A CORPORATION SERVICE COMPANY® PUBLICATION ISSUE 8 2013

A CORPORATION SERVICE COMPANY® PUBLICATION

THE BRAND BULLETIN

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Too much to watch?As online channels explode, how can you monitor your brands for infringement?Not long ago, your brand’s online presence was little more than a collection of domain names and email addresses. Now, though, social media channels and mobile apps have massively extended most brands’ ‘digital footprints.’ With the New gTLDs poised to extend them even further, keeping watch over your brands online will soon be more challenging than ever before.

Consider this cautionary tale from the world of online entertainment: A popular streaming content provider wanted a social media username for the new brand it planned to launch, but learned that someone else had already registered it. Littered with profanity and obscenities (and with a less-than socially acceptable avatar)—the squatter’s site had quickly garnered a big following. So big, in fact, that it was deemed to have already damaged the new brand. Because of this social media ’issue’ and a few other pitfalls on the way to

launching its brand, the streaming provider decided to pull the new service entirely.

Ski The East was luckier. While the Vermont (U.S.A.) outdoor media company found that its brand name had already been squatted on Instagram, at least the name was associated with an unused account. After getting no initial response from Instagram, Ski The East took to crowdsourcing, asking its nearly 20,000 Facebook followers for help tracking down the account’s owner. On Jan. 7, 2013, Ski The East posted a screenshot of the occupied account on its Facebook page, along with a simple plea:

“If you’re the one to help us locate the squatter you get a free t-shirt. If you are the squatter, you get a free lift ticket. Let’s do this gang. We’d like to get the keys and have the proper amount of PG-13 ski fun.” http://www.prnewsonline.com/water-cooler/2013/01/09/how-to-handle-social-squatters/

Knowing how other parties are infringing on your brand is critical for maintaining its integrity and creating a positive user experience. By employing an effective monitoring, prioritization, and enforcement strategy, you can ensure that instances of infringement against your brand are minimized and dealt with in a timely, cost-effective manner.

Brand Infringement: the 30-second introduction

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The best option is to be proactive and register branded social media usernames well before you need them, as a way to “future-proof” the opportunity.

Ultimately this unconventional technique paid off. Ski The East got a response from Instagram and secured the handle it wanted.

Getting a handle on social

The problem with social media usernames is the lack of a governing board or organization overseeing their ownership. Each social media outlet has specific terms of service that must be followed when registering or attempting to recover handles. Social media site guidelines tend to be geared towards consumers, creating problems for brand owners. Most social media channels don’t allow the buying and selling of usernames, so there’s no quick way to settle deals. Sure, you can contact the infringer directly or litigate, but both of these approaches take time and resources, often with mixed results. The best option is to be proactive and register branded social media usernames well before you need them, as a way to “future-proof” the opportunity.

The mobile challenge

The mobile app space poses a newer challenge for brand owners, but one similar to social media in many respects. With a wide array of app stores available,

it’s up to brands to make sure they register the right properties and deal with bogus apps. There are many things to consider when monitoring mobile apps:

• Does your company plan to engage in the mobile app market?

• If yes, thoroughly understand the risks and the rewards.

• If no, understand that this doesn’t eliminate the risk of infringement in the mobile app space (phishing, counterfeiting, etc.). Your brand could still be subject to infringement and fraud.

• Recourse is often similar to social media. However, when taking action you will typically deal directly with the app store and their policies, or in some cases, the developer or app owner.

More domains, more risk

If social and mobile risks give marketing, social media, IT and legal departments headaches now, the arrival of the new generic top-level domains (New gTLDs) could really have them looking for a darkened room to lie down in. According to Gretchen Olive, Director of Policy & Industry Affairs at CSC Digital Brand Services, “Companies already have their hands full with .com, .net and the various ccTLDs. The New gTLD Program, while posing a wealth of new opportunities for businesses around the globe, has the chance to pose additional risks if those businesses don’t have the proper strategies in place to make sure their trademarks, brands, and other IP assets are protected.”

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In short, once the New gTLDs—and, possibly, their infringing counterparts—are out there, monitoring will need to be even more sophisticated. With this change on the immediate horizon, it begs the question: Is online IP too much to watch?

Global brewing company AB InBev, parent company of brands such as Beck’s, Budweiser and Stella Artois, doesn’t think so. Philippe Vandeuren, AB InBev’s Legal Director for Global IP and Procurement, is conscious of the monitoring problem. “The recent explosion of digital and social media makes it increasingly difficult to manage your online reputation,” Vandeuren says, adding, “it has been important that we adapt our approach and learn to address both the opportunities and threats that this represents.”

At first, systematic monitoring across domains, Internet content and social media was an intensive, time-consuming daily task for AB InBev, which holds 200 beer brands worldwide. But the company’s early monitoring experience helped shape a broader brand protection program that now covers all of its online properties and extends to enforcement as well.

