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Tag: domain name portfolio management

ZARA vs. Zara: A Trademark Tale

What happens when a big multinational company discover that it’s trademark name is being used in a fraudulent way by another business? Should legal action be taken in order to protect its brand?

This occurred some months ago, in April 2015, when a very well-known fashion brand sued an Indian Tapas Restaurant for Trademark infringement. The fashion brand in question was the internationally renowned fashion retailer, Zara and the parties involved were Inditex Group, the Spanish company that owns the famous clothing brand ZARA, and  the Chennai based restaurant, “Zara Tapas Bar”.

It could look like Inditex was taking advantage of its position as a multinational giant in order to create a monopoly over the Trademark term. However, this couldn’t be further from the truth. A brand name is one of the most important intangible assets that a company owns, and should be protected against any action that may discredit it.

This is also the view of the Delhi High Court who ruled in favour of the clothing brand, ordering the restaurant to change its name. The defendant’s main argument was not successful: they claimed that, considering that both companies functioned in different areas of service, it was unlikely that it would cause any confusion amongst potential clients. And, even if this argument could have been valid in any other scenario, the Court Members concluded that the defendants wanted to benefit from the reputation and goodwill of the plaintiff.

The 2 main factors that the Court took into consideration when siding with the Spanish multinational were:

  1. The nature of use of the mark. The Defendant claimed that they were not using the mark ZARA per se, but “Zara Tapas Bar”. However, as its website and pages of social networking showed, it was mostly promoting the brand with emphasis on Zara rather the entire mark Zara Tapas Bar. Moreover, the Defendant associated itself with Spanish products (Tapas), where the plaintiff’s brand originates from. Clearly, leveraging the brand equity built up by Zara (the fashion brand) was demonstrated.
  2. The mark becoming Publici Juris (of public right). The Defendants argued that the mark had became common property and even provided a list of marks containing the name Zara. However, the Court stated that it is the choice of the plaintiff to take legal actions against infringers if they perceive it necessary.

So Trademark infringements can be found between companies operating in different industries, even if, as we have seen, neither them nor their goods and/or services, present any similarities at all. To avoid confusion and future problems it is always recommended to count on a good domain management strategy from the very beginning.

In conclusion, what does this mean for brand owners? Monitoring keywords pertaining to your brand is essential in today’s digital age. Investing a little will save a lot in the long run. Proactively enforcing a brand protection strategy is crucial when protecting your brand and digital assets.

dotNice – experts in digital brand protection
For more information email: brandprotection-emea@dotnice.com

Surviving in the Digital Space

Surviving in the digital space can pose difficult challenges to business owners. In order for businesses to survive today in the digital world they must have an online presence. It goes with out saying that traditional models of business have dramatically changed with the advent of the internet. The digital age has brought enormous opportunities for aspiring entrepreneurs and established businesses alike. The global market is within arms reach with merely a laptop and a solid wifi connection. Unknown performers can suddenly become an internet sensation over night, businesses can increase their global reach into new markets with minimal cost and consumers have greater choice and say in the product they choose, or don’t choose to purchase.

Indeed, the digital space has created unprecedented opportunities for businesses to grow and evolve. However, it also presents brands with novel challenges. Global IP management is complicated and digital technology is constantly changing at an ever increasing pace. Many brand or marketing managers naturally are intimidated by this new, innovative digital landscape.

Savvy, intelligent brands invest time and money into promoting, protecting and growing their brand identity and reputation online. They understand that a brand’s online presence is intrinsically connected to a brands bottom line and survival. However, many organisations have no concrete or focused strategy for managing their most important intangible asset – their online presence.

So, what constitutes a brands digital or online presence?

All brand portfolios today are digital or at least should be.

