Remember Pricewaterhouse-Coopers' botched attempt to spin off its consulting arm into a separate business? The new company Monday didn't last too long before it was swallowed up by IBM in a megabucks deal, but even before that, it had run into trouble over its launch.
A large sum – believed to be around £75m – had been spent on the rebranding of PwC Consulting to Monday, but one small issue was overlooked. The firm bought the domain name introducingmonday.com for the launch of its website but forgot to register introducingmonday.co.uk.
Some kindly soul, however, did it for them and created a site filled with v-signs and dancing donkeys. It’s still there if you want to look.
This tiny mistake in what would have been a very complex and time-consuming project not only caused major embarrassment to the firm, it could also have cost it a significant amount of money in terms of damage to its reputation or lost customers who were unable to find the site. Fortunately enough for Monday, IBM came in shortly afterwards, making the whole exercise redundant but solving the branding problem.
A similar case arose a few weeks ago, although there were some key differences.
A small, two-partner accounting firm called Hicks & Co hit the top of internet monitor Hitwise’s most-visited list of accountancy websites, above the likes of PwC and the ICAEW. Although the site did offer online services, the majority of its hits came from owning the domain names inlandrevenue.co.uk and inlandrevenue.com, which it had managed to register. The firm was receiving a massive spike of hits as self-assessment deadline approached.
These situations can cause problems for companies, but there are standard procedures that can be used if a company is convinced it has the right to own and use that name.
For names ending in.com complainants can use a uniform dispute resolution process through the WIPO. This is a fairly standardised process to establish whether the particular domain name should be given to the complainant.
For.co.uk names a dispute resolution service is available from Nominet, the company responsible for allocating these names.
There are several arguments that can help achieve a positive result for the complainant, according to domain name lawyer Simon Halberstam of Sprecher Grier Halberstam.’If you have a registered trademark, you will have a strong case but goodwill, which is seen as an unregistered trademark in many cases, can also be a very strong launchpad,’ says Halberstam.
Other arguments, adds Halberstam, include being deprived of doing business online because someone has your domain name, losing business or profit if a competitor has your domain name or something similar, or damage to the company reputation if the name links to, say, a porn site.
This is something that caught out one of the then Big Five firms a few years ago when one of its domain names was squatted by a porn site.
In the case of Hicks & Co, the Revenue is not taking action to reclaim these names, and looking at these criteria it is not hard to see why.
It has its own.gov.uk domain name to use, Hicks isn’t taking Revenue customers for its own and isn’t damaging its reputation in any way. In fact, if you use these addresses the Hicks site provides you with a link to the official Inland Revenue site. On these grounds, Monday would also have struggled to reacquire the hijacked.co.uk address.
It is clear from these examples that businesses can no longer afford to think of its web activities as an afterthought. When companies are starting up or launching a new product, they must take into account whether or not the name they may want is available. If they don’t, the likelihood of the company getting hold of the name, the potential costs, and whether it may be better just to find a new name, must be assessed.
Acquiring these names can be costly. At the height of the dotcom boom, certain individuals were getting rich by having the foresight to register well-known generic names in advance and selling them to the highest, and sometimes most desperate, bidder. This trade died down quickly as corporations hoovered up the most popular names and of those still left, the bursting of the internet bubble means prices are now significantly lower.
There are other problems that can arise over domain names. Cybersquatters have been known to register slight variations on company names. These may include common misspellings, insertion of a hyphen in between words, or as with Hicks registering the same name but with a different top-level domain (such as.info.net or.org).
It’s almost impossible to identify and register all these possible variations, and would probably not be very economical either, but it’s certainly important to look after brand names. Companies must balance potential costs against the benefits or end up watching goodwill diminish rapidly.
As Halberstam says: ‘You have to look at how much goodwill you have in your brand and how much damage can be done to it by sites like these.’
Unfortunately, sometimes that damage can be significant and watching the value of your brand evaporate as someone else operates a site using it, would not do much for your accounts. But, with a little foresight, this situation could largely be avoided.