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Why Trademark Owners Should Think Twice Before Reclaiming Domains

Yvette Miller

A recent kerfuffle around Italian chocolate and confectionery producer Ferrero SpA and fan Sara Rosso is the latest example of how important it is for companies to consider carefully the domain and user names they decided to reclaim. Sometimes, enforcing trademark rights online can go really wrong, really quickly.

In 2007, Ms. Rosso chose February 5 to be "World Nutella Day" — a time when "Nutella Lovers Unite for One Day!" She built a web presence around Nutella Day that included a nutelladay.com website.

Nutelladay.com did everything a brand could hope for from a brand advocate: It encouraged people to go out and buy Nutella to use in scores of listed recipes; it created awareness of the brand and its fan-base by giving tips on how to get involved with and spread the word on World Nutella Day; and it created a strong emotional bond with the brand, giving people a place to share stories about the first time they tried the chocolate/hazelnut spread.

It was powerful stuff. Browsing through the site made me nostalgic about my Polish grandmother, who introduced me to Nutella when I visited her one summer in Bytom, a small city in the southern part of Poland, about an hour's drive from the Czech Republic. She hoped the Nutella was close enough to the peanut butter that I ate in the U.S. Oh boy, that made me one happy 8-year-old.

Ms. Rosso's campaign not only had a great web presence, it came from a loyal fan who dedicated her own time to promote a product she loved.

Then, in a bizarre move, Ferrero issued a cease-and-desist letter to Ms. Rosso, who said she would comply. That sparked a public battering of Ferrero in publications such as The Huffington Post, Mashable, Business Insider, and Adweek. Reversing itself, Ferrero stopped legal action against Ms. Rosso and began backtracking.

Adweek reported that the brand called the incident "a routine procedure in defense of trademarks." But it moved quickly to undo the damage it had done. The company expressed "its sincere gratitude to Sara Rosso for her passion for Nutella, which extends gratitude to all the fans of the World Nutella Day" and noted that the brand is "lucky to have a fan of Nutella so devoted and loyal as Sara Rosso." Ms. Rosso posted the update on NutellaDay.com, and noted that Ferrero had been "gracious and supportive."

But you know this story will become a case study in how not to pursue trademarks online. FairWinds Partners' would have advised Ferrero SpA to get the marketing, trademark, and domain name experts in the room together when deciding which domains to reclaim to discuss the risks and benefits based on certain criteria — one of which, missed in the Nutella case, is how harmful is the content on the domain name in question?

By Yvette Miller, Vice President of Communications and Marketing, FairWinds Partners

Related topics: Cybersquatting, Domain Names

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Comments

It is great to see a less Paul Tattersfield  –  Jun 01, 2013 5:12 AM PDT

It is great to see a less confrontational approach being advocated. How do you advise your clients who feel they need to protect their marks in order to prevent an implied license?

Advice from our counsel is to monitor, Yvette Miller  –  Jul 10, 2013 8:06 AM PDT

Advice from our counsel is to monitor, monitor, monitor. An implied license would likely not be created by a "fair use" fan site since no license is required in the first place.  Even in the unlikely case that such a license would be required it would only apply to the current use of the trademark. In this case, if Ms. Rosso started using her site for commercial purposes such as promoting competing or unrelated products, selling her own products, or even other uses like posting offensive material to the site, Ferrero would be able to step in and claim that these new uses are improper and exceed the very limited implied license which may have been created by her fan site.

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