Protecting Your Brand Name on the Internet
Twenty-four hundred years ago, in the scroll age, the marketing guru Socrates observed, “Regard your good name as the richest jewel you can possibly be possessed of.” In the intervening years, only the technology of communication has changed; the wisdom of protecting your brand name and the goodwill it carries is still valid. For many of today’s businesses that are built on innovative products or services, such as those provided by many of the readers of The Genomics Law Report, the Internet and its social media are the most important methods of communicating with potential customers and collaborators.
Brand protection on the Internet begins with selecting and registering a “domain name.” Domain names are akin to virtual street addresses on the Internet, where the registry or “top level domain” is the name of the street and the string to the left of the “.” in the domain name is the ‘second level domain name.” Thus, “genomicslawreport.com” is the unique address for our site, consisting of the second level domain “genomicslawreport” registered on the popular “com” street. Anyone in the world can find us and no one else publishing there. We have grown jaded about this technological marvel, but a consequence of the domain name system is that every business should want to be sure that it preemptively registers domain names that support its brand and take reasonable and prudent measures to assure that others do not unfairly profit from the goodwill residing in that brand by registering domain names that impersonate, mimic or denigrate the brand or that sell counterfeit products under the brand name.
In the early days of the Internet, most companies were slow to register domain names. Journalists and enterprising pirates registered famous trademarks in the dot com registry, depriving the brand owner of an address on this Internet Park Avenue and ultimately forcing brand owners into litigation or expensive settlements to gain ownership of a domain name that included their flagship brand(s) in the dot com registry. The important lesson taught by these early mistakes is, as soon as you select your company’s name and the brand names of its principal products, register them as domain names in the dot com registry. Secondary registrations may redirect to the web site identified by the primary domain name, so there need only be one web site, but all brands should be registered. The Internet has evolved since those early days, but cyberpirates are still at work. Moreover, social media sites have become important tools for marketing, and all allow for some form of name or “handle” registration. Preemptive registration on social media sites may also be advisable. It is always better to reserve your name than to wage an expensive legal battle later to reclaim it.
Sometimes, through bad luck, poor planning or lack of execution, a third party ends up owning the desired domain name. This has happened often enough that the entity that ultimately assigns domain names through its administration of the Domain Name System (known as “ICANN”) adopted a set of rules known as the Uniform Dispute Resolution Policy (“UDRP”) to assist legitimate brand owners protect their brands. The UDRP provides for a relatively inexpensive, rapid and fair method whereby persons with trademark rights may force the transfer of ownership of a domain name registration from a person without any legitimate interest in the name and who registered and uses the domain name in bad faith. Congress has also passed a law (the Anti-Cybersquatting Consumer Protection Act or “ACPA”) that provides slower, more expensive but more expansive relief to the brand owner. Both the UDRP and the ACPA protect trademarks, whether registered or not, but for legal and practical reasons, both make it easier to protect registered marks than unregistered ones. Thus, the second lesson of brand protection on the Internet is to register the trademarks that one uses as or in a domain name.
Owners of famous brands have discovered that the creativity and perseverance of domain name pirates is well-nigh inexhaustible, and that these pirates will register multiple variations of the brand name, not only in the dot com registry but in the other 20 “generic top level domains” and even the 250 or so “country code top level domains.” The time and expense needed to preemptively register all brand names and their common variants in all of these domains and to monitor and launch UDRP proceedings against all comers has been likened to the amusement park Whack-A-Mole® game in its seeming futility.
Brand owners have to adopt more sophisticated and cost effective strategies. We believe that most businesses need only register in the dot com registry. Within that registry, a business should engage a monitoring service to look for both use and misuse of its brand. A wise brand owner will want to know if third parties are seeking to register variations of its brand. He will want to know if his brand is discussed on social media sites such as Twitter®, Facebook® or LinkedIn®. Armed with such knowledge, the brand owner may intelligently pick the fights over maliciously registered domain names to match her need and her budget.
There may be a looming exception to our general recommendation that new companies register only in the .com registry. ICANN is circulating a draft set of rules to allow the creation of an unlimited number of registries and top level domains. As now written, any company or group of companies trade groups or just interested “communities” could apply to form a new registry which might be restricted to the owners, members of the industry or community or could be unrestricted. For example, a consortium of genomics companies could apply to be assigned and operate a top level registry known as “dot gene” and strive to make that “street” the preferred address for genomics companies and research organizations. There has been a great deal written about ICANN’s proposal, chiefly negative outcries from large brand owners and their counsel, but one should not ignore the possible allure of such a registry for companies operating in a specialized market such as genomics.