by Stuart Fuller (CentralNic)
In the past few weeks, a number of trademarks have been registered in the US and European Union, by Gordon Ramsey, for what appears to be a new restaurant chain called “Great Burger”. The controversial chef and restauranteur has also filed logos for protection, with the emphasis on the “GR”, giving rise to the launch of a new chain of restaurants to go along with his Street Pizza, Union Street Cafes and Bread Street brands.
I’m sure that Chef Ramsey has been pouring over the details of his new project and ensuring his army of lawyers have been filing the relevant trademarks, protecting his intellectual property against any infringers before he launches. However, it seems that in the haste to serve the first Great burger, someone has forgotten to consider the importance of registering the relevant domain names prior to filing the trademarks.
A 30 second domain name availability search reveals that ‘greatburger.com’ is actually listed for sale, albeit at a premium fee. The name was originally registered back in 2011 but interestingly, was updated a few days ago, giving rise to speculation that the registrant may have put it up for sale in response to Ramsey’s trademark submission. In fact, at the time of writing, all relevant available domain names, including greatburger.bar, greatburger.cafe, greatburger.rest and greatburger.restaurant are available to register. This underlines the fact that apparently no one thought of marrying up the trademark registrations to domain names. That is a brand launch faux pas 101.
Any organisation, which is planning on launching a new brand, needs to consider the relevant trademarks and domain names hand-in-hand. Registering one and not the other could lead to intellectual property infringement, huge delays in launching the brand and in some cases completely changing the brand at the last minute. All of which adds huge costs and launch delays while recovering or purchasing (at a huge premium) the required domain names or worse registering a whole new set of domains and trademarks.
Unfortunately, organisations cannot simply rely on legal mechanisms to recover what they consider to be infringing intellectual property that has been registered by third parties. Domain name infringement, for instance, is defined as being the registration or use of a domain name with bad faith intent to profit from the goodwill of a trademark belonging to a third party. The Uniform Domain Name Dispute Resolution Policy (UDRP) rules were created in order to protect brand holders from abusive registrations by third parties who intentionally register confusingly similar domain names in bad faith for profit and may be the first consideration for a brand holder faced with IP ownership issues.
Any potential infringement case has to fulfil three criteria:
the trademark is damaged as a result of an identical or confusingly similar domain name;
the current registrant does not have any relevant interests regarding the domain name;
the current registrant uses the domain name in bad faith (primarily selling for profit or offer the domain for profit, or intentionally diverting internet traffic to another website for commercial gain;
In the case of the greatburger.com domain name, it is clear that it was registered long before the trademark was filed by Gordon Ramsey. The domain doesn’t currently resolve and so it is hard to see whether the registrant has any interest in the keyword term. Whilst the domain name is listed for sale, it is possible it has been listed for some time and thus again, whether it is being used in bad faith. Considering all three of these tests together, there is no certainty that Ramsey would be able to successfully file a UDRP against the current registrant, and win control of the domain name. Whatever the situation, should Ramsey decide to acquire the domain name then it will cost significantly more than it would have to have registered it in the first place, prior to filing for trademarks.
Hindsight is a wonderful thing, and this is why a clear brand launch strategy is essential for any brand holder to avoid embarrassing or costly follow-up actions and to ensure they have the appropriate intellectual property protection.
Experts such as BrandShelter ensure that any organisation is fully prepared before they launch any new brand, product or service. Our intellectual property experts work with brand owners to ensure that trademarks and domain name registrations are aligned for all relevant sectors and geographies. Key risks and likely costs are detailed in a recommended recovery plan before launching any recovery efforts against any matching digital assets owned by third parties.
BrandShelter works with brands on a daily basis to create strategies that protect revenues, reputation and customers. Using a proactive approach for domain name management, digital asset security and brand protection, BrandShelter ensures organisations ahead of the criminals in the digital world.
