I have a confession to make. I’ve never read a comic book. I’ve flipped through the pages of graphic novels once or twice out of curiosity, but growing up, I was way more interested in coming-of-age novels about slightly awkward teenage girls than I was in picture books about dudes in spandex. You can probably imagine why.
What’s weird about my utter disinterest in comic books is the fact that I absolutely LOVE movies (and the occasional TV show) based on comic books. I grew up on Batman movies and am not ashamed to admit that I adored the Adam West TV series as a kid. And I’ve been delighted at the recent onslaught of superhero movies over the past few years, most recently The Avengers and all the movies that led up to it. I’ll probably be seeing The Amazing Spiderman this weekend, in fact.
So you can see how my interest was piqued when I saw a post on the Unleash the Fanboy blog describing how Marvel has registered a handful of domain names referencing upcoming movies – including some that, honestly, I don’t even recognize (who is Thanos? Seriously, someone explain), but others for movies I am seriously looking forward to seeing. Many of these movies, however, are in the very nascent stages of script writing and likely won’t be arriving at theaters for years.
Right now, Marvel is redirecting most of these domains back to its homepage at Marvel.com. So what does it accomplish by registering these domains so early? Aside from stoking the fan fire and building buzz around future movies, Marvel is also ensuring that down the line, when the plans for these movies are more concrete, the company won’t have to worry about securing the domains. If Marvel waited until the movies were already well into production (and thus all over the media), it would run the risk of losing out to squatters or domain speculators, who may in turn try to charge Marvel a high fee to sell the domains.
Even if your brand isn’t in the business of producing blockbusters, there are lessons to be learned from Marvel’s strategy. If you’re launching an important new product or service, it pays to reserve corresponding domain names early – that way, you have them for when you’re ready to use them. On the flip side, if your company typically attracts a lot of media scrutiny and you want to keep a new product or service under wraps, it may be wise to register the domains under a privacy registration and redirect them to unrelated content such as a blank page. That way, you may be able to throw inquiring minds off your trail.
Meanwhile, I’ll be counting down the days until Thor 2 comes out.
Despite months of troubling news from financially wrought Greece, ICANN’s gTLD Reveal last Wednesday shed light on one Greek company who seems willing to gamble on an uncertain future. In a move that signifies a tradition of innovation, Fage Dairy Industry S.A., makers of the popular Fage Greek yogurt, applied for .FAGE.
What’s more, Fage is not only the sole Greek company to apply, but also one of just three applicants from the foods services industry. McDonalds and Heinz applied for .MCD and .MCDONALDS, and .HEINZ and .KETCHUP, respectively. Coca-Cola, Pepsi, Yum Brands, Kraft, Kellogg, General Mills and other similar brands were noticeably absent from Wednesday’s excitement.
Yet as we take a closer look at Fage’s history, its application becomes less surprising. In under a century, the company has mounted an impressive rise to global dairy-stardom. Founded in 1926 in then-rural Athens, Fage remains family owned and operated. The company began national distribution in 1964, followed by exportation, first to the UK, in 1980. Exports to the U.S. began in the late 1990s, and Fage opened its first American production facility in 2008. In 2011, Fage acheived €385 million in net sales. Theirs is a story of the underdog: a mom-and-pop store that grew to international recognition, and continues to beat out food giants like Kraft and General Mills.
Today, Fage’s toughest competition is the New York based Chobani. Founded in 2005 by a Turkish immigrant, Chobani currently leads the U.S. yogurt market, but it has nowhere near Fage’s experience and it has only just begun branching out into the international market. Neither Chobani, Oikos by Dannon, nor Athenos by Kraft applied for gTLDs, so it is arguably Fage who holds the title of reigning yogurt champ – at least in the digital sphere.
