodwill associated with Facebook and its marks, injure Facebook’s reputation, breach enforceable agreements between Defendants and Facebook, interfere with Facebook’s business, and unjustly enrich Defendants”.

In a study that we are currently conducting, we are researching the prevalence of survey scams on typo variations of social network domain names. Some of the most common typo or keystroke mistakes that Internet users make lead to surveys promising prizes like iPads or gift certificates in exchange for answering questions. Unfortunately, these surveys systematically steal users’ personal information and, unsurprisingly, no prizes are distributed. This is plaguing the most popular social networks, including Facebook, Twitter, LinkedIn and YouTube. We will be releasing the study later this month, so check back with us.