Smart digital brands view their digital assets (domain names, social media platforms etc…) from a holistic perspective. This all- encompassing approach to brand management as a single entity is at the core of thorough digital brand protection strategies. In order to fully manage your online presence, brands need to monitor and manage their domain name portfolio (gTLD’s , ccRLD’s and IDN’s) track their registered trademarks, supervise social media sites and of course protect all their digital assets from external abuse or internal misuse. The only way to succeed in the digital space is to manage your digital asset portfolio centrally.

All organisations want to protect their brand online at minimal cost. They seek to increase their global reach and break into new markets whilst securing their digital assets against fraudulent online behaviour and cybercrime. This can be a daunting task for brand managers managing established international brands due to the size and complexity of their digital asset or IP portfolio. Scaling smb’s who wish to expand into international markets also find it difficult to implement a digital brand protection strategy. Many can be confused as to where to start. Needless to say, whether you’re a long established global brand or a developing SMB, your enterprises success in any case relies on the effectiveness of your digital brand protection strategy. Ultimately, spending a little will save a lot!

How can intangible assets like digital assets be protected and managed?

Managing your digital asset portfolio involves three key essential steps: monitoring, managing and enforcing.

1.Monitoring:

Are you monitoring all domain names related to your trademark internationally? Trademark surveillance and monitoring are essential in preventing IP infringement or online abuse in protecting your domain names. This ongoing supervision and investigation is crucial when safeguarding your digital assets as it ensures you are aware when third parties attempt to harness your brand equity.

Similarly, who is monitoring your online reputation? Have you implemented tools to gauge online sentiment on social media and peer to peer networks regarding your digital brand? Have you identified any cases of defamation against your brand reputation? Successful supervision of your brand reputation involves monitoring of the whole web. Integrating online monitoring toolkits will allow you to keep your finger on the pulse of public perception pertaining to your brand. Maintaining monthly brand sentiment reports will help you stay on top. A proactive approach is required.

2 Managing:

Enterprises often fail to competently manage their digital asset portfolios as many of the departments responsible for such supervision often work in isolation from one another. Managing digital assets often is the responsibilIty of three key departments within an organisation – a. Marketing/ Brand management, b. Legal or c. IT. In most instances, these three departments generally work in silo’s and fail to communicate with each other. Employing an effective digital brand protection strategy engenders that all three departments work collectively.

When managing a domain name portfolio, communication between all three departments is essential. Using a centralised platform that aggregates all important information about your portfolio will greatly improve management processes. In many cases, outsourcing the management of your portfolio to an experienced and specialist third party often yields better results than internal management.

3. Enforcement

All organisations with an online presence know of the threats that face their digital brand each day. Cybercrime is increasing every year and the expense it can incur for digital brands is enormous. Enforcing a thorough digital brand protection strategy ensures enterprises’ have safeguards in place to defend against instances of cybercrime. It allows them to act efficiently and cost effectively when required. Applying a proactive approach to enforcing your brands online IP rights will safeguard your brands most important intangible assets. Recovering domain names from third parties can be a complex process for those unfamiliar with UDRP. Consulting with legal experts who have extensive experience in this field will save you time and money and ultimately benefit your digital brand.

dotNice International Limited – Experts in digital brand protection

For more information email: brandprotection-emea@dotnice.com

Cybercrime & Digital Brand Protection…What is it and why should we be talking about it?

There has been much talk over the last few years of the importance of digital marketing, how to create online marketing strategies, how to grow your online client base and following, how to build a brand’s online presence and how to conduct customer service via digital channels like twitter and Facebook. However there is very little conversation on the topic of how such brands’ can be protected once they have been established online. Businesses allocate massive marketing budgets to drive their digital presence. It would naturally make sense to safeguard your brand after so much capital has been invested. Some of the topics we shall be discussing over the coming weeks and months will cover the preventative measures your business can take to avoid such risks as brand reputation, revenue loss and of course legal litigation.