Still, if Fage’s application wins points for boldness, we have to ask the obligatory question: what’s next? Part of the problem for the food industry is that, with the exception of specialty delivery services like FreshDirect and Peapod, purchases are rarely made online. How and in what capacity Fage plans to use its gTLD remains unclear, but we’re willing to guess it could become a powerful marketing tool.
It’s true that Fage could potentially face significant challenges in its Greek production centers and global supply chain, given the economic turmoil. But the company’s presence in the gTLD frontier conveys its willingness to continue taking risks and building its brand.
Gym chain Planet Fitness’ UDRP complaint against competitor Blast Fitness Group, filed with the National Arbitration Forum (NAF) over the domain name blastfitness.com, appeared to be a clear case of Reverse Domain Name Hijacking (RDNH), but the case was not that simple. The Complainant used to actually own the BLAST FITNESS mark, which was given to it by a predecessor who operated gyms as "Blast Fitness", but changed the name to "Planet Fitness" and cancelled the trademark. It was at that point that the Respondent registered and began to use the blastfitness.com domain name, resulting in the re-filing of the BLAST FITNESS mark by the Complainant.
The NAF Panelist ultimately ruled in favor of the Respondent despite the fact that the Complainant owns the BLAST FITNESS mark, because it found that the Respondent has legitimate rights to the domain name due to its operation of an established brand of gyms under the same name, nor did it think that the domain was registered in bad faith. Brands should take note that owning a trademark does not always ensure a favorable decision when it comes to the UDRP as evidence by this case, in which the rights and legitimate use on the part of the Respondent trumped the Complainant’s trademark ownership.
The blastfitness.com case is interesting for a couple of reasons. First, although the Complainant claims its "trademark registration with the USPTO was active at the time Respondent registered the disputed domain name" the facts show that the domain name was registered in the window between the cancellation of the Complainant's old trademark registration and the filing of its new application. Second, this case highlights the fact that the UDRP was not designed for disputes of this complexity with subtle, factual questions going to the intent of the parties (the Complainant's intention in abandoning its trademark and whether the Respondent intended to start up a competing fitness business at the time it registered the domain). Such matters are more properly considered in a courtroom where witnesses may be cross-examined and the veracity of evidence contested. In fact, it wouldn't surprise me a bit if that's where this case goes next.
Blue Mountain Coffee, Inc. recently filed a complaint with the National Arbitration Forum (NAF) over the domain name Blue-Mountain-Coffee.com. Unfortunately for Blue Mountain Coffee, the NAF Panelist in this case determined that the Complainant was unable to sufficiently establish its rights to the domain name, and ordered that the domain name remain with the Respondent, the current registrant.
For me, the most interesting part of the Blue Mountain Coffee case was not the fact that the Complainant was actually represented by counsel or even the fact that the Panelist found that no trademark rights existed, but that the Complainant dodged a bullet when the Panelist found no reverse domain name hijacking (RDNH). Citing the Complainant's belief that it owned trademark rights due to the grant of a license from the Jamaican Coffee Industry Board and its extensive use of the Blue Mountain Coffee name, the Panelist held that the complaint was brought in good faith. This highlights the fact that Panelists are loath to make a ruling of RDNH so, when they do, it's usually quite a serious matter. This was a close case and I agree with the decision.
Prometheus Global Media, LLC, the parent company of Billboard and the Hot 100, filed for UDRP arbitration over two domain names, BillboardRadioOnline.com and TheHot100Radio.com. According to the UDRP rules, a Complainant can only bring a complaint relating to more than one domain name if the domains are registered by the same entity. In this case, the Complainant argued that both domains had in fact been registered by the same individual, a “Shawn Lloyd,” despite the fact that the WHOIS records list “Billie Druer” as the registrant of BillboardRadioOnline.com and “Webstarts” as the registrant of TheHot100Radio.com.
How did the Complainant attempt to prove that the two domains belonged to the same registrant? By pointing to the Facebook page of “Shawn Lloyd,” which lists both of the domains in question, and by showing that the two domains resolve to similar content. This evidence was a bit thin for the National Arbitration Forum Panelist, however, and she was forced to dismiss the Complaint over one domain name, TheHot100Radio.com.
