For brands to thrive, they need more than ever to deliver their products and services through the digital channel. A robust Brand Protection strategy is essential as well and an understanding of, and protection against, third-party use of a brand’s IP is an important part of this.
For many brand owners, finding these infringements is usually the first challenge. That’s why BrandShelter spoke with Matthieu Aubert, Head of Advisory and strategy at SafeBrands (part of CentralNic’s Brand Services Division), about current threats and monitoring solutions in our this month's expert interview.
BrandShelter: Matthieu, you have been in the domain industry for more than 15 years now and Monitoring services are your daily business, but what exactly do you mean by this?
Matthieu: That’s a very fundamental question! As “monitoring” became a generic term to designate various products which could have a very different objective. Especially for domain names for which we need to differentiate the audit and the watch.
BrandShelter: Ok, so let’s start with the audit.
Matthieu: No problem, an audit is the equivalent of a prior right search for trademarks for instance. It is an essential step to perform for anyone thinking about choosing a new brand or for trademark owners at any stage of the trademark lifecycle, if it was not done before.
The audit will report all the domain names which contain or are variants (typos, homographs, …) of the trademark or protected term registered up to the day of generation.
It could serve different objectives as for instance:
BrandShelter: That can be understood, but what does domain watch mean?
Matthieu: The watch will be the continuity of the audit. It is too often considered as a solution on its own but how can we monitor the future without knowing what happened before and what domain names to register?
The watch named oftenly monitoring will report all the newly registrations and if I may refer to our solution, the domain names which are about to expire.
BrandShelter: This has already raised very philosophical questions. Now we have talked about domain monitoring, but are there other forms of monitoring on the internet?
Matthieu: Various types of monitoring exist as a domain name corresponds to an IP right, but it's also a communication tool.
From a trademark owner perspective, a domain name could infringes his rights by mentioning for instance the brand, but the domain name could also be generic and linked to an infringing content.
That is why I would say that the fundamental first step is to start to monitor domain names but it is also important to be aware of websites, social media, market places, and others, where infringement of different natures can be published. I could mention anti-countering or defamation.
BrandShelter: So, would you say that brand owners should definitely use monitoring services to protect their brands?
Matthieu: Yes, there are so many reasons function of the objective as mentioned above.
First, a monitoring service shouldn’t be considered as a cost centre but on the contrary a product when it is properly used, which will help to save money while establishing a rationalised strategy.
For this, the product needs to be associated with human expertise. The product gives data, the human analyses them.
If I know what is infringing my brand, what do I have to register and finally, what I need to fight against, I will have clear processes and won’t spend any time and money in registering / recovering and taking down non relevant domain names.
An infringement is often not very troublesome and doesn't require a direct action. And when it does, there are many ways to obtain a very satisfying result in a promptly and cost effective way.
BrandShelter: So monitoring services should be part of any brand protection strategy?
Matthieu: I don’t think that we can even say that there could be a strategy without “monitoring”. For brand owners it is unthinkable to register a trademark without having conducted a priori rights search. Why would domain names have to be treated differently? It is even more crucial as there are no borders online, no specific product or service classes, etc. .
About 15 years ago the internet landscape was different. New gTLDs were launched since then and moreover the internet became part of everyone’s life. It is even considered as a fundamental right in many countries.
Digital transformation is accelerating and will continue to do so. Today every company needs to have an online presence and unfortunately can be targeted by a fraudster. Infringements are not anymore reserved to the biggest actors as everyone is using the internet on a day-to-day basis and for many different reasons.
BrandShelter: Which monitoring services are essential for every brand? Which would you rather see as a plus?
Matthieu: The domain name monitoring as defined above is essential. But the “plus” would be to use the data to build a global approach. Audit, domain name registrations, monitoring, enforcement shouldn’t be considered anymore as different subjects but as a whole.
There is no possible efficiency otherwise.
BrandShelter: If monitoring services are part of a brand protection strategy, how can brand owners protect beyond that?
Matthieu: Domain names are governed by very different regulations. There is a quite harmonised frame for generic TLDs (e.g. .COM, .NET, PRO) but for Country Code TLDs (national extensions) it is another story. Some countries have very good procedures and some don’t even consider domain names as an asset to be protected.
Thus, there is still a strong belief that a classic UDRP arbitration procedure doesn’t exist, there is no alternative to defend a right.
That is false!
UDRP is a great tool but in many cases, it is not a necessary procedure and moreover, not the most relevant one.
Indeed, if my trademark is subject to a phishing case for instance: do I need to wait for 2 months to obtain a decision and thus be able to recover the domain name or require its deletion ? Of course, not … Due to the evolution of the infringements in many cases, prompt action is mandatory.
And there are many alternative solutions to obtain the required result. It could be via the take down but also by verifying the registration data, etc..
I could mention many options but each situation is different and needs to be analysed by an expert who will be able to give a clear listing of the available options but mostly advise the one which is the most relevant function of the established strategy.
BrandShelter: What advice would you give to any business owner who is about to launch a new brand?
Matthieu: Please don’t register your trademark without having conducted a domain name audit! If so, in many cases you will find out that a legitimate third party is already using an identical or similar domain name to provide products or services which are identical or even totally different from the ones you are about to commercialise. And it could soon and easily become a complexity.
You could also find out that the trademark that you chose can’t be registered as a domain name or that all the domain names that correspond to it are taken …
You also need to consider a budget to acquire some domain names in case they are taken and you need to anticipate registration or acquisitions based on your development plans.
Think about the potential meaning that your brand could have in any language.
Even if I would have other advice to provide here, I would say last but not least, don’t communicate before you define your strategy and secure the domain names that would need to be registered initially in private to avoid speculation.
Fraudsters monitor trademark databases but also domain name registrations thus, anticipation and anonymity are the key.
BrandShelter: With a long career in the industry, can you remember a case where brand protection measures totally failed or a particularly positive example of a brand protecting its digital assets almost perfectly?
Matthieu: How many companies register and communicate on a new trademark without even thinking about domain names? Quite a lot and many of them are big players. I guess those cases are dropping down over the past few years and I’m pleased to see that, but it is still happening too often.
I could mention opening shops with a brand new name or expanding those without securing the corresponding country code TLD.
Our monitoring tool allows us for instance to generate graphics showing the evolution of registration volumes before and after a trademark public launch and results speak unfortunately by themself quite oftenly.
If I may say a few words in conclusion, domain names must be considered as a distinct IP right and thus be treated differently. Online brand protection experts are required to advise each trademark owner for him to act in total serenity and confidence. Domain name is a transverse intangible object and thus administrative, technical and marketing sides should be taken into consideration as well.
BrandShelter: Thank you Matthieu for the great insights.
Matthieu Aubert is Head of Advisory and strategy at SafeBrands, which is a brand of CentralNic’s Brand Services division as Brandshelter. SafeBrands offers a personalised and high-quality service to thousands of clients in its five areas of expertise: domain name portfolio management and advice, internet monitoring, cybersecurity, added value hosting and SSL Certificates.
Matthieu Aubert graduated from law school as an IP legal counsel and was passionate about internet governance and its various implications. He had the chance to deal with domain names and more precisely internet governance directly by joining a corporate registrar, which became over the years an Online brand protection consultancy company. For more than 15 years now he has been managing and developing products and services dedicated to brand owners and their representatives, to help them to build a rationalised online approach from the very beginning (before choosing a brand) up to defence of their rights.
He is used to navigate in the registry and ICANN governance world as well as in the trademark owners one by serving among others as an INTA Internet committee member.