Online reputation management: a lesson in brand protection
John Oliver’s recent Last Week Tonight exposé on Rudy Giuliani demonstrates just how easy it is to register a domain that can be used to punk (or do worse damage) to an individual or brand. You’ll likely never inspire Giuliani-levels of dislike, but Oliver’s piece is a good reminder of the need for online reputation management.
Domain name punking with John Oliver
Public figures, celebrities, and politicians are no strangers to having their reputations abused online. High profile names like Julia Roberts and Madonna have had their names used by others who've registered domain names that reroute traffic to other sites or are used to make a quick buck by auctioning or using the name to sell something.
But then there’s John Oliver, host of HBO’s Last Week Tonight, who’s something of a specialist when it comes to registering domain names with the sole purpose of – well – poking (usually) good natured fun at his targets, including former New York City mayor Michael Bloomberg. Back in 2014, Oliver had his legal team register hundreds of Bloomberg-related domain names including tinytinymikebloomberg.nyc, michaelbloombergisawiener.nyc, and others which are a bit too vulgar to reprint here. (But in case you’re interested: a link.)
Oliver's latest target is former New York City Mayor, Republican Presidential candidate, and, now, Donald Trump's attorney and cybersecurity advisor, Rudy Giuliani. And it's also definitely worth noting here that Giuliani is no friend of ferrets. As New York City Mayor, he enforced a strict city-wide ban on ferret ownership, an act which inspired some to question his priorities. (Although, to be fair, Giuliani's anti-ferret sentiments are shared by others: see Diet Dew commercial below.)
Oliver has registered three Giuliani-related domain names with one simple goal in mind: question Giuliani's credibility as top White House legal counsel through the use of ferret-based GIFs: Giuliani2024.com, Giuliani-Security.com, and HillaryClintonIllness.com. This last one is in reference to comments Giuliani made about Donald Trump’s one-time presidential opponent, Hillary Clinton, and depicts ferrets engaging in an act generally considered NSFW.
Since Oliver’s May 6th broadcast, someone else has registered RudyGiuliani2024.com, which aims to “Make ferrets great again.” And someone else has registered Giuliani2020.com and RudyGiuliani2020.com, neither of which are currently active, so their intended use is anyone's guess.
The only domain Giuliani, himself, has registered is GiulianiSecurity.com, leaving registration of Rudy Giuliani-related domain names wide open for others. That is unless he gets to them first and/or proves, upon their registration, a legitimate case of infringement has occurred.
Can you protect your brand from unwanted pranksters?
Large brands commonly amass a vast portfolio of registered domain names. Often, this is done with an eye towards online reputation management: keeping domains out of the hands of pranksters, competitors, or anyone who might use a brand’s name to undermine or profit from that name. But registering a domain name with the sole purpose of mocking an individual or brand is not in and of itself a criminal act.
Using another’s mark on a noncommercial website for the purposes of satire or parody is generally permissible if the intent is not to intentionally cause confusion or create bad faith. (Just ask restauranteur Guy Fieri.)
In 2009, WIPO (the World Intellectual Property Organisation) ruled against the transfer of a domain name that was used by a site created to parody a right wing think tank. The registrants were allowed to hold on to their domain as the complainants were unable to establish all three primary criteria necessary for the transfer of a domain name in cases of abuse:
- that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- the organisation or person holding the name must have no rights to it;
- and that the domain name was registered and is being used in bad faith (for example, exploited for commercial purposes)
So although registering a domain for the purposes of parody or satire, à la John Oliver, may not create legal problems, registering a domain in bad faith – as outlined in the three criteria above – certainly will. And, if you are a trademark holder, you will undoubtedly avoid a lot of hassle in the long run if you take proactive steps to block others from ever having the chance to abuse your brand name or mark.
Three ways to manage your online reputation
It’s not likely that you, yourself, will ever end up in the crosshairs of a John Oliver "sick burn". (At least, we hope not!) Nevertheless, implementing strong brand name and trademark protection strategies could end up protecting you and your brand’s reputation from others who are out to do much more than simply satirise you. Know what appropriate reputation management actions to take in order to avoid potential problems you could face:
Registering your trademark with TMCH
Registering your trademark with the TMCH (Trademark Clearinghouse) is vital to the protection of your online brand. When you register with the TMCH, you are better able to protect your trademark when used in terms and/or phrases registered with the DPML (Domains Protected Marks List).
Filing a URS in cases of infringement
If you haven’t registered with the TMCH and DPML, discover your trademark has been registered for use in someone else’s domain name, and believe it to be a blatant act of infringement, you can submit a URS (Uniform Rapid Suspension) which if, upheld, will force the offending domain name/website to be taken down.
All registrars are required to follow the UDRP (Uniform Domain Name Resolution Policy), designed to protect online brands and trademarks from infringement. When an infringement dispute arises, a trademark owner must provide EuroDNS – your domain name registrar – evidence which is presented in court. The UDRP is used to transfer domain names in cases of infringement; the URS allows a domain name to remain the property of a registrant.
Online brand protection is no joke
John Oliver aside, not having an online reputation management strategy in place is no laughing matter. Our support team is always available to offer advice or answer questions about your online brand protection needs. Feel free to get in touch if you'd like a chat or need assistance understanding what can be a complicated legal matter.