Those of you who have been reading this blog for some time know that the UDRP does not allow for evidentiary discovery or cross-examination of witnesses. If you need more facts to develop your case the better (but more time-consuming and expensive) choice is to file a claim in federal court under the Anticybersquatting Consumer Protection Act (ACPA) where you can request your opponent's documents and depose and cross-examine its witnesses. If you're going to pursue the UDRP to save time and money, you'd better have a solid case from the start.
In the Prometheus Global Media case, the Complainant did the best it could with the facts it had available, but it just wasn't enough to convince the Panelist that the owner of the two domains were really the same person. Despite the websites looking similar and both domains being listed on someone's Facebook page, the actual WHOIS records for the domains list different owners, addresses, phone numbers, email addresses, creation dates, and registrars. Even a look at the WHOIS history shows no further similarity than two different towns in the Canadian province of Ontario. Even though these towns are a mere half-hour drive from one another, this simply is not enough to satisfy paragraph 3(c) of the UDRP which says that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder."
In the end, this will likely be nothing more than a speed bump in the complainant's drive to reclaim these 2 domains since the cost of filing two UDRP cases is still far less expensive and time-consuming than that of filing just one ACPA claim. I expect we'll see a decision on the second domain in another few months and my money's on another win for the complainant.
Google Inc. recently filed a UDRP Complaint with the National Arbitration Forum over 763 domain names that all contained its trademark, “Google” followed by another word or phrase, including generic terms, celebrity names, geographic terms, and other brand names. The Respondent, Chris Gillespie, argued that the word “google” has become a generic verb meaning “to search the Internet,” and as such, the dispute over these domain names was outside the scope of the UDRP.
When someone goes and registers 763 domains that contain one of the world's most famous trademarks, you have to wonder what exactly was going through that person’s head. Here, Gillespie claims that the term "Google" has become a generic synonym for the concept of searching for something online. He even went so far as to file an unspecified action at the Trademark Trials and Appeals Board (TTAB) to have the word declared to be generic. However, like all plans that "seemed like a good idea at the time," Gillespie got over-confident and grabbed a number of domains that can be described as double squatting, including GoogleDallasCowboys.com, GoogleStateFarm.com, and GoogleWellsFargo.com.
This puts Gillespie in the highly awkward of having to argue that i) the word "google" is being used generically and that ii) the second famous trademark is being used nominatively. This pretzel logic was simply too much for the UDRP Panel, who found the domains were registered for the purpose of selling, renting or otherwise transferring them to Google or its competitors, and that the registration of such a large number of domains in such a short period of time amounted to a pattern of bad faith conduct. As for the TTAB case, the Panel found that it wouldn't affect other Google trademark registrations in the U.S. and around the world, and so was of minimal relevance to this case.
It can seem like an incredible win when a brand is able to recover a large volume of domain names from a single squatter, but it also raises questions about what the brand in question is to do with the domain names after the fact. For every domain name in a company’s portfolio, that company must pay an annual renewal fees. So when a company suddenly adds hundreds of new domains in one fell swoop, it can see its annual costs jump significantly. While it was definitely a smart move for Google to take these domains out of the hands of a squatter, it will now have to determine which are worth keeping, and for how long.
This week, High Sierra Sporting Company, a manufacturer of adventure and travel gear, acquired the domain name HighSierra.com. Founded in 1978, the company is the official supplier of bags and luggage for the U.S. Ski and Snowboard Team. Prior to this acquisition, it used the domain name HSSC.com.
High Sierra did not disclose how much it paid for the domain, but it was clearly worth the investment: the company’s president, Hank Bernbaum, said, “We are excited about the purchase of HighSierra.com. The shortened URL HighSierra.com will make it easier for our customers to locate and contact us more quickly.” Bryan Kinsley, the company’s COO, echoed this sentiment, affirming that many customers know the company simply as “High Sierra.”
