Georgina Bell-Scott, a Solicitor at technology practice Kosnahan Law, writes for Esports Insider to highlight why domain name protection and enforcement in esports is important regarding brand safeguarding.
In the fast paced field of esports, where competition is fierce and innovation knows no bounds, esports brands, teams and digital media companies will be acquainted with establishing and investing in strong unique brand identities.
Brand protection strategies include steps to safeguard trade marks, copyrights, designs, patents and trade secrets. Trade marks often feature in domain names, websites and marketing across digital/social media channels, helping to build a distinct digital presence and online identity which esports fans, sponsors and investors recognise.
As a company’s online presence, success and brand reputation grows, unfortunately, so do potential threats online from bad actors.
Kosnahan Law has seen firsthand how identical or confusingly similar trade marks can impact global brands, particularly when it is intentionally used in domain names for fraudulent purposes.
Is this relevant in esports?
It’s important for teams or companies not to overlook the importance of protecting and enforcing their digital presence online. Losing control of a brand online from impersonation and passing off can affect any business at any time, including within the esports ecosystem.
What can be done if an esports organisation has been targeted?
- Be vigilant and take proactive domain name/brand protection measures to fortify and maintain a brand’s integrity, goodwill and reputation.
- Along with other legal steps, consider preserving IP through ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP).
Trade mark holders are able to use the UDRP process to resolve domain name disputes in a cost-effective and efficient manner.
A good example is a case from 2017 involving the domain fazeclan.com and global esports team and brand FazeClan Inc. (‘FaZe Clan’). In this instance, the bad actor registered fazeclan.com using FaZe Clan’s trade mark illegitimately and in bad faith. The disputed domain resolved to a parking page containing hyperlinks to third party competitor websites.
A more recent example last year, involved the disputed domain thescoreleague.com and digital sports media company Score Media and Gaming Inc. (‘Score Media’), where Score Media’s trade marks were also used illegitimately and in bad faith. The website to which the disputed domain was resolved contained content from Score Media’s official website and sports betting application, prompted visitors to register user accounts and also included links to Score Media’s official YouTube and Twitter accounts. Ultimately, both cases were successful under the UDRP process, with the respective disputed domains being transferred to the complainants.
Impersonation and/or passing off not only damages a brand’s goodwill and reputation, but it can also potentially impact future investment and sponsorship opportunities. Revenue earnings can also be affected, as the perpetrator derives commercial gain from unsuspecting internet users who incorrectly believe the disputed domain name and website to which it directs to be affiliated with, endorsed by and/or connected to the actual company or brand.
Straightforward infringement cases involve direct trade mark use, whereas more complex issues can include the likes of typo-squatting, cybersquatting or reverse domain name hijacking to name a few. Websites from which disputed domains resolve, which impersonate well-known brands, could also contain content from a brand’s legitimate site, include links to a brand’s official social media accounts, have hyperlinks to third party competitor sites and/or prompt users to register customer accounts.
Websites from which disputed domains resolve targeting esports organisations could also contain pay-per clicks directing to third party competitor sites; include QR codes to download counterfeit apps; and even be complete fake copycat sites. Either one of these issues ultimately exacerbates confusion of unsuspecting internet users/fans, who believe the websites to be authentic.
Ultimately, bringing a UDRP complaint is a commercial decision, but if a brand is valuable and wants to avoid dilution, confusion and impersonation, it might be a viable option, as was the case for FaZe Clan and Score Media.
At Kosnahan, we have experience drafting complaints involving single/multiple domains. This includes cases filed against various registrants, involving numerous trade marks and domain extensions.
We recognise safeguarding brands online through strategic brand protection measures is not just wise, but essential for a brand’s future prosperity online.
If you need advice or assistance on domain monitoring, protection and enforcement, the team at Kosnahan Law are at hand and would be happy to assist.
This article was written by Kosnahan Law, a law firm based in the Isle of Man, which offers services regarding organisation structures & management, player contract terms & transfers, brand & IP Rights protection and licensing, team sponsorships and endorsements, general commercial contracts and much more.
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