A key area of discussion over the next few months will focus on Domain Portfolio Management. Over the past year major developments and changes have rocked the world of domain names with ICANN , (Internet Corporation for Assigned Names and Numbers) releasing some 1,500 new domain names.
For instance, the music industry has just introduced .band as a new domain name available to online vendors. For yoga enthusiasts and teachers, the domain name .yoga was recently released; A plethora of new and unique domain names including .organic, .buzz, .beer even .wtf have recently been added to the domain name reservoir. This development can present great opportunities for brands endeavouring to expand and grow their online presence. It will allow enterprises to further develop targeted personalised marketing campaigns to new prospective clients and existing client bases. Needless to say, such transformations in the global domain registerary also possess threats to existing businesses. Opportunistic domain squatters may pre-emptively purchase a number of domain names that they imagine would hold equitable value to global brands. The news that Ashton Kutcher recently purchased a number of domain names for his baby daughter before she was even born, highlights the growing importance of reserving a domain name and also the growing awareness of online intellectual property. Brands must immediately consider how their domains are being managed, if at all!

Opportunities for cybersquatters are rapidly diminishing, because most businesses now know that securing domain names is a high priority. This has been happening many years and global brands are only now waking up to the extent of this problem. Companies that have won back their names from alleged cybersquatters following rulings from WIPO include Christian Dior, Nike, Deutsche Bank and Microsoft. Brands need to be aware of not only their current markets but also their potential markets. They need to protect themselves in both prospective future markets in addition to existing markets they currently operate in. Staying one step ahead is of critical importance.

Another issue our blog will discuss over the coming months is the problem of
Typo-squatting. Typo-squatting is similar to cybersquatting and is based on the probability that a certain number of Internet users will mis-spell or incorrectly type the name of a Web site (or actually its URL) when surfing the Web. For example, a common misspelling or a foreign language spelling. Back in 2006 to 2008, there existed an typo-squatted variant of Google listed as ‘goggle.com’. Landing on this fraudulent website would automatically cause the domain to download computer viruses and other destructive software including the dreaded antispyware program SpySheriff.

Another potential problem facing online brands is Phishing. Phishing involves opportunistic cybercriminals installing malicious software or stealing personal information off of your computer. Like fishing, cybercriminals essentially ‘Phish’ for important data through creating fraudulent email messages, websites, and phone calls. A highly publicised instance of this occurred in 2008 when an online fraudster claimed to be the renowned actress Scarlett Johansson and set up a fake competition whereby she ‘offered herself’ in a threesome with two of the competition winners. The object of the online imposter was to harvest email addresses of the unknowing competition participants.

Another fast evolving form of cyber-crime is brand jacking. Brand-jacking is a particular form of cyber crime whereby someone assumes the online identity of a person or brand with the intention of stealing the organisation or persons brand equity. An example of this happened to US Republican Sarah Palin and US President Barack Obama whereby falsified Facebook pages were created to damage their online presence. Furthermore, in 2006 a fake advert for a Starbucks Frappuccino was devised by an anonymous brand jacker who sought to damage the brands reputation. The objective was to highlight the contrast between consumption and poverty. Such parodies can ultimately destroy a brands equity as social media facilitates the rapid and viral dissemination of such fraudulent material.

In many cases the examples quoted above could be avoided if certain steps had been taken to carefully and thoroughly protect the brands listed. It often occurs that SMB’s and large corporations find themselves having to take costly legal action to fix what originally was a preventable problem. Enormous costs can be incurred if enterprises fail to implement and revise their digital brand protection strategy. In the year 2000, global brand Kodak won back its rights to kodak.ru after a long, tedious litigation process lasting a year and involving some twenty lawsuits. A further example of this occurred when multinational corporation Verizon won a $33 Million dollar lawsuit retrieving it’s domain name myverizonwireless.com from domain-quatters. These global brands had the financial means to pursue such costly litigation, many scaling brands establishing their online presence and scaling their business would not have such capital available.

Whether you’re an SMB or a large multinational, whether you work in the Tech industry or the entertainment industry, the same principles apply. Being prepared is key to guarantee your brands online presence and digital footprint is safeguarded.

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