According to Domain Tools, HighSierra.com was first registered back in 1995, most likely before the company was even considering the idea of building a website. Currently, High Sierra is redirecting the domain back to HSSC.com. This move is understandable, considering that the site ranks first in a Google search for the term “High Sierra,” but in order to really begin extracting the full potential of the domain, High Sierra may want to consider developing a standalone site around the new domain, and eventually transitioning from HSSC.com to HighSierra.com.
Fashion model Astrid Muñoz recently filed a UDRP Complaint with the National Arbitration Forum (NAF) to secure the transfer of the domain name AstridMunoz.com. Muñoz contended that her name has gained international recognition and earned the status of a common law trademark because of the fame that she has achieved as an international model. The Respondent disagreed with this assertion, saying that it was the joint venture partnership between Muñoz, the Respondent, and the Respondent’s business partner that actually made the “Astrid Muñoz” mark famous – this business venture, conveniently, was also named "Astrid Muñoz."
Confused yet? So was the NAF Panel. It concluded that this peek into the parties’ shared past did not provide enough detail about their prior relationship to impact the outcome of the arbitration. Rather, the Panel found that the Respondent’s use of the domain name to promote a “tell all” book and screenplay about Munoz did not constitute a bona fide offering of goods or services or a legitimate use, and ultimately ordered that the domain be transferred to Muñoz.
Given the lack of any discovery or other ability to verify an opponent's evidence in the UDRP, the Astrid Muñoz decision highlights the discretion allowed to panelists in deciding just how much credibility such evidence is given. Frequently, when parties have a prior relationship, a Panelist will decide that there was no bad faith by the respondent at the time the domain was registered, regardless of the current content on its website. However, here, "[t]he Panel notes that while Respondent has provided multiple affidavits to support his claim, none of the evidence or documentation appears to be professionally done or even objectively indicates the involvement of the Complainant." To me, this subtly suggests that the Panelist felt the Respondent might be manufacturing evidence or otherwise trying to defraud the UDRP process.
Another interesting component of the decision is the fact that the Respondent claimed it has a First Amendment right to promote its tell all gossip book about the Complainant, a famous model and photographer. The Panelist rightfully held that "[w]hether Respondent may establish a website and provide some free speech protected content related to the Complainant is beyond the scope of the UDRP. The UDRP proceeding focuses on how a website is identified and free speech rights do not override trademark rights in a manner that supports a protected mark’s misappropriation or confusing misuse." While the UDRP makes allowances for fair use, apparently the commercial sale of a gossip book does not fall within that category.
Today, FairWinds released an update to its 2008 Verizon Case Study. Back in 2008, we projected that our work to improve Verizon’s domain name portfolio would drive over 3 million visitors to the company’s websites and save Verizon over $1 million.
After revisiting the data this year, it turns out that those original projections were a bit low. In reality, we helped Verizon attract over 93 million visitors to its sites over the first three years (that’s an average of 31 million visitors per year), and drive an additional 321,000 online sales annually, which translate into millions of dollars in revenue for Verizon.
How did we do it? We took a three-pronged approach to make Verizon’s domain name portfolio as lean and efficient as possible. First, we cut out all the low-quality domains that were costing Verizon money but not driving visitors or otherwise contributing to its business. Then, we identified and recovered key domain names that the company did not already own. Finally, we helped the company redirect its domain names to the relevant content that users expect to find when they type those domains into their browsers.
But the best part of the work we did with Verizon was helping to change the company’s approach toward its domain name portfolio. Verizon regularly evaluates its portfolio to make sure that it is not carrying dead weight, and approaches the registration of new domains with a critical eye, always asking whether the domain will improve its online business. Ultimately, Verizon is able to provide its audience with safer online experiences that deliver relevant content, and increased its revenue in the process.