In the last year, more and more of the brands I consult with started to noticed a surge in products that are not meeting their standards; being sold as legitimate and sanctioned, online. These unauthorized sales are causing a host of issues, ranging from illegitimate warranty to market dilution with severely under-priced goods, and many times, these items are of counterfeit, inferior quality.
There is no doubt that this is an activity that needs to cease. A brand cannot have any type of brand dilution, price erosion or consumer confidence issues. The negative PR alone can take years to recover from.
The solution is aggressive enforcement strategies, and I know online enforcement can be a challenge when the “bad faith seller” is foreign, or even worse, is hiding behind an alias or masked data. Sending a demand letter and contacting the bad faith seller in question is usually the first round of enforcement by most tactics, but how do you send a letter to an unknown entity? “The Who, What, Where, Why, When & How” if you will.
When you file a UDRP, the first response from the arbitration body is a demand to the registry of the domain name in question to reveal the masked or hidden whois data, and identify conclusively the bad faith seller. This is known as the “Deficiency Check”.
A Deficiency Check as defined under ICANN (Internet Corporation for Assigned Names and Numbers) definition is a UDRP (Universal Domain Name Dispute Resolution Policy) specific term that arbitration under NAF (National Arbitration Forum) and WIPO (Word Intellectual Property Organization) application applies when hidden, anonymous, masked and incomplete domain registration WhoIs records are demanded and completed for the purposes of communication between the infringing party, the brand holder, and the arbitrating body. This responsibility falls on the registrar, where the domain name is registered, to provide all parties concerned with the accurate and unmasked WhoIs or owner records.
In recent years, I have taken this ability one step further as I will describe below.
Attempting to identify who is illegally offering or selling your goods, whether counterfeit or gray market, is an uphill battle at best, and outside the ability of most companies’ sphere of operations; add to that a hidden or aliased bad faith seller, and the attention and labor commitment becomes untenable for most businesses.
I have made this a realistic goal, and as a much more financially beneficial option than going it alone.
Currently, a brand can crawl the world’s major search engines such as; Baidu, Bing, Google, Naver, Yahoo, and Yandex for your brands as well as zone files for infringing domain registrations. Thus utilize crawling technology given the provided search parameters; brands, TM, services, theater of operations, etc. This returned data is then both scrubbed and qualified to remove false positives, unrelated, and extraneous results. This methodology is employed across Gtld (.com, .net and .org), CCtld (.co.uk, .ca and co.jp) and .and alternate tlds where applicable and necessary. In addition, all the major global search engines are checked and compared for unique and regional concerns as well.
This brings us back to the issue of the hidden, masked or aliased bad faith seller. Based upon a clients need, I have created a “Virtual” Deficiency Check that does not require a filed UDRP to process; Third Party Marketplace Sellers (Amazon, Ebay, AliExpress etc.) , serial cybersquatters, Asian marketeers and other assorted hidden identities to name a few, can be uncovered with a high degree of accuracy and accelerate the enforcement process. This type of service allows brands to get to the person responsible and hold them accountable, and begin escalation.
Here is a fairly detailed list where one can start this process with. Again knowing where is only part of the battle, knowing how to search and what to do with the data will take some time for one to learn truly what to look for.
Things to Consider …
Things to consider Searching …
For more information about any type of intellectual property protection, contact me today. If you need guidance or assistance in this area, please let me know. Do not hesitate to reach out to me anytime. As always, I look forward to answering questions and feedback regarding this topic and others posted. I will be covering all aspects of Brand Protection Basics
Leave a Reply