www. who has rights to your name? .com
What it takes to put a major retailer on-line

June 7, 1999

BY MICHAEL KRAUSS

We once had a discussion about brand names in our marketing group. Should we name the new product after the CEO's dog? He seemed to like it. His wife thought it was great.

But was it market-driven? Probably not.

At considerable risk to our careers, we told the boss the name just wouldn't work. He agreed, and the product is now one of the top selling packaged cookies in America (which, for the purpose of this column, will go nameless).

The rise of the Internet has spawned many more arcane name discussions. For example, who has the rights to use your long-treasured trademark and brand name? If you're the Coca-Cola Co., do you own the rights to http:\www.Coke.com, or does the 13-year-old boy next door, who just happened to register your brand name for $70 for two years and a $ 35 annual renewal fee?

And what do you do about misspellings and approximate brand names? I'm sure United Airlines wishes they had registered www.untied.com; the latter is a Web site where frequent fliers go to complain about the services rendered in the sometimes less-than-friendly skies of the great airline.

According to Marcelo Halpern, a lawyer with the Chicago-based firm of Gordon & Glickson, which specializes in helping technology companies, some of the most profitable (and perhaps the least savory) Web sites in the business may be capitalizing on the approximate misspelling trend.

Halpern represented a well-known company whose web site was bracketed with "strategic misspellers." If you typed in a vowel or consonant wrong in the domain name of his client, you arrived at a rather graphic pornography site.

The client sought Halpern's legal advice. For guidance, Halpern had to look at the Web sites himself, which caused some concern among his colleagues and friends, but evidence is evidence. Halpern collected it, reviewed it and challenged it, and his client prevailed.

Though the porno site "ceased and desisted," Halpern notes, "We discovered they had at least a hundred strategic misspellings intended to drive eyeballs to their site."

Well there's a New Age marketing strategy.

The basic domain architecture of the Internet confuses things even more. By now, many consumers understand that there are Internet domains. These groupings-".org" for organizations, ".gov. for government sites, ".net" for network sites, ".edu" for education sites and ".com" for commercial sites-- made some sense to the early pioneers of the Internet.

Had there been a patent and trademark attorney present at the creation of these domains, things would have been different. Legal counsel would have demanded more domains--maybe one for each field of use or business category.

Most product managers know that we can register a trademark and defend it in a particular field of use. That's why there are so many "Acme" companies --- you know, Acme Movers, Acme Meats and Acme Consulting. Each can have registered trademark protection because it does business in a separate category.

But the Internet, with its wide swath of domain names muddles this issue. There can only be one Acme.com, so who gets to own it? The mover? The meat merchant? The consultant?

Suppose the consultant pays good money to the mover for the rights to Acme.com. What happens when the rulers of the Internet establish more domains, dividing .com into many components? In time, we'll see more domains. Should we buy or wait? If we wait, what's the guarantee we'll get our pet name when the new domains are established?

Then, of course, there are the "Internet cyber-squatters." Like land grabbers of the old American West, these New Age homesteaders "squat" on hundreds or even thousands of potentially popular Internet names, hoping they'll become valuable. The more nimble and aggressive of this breed hold the more valuable names for ransom in hopes a deep-pocketed Fortune 500 company will come calling.

If that weren't enough, there's even been a debate raging over who should register your Internet domain name. In the Internet's infancy, around 1993, a private company was given exclusive rights to register Internet names. Network Solutions Inc. became a best-selling stock on Wall Street thanks to its monopoly right to register world-wide Internet names.

In April of this year, Network Solution's monopoly got busted up. Internet Corp. for Assigned Names and Numbers, a nonprofit entity created by the government to establish a competitive environment, decided that there should be competition in name assignment. While Network Solutions will continue to keep the master list of Internet names, five new players have entered the game. You can now register an Internet name through America Online, Internet Council of Registrars, France Telecom, Melbourne IT and Register.com.

So what does all of this mean for an interactive marketer? Here are four common questions and answers:

• Should you fight for your existing brand name on the Internet? If you have a powerful and established commercial brand name, you should seek to obtain it and protect it. According to Halpern, "The courts are increasingly recognizing an organization's rights to its brand name on the Web."
  
• Should you pay megabucks to an Internet domain name land grabber for a piece of Internet real estate? It depends. Be creative. Seek alternatives. Is the name you want really worth the price? Be circumspect. Keep your hand on your wallet. Consult counsel.
  
• How important is your Internet address as an overall part of the marketing mix? Pretty important. Amazon.com and Yahoo.com owe their success to many factors. The memorability, brevity and emotional cachet of their name is certainly a factor .
  
• What should I do if the name I want is beyond my reach? Be strategic. Reflect on why you wanted the specific name. Find another name that will achieve the same strategic purpose. There's always another way to solve the problem.
  

The bottom line on Internet names is this: Like most elements of the marketing mix, the Internet creates enormous possibilities and it poses a whole new range of challenges.

Some days, I ask myself, "Would it be easier back in the boardroom telling that cookie company CEO what we should name his new chocolate chip?"

Not a chance..

Michael Krauss is a partner with Diamond Technology Partners in Chicago.
He can be reached at news@ama.org.