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 …
- Index name to past investigations
- Trust my “gut” if anything about it “rings a bell”
- Tools one can Use …
- Use whois searches to uncover any data
- Use reverse whois to search on other domain names owned and garner other data
- Check whois history of a domain(using domain tools) to gather leads
- Google Image Search – You never know what might pop up
- Use internet archive and the Wayback Machine to see what a website once was
- Cross-reference leads with state business registrations
- Better Business Bureau BBB and like minded websites sites
- Advanced Background Check
- Domain Inspect – Old Windows-based tool, but a valuable asset
- Domain Tools – A great search resource “Who-Was on Domain Names Archives
- Secretary of State – Regionally
- USPTO – United States Patent and Trademark Office
- Consumer Complaint Forums
- Social Media – Facebook/LinkedIn/Twitter
- Aggregator Sites – be careful, these can lead one down a rabbit hole
- Look at shipping details. If they state a “tax” for a given state then they conclusively may have some type of presence there.
- Check the state business registration site for known state
- Check the Delaware state business registration if you cannot find a known state. Many companies use Delaware.
Things to consider Searching …
- Checklist-Seller search methods for Amazon and Ebay (even if your focus is Amazon, odds are they are also selling on Ebay and vice-versa)
- Check store and seller feedback for leads and relevant data about a seller
- Run Shipment Tracking ID’s left in comments section – Where was it shipped and so on
- Search seller store number in Google to tie it to another entity or name elsewhere
- Search any unique language within seller stores using Google to pinpoint any matches elsewhere
- Search seller name and variations of name against domain names
- Take screenshot of store image, upload to Google, and use google image matching to check for similar images
- If a lead is found in eBay, a bid or buy it now can be done from a sellers account, allowing for a user information request to gather user information.
- A user information request will also give the seller the user information from the requesting account
- A bid cancellation request can be sent to preserve the account status, or an account can take 2 nonpaying bidder cases opened against it before being closed eBay on the 3r
- Use various specific keyword search strings using the seller and product names to find leads. Check cached search results to find data this is no longer indexed
- Global Domain Name variations – This has helped narrow a search many times
- Call Listed Numbers in Comments left by buyers
- See if there are corresponding .net, .org, .biz, .info, .us, .mobi ( cctlds are rare and unless the foreign is known, suspected, or no other leads are generated, a cctld list is a huge time suck)
- Check the Amazon “ships from” to get a basic origination- this is performed by reverse searching on this data
- Check the negative review sites; pissedconsumer, etc
- I will in the next week I will write up a detailed step by step process of uncovering the information of a bad faith seller and what solutions that can lead up.
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