It’s an approach that’s also tailored to each brand so the company makes best use of its resources, explains François Uyttenhove, Trademark and Domain Name Manager at AB InBev. “Our monitoring strategy varies from brand to brand based on the level of risk and potential impact to the business,” Uyttenhove says. “Likewise, our enforcement policy varies by brands and markets. We don’t like our brands being associated with binge drinking, pornographic content, discriminatory sites, or any other type of slandering.”

New gTLDs: the monitoring challengeToday there are just over 250 top-level domain extensions (examples include .com, co.uk, .org and .info). Starting at the end of 2013, more than 1,300 New gTLDs will be introduced, covering generic areas, brand names, geographic areas and communities. Examples include .sports, .canon, .london and .eco. This five-fold increase makes domain names a much more complicated business. ICANN has created a rights-protection mechanism, the Trademark Clearinghouse (TMCH), to smooth the way for this sudden expansion, but it doesn’t solve every problem. For example, the TMCH will provide notices when people register domains that match registered marks for a period of time, but it won’t actually prevent domain name registrations—anyone can register a domain name within an ‘open’ New gTLD at the second level, e.g., clothingcompany.shop. Brand owners need to increase their monitoring accordingly to ensure ample coverage in relation to New gTLDs.

IN-HOUSE

Requires excellent collaboration. No single person manages every aspect of the brand, so

marketing, legal, compliance and other departments all have to create a plan and work closely together.

Proactive vs. reactive. Evaluate whether you are being proactive or reactive, and analyze what it would take to have a dynamic strategy in

place and the positive return you would get in exchange for your efforts.

OUTSOURCE

Providers may provide a “data dump” which doesn’t prioritize actions.

For example, some negative comments may have minimal impacts, and potentially infringing social media pages with

just a few fans or followers may not be worth your time.

Can be expensive. Unless the time savings outweigh the costs, some firms may

want to keep things in-house.

Considerations for IN-HOUSE and OUTSOURCED Monitoring

AB InBev’s strategy exemplifies the ‘end-to-end’ approach that is essential if brands hope to keep pace with the constant increase in online complexity. As Malia Horine, Director of Product Management at CSC Digital Brand Services points out, “Knowing what threats exist online is one thing, but understanding how to prioritize the most damaging and most visible ones—and take swift action—is critical. Understanding the entire process and using proper practices at each step is critical to a successful monitoring program and getting the best ROI on your monitoring and enforcement budget.”

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Five steps to a better view

CSC Digital Brand Services recommends that brands take the following five steps to ensure they are in the best place to monitor for infringement online:

1. Create a brand monitoring strategy that involves stakeholders from all relevant teams. One department cannot solve this problem alone. Marketing and legal departments in particular have an excellent opportunity to collaborate to one another’s advantage.

2. Plan and budget accordingly. Do you have the capacity to detect threats and take action against priority infringements? How big is your digital footprint? Which are your most valuable brands? By prioritizing action, you will ensure that your monitoring money is well spent.

3. Ensure coordination throughout the entire process, from monitoring to enforcement. A piecemeal approach risks leaving infringing names and domains out there, still doing damage. If multiple people or departments are involved with your strategy, schedule frequent meetings between your teams to make sure steps are not missed and you are getting a sufficient return on your investment.

4. Start small and leave room to grow. It can be overwhelming deciding where to begin, particularly if you manage many brands. Define your “must-haves” versus the “nice-to-haves” and take smaller steps for success. Identify the right approach for each brand in your portfolio based on their value and visibility online.

5. Plan to bring the most critical incidents to resolution. Proper analysis will allow you to understand which incidents are most critical or harmful to your brand and allow you to prioritize accordingly and keep costs down.

What to look for in a brand monitoring provider

When seeking a partner for the monitoring process, be sure that the provider:

• Has expertise across all digital IP—domains, New gTLDs, social media, apps, mobile, SSL certificates

• Understands large global brand portfolios

• Offers first-class technological tools that streamline the monitoring process

• Provides high levels of customer service

About CSC Digital Brand Services:CSC® Digital Brand Services helps businesses thrive online. One of the world’s largest corporate domain name registrars, CSC is also the leading provider of services related to ICANN’s New gTLD Program, representing more than one third of all “dot brand” domain applicants. CSC offers SSL certificates for safe online transactions; enterprise DNS services; social media username services; trademark search and monitoring services; and a broad range of Internet monitoring and enforcement tools designed to assert intellectual property rights. CSC’s award-winning customer support and superior technological assets enable companies to maximize the value of their brands, expand into new markets, and counter emerging online threats.

Visit www.cscglobal.com to learn more.

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