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July 9, 2024
Ensuring brand protection on the Internet can seem like a monumental task.
The digital landscape evolves quickly, providing infringers numerous ways to illegally profit from others’ brands. In this constantly changing environment, it is essential to understand the various possible strategies.
Without a clear online protection and defense strategy, companies may find themselves playing an endless game of “whack-a-mole” to try to counter threats.
Identifying problems and their impact
The first step in developing an online brand protection strategy is to identify the infringements the brand faces and understand why they cannot be tolerated.
Infringements are many and can include especially fake e-commerce sites, cases of phishing scams aimed at obtaining customers’ financial information, identity theft or false information brochures.
The impacts can vary: loss of revenue, reputational damage due to poor-quality or dangerous counterfeit products, management liability or consumer complaints.
Defining strategy goals and success metrics
In an ideal world, the goal would be to entirely eliminate the infringements. However, given the resource imbalance between brands and infringers, this is rarely achievable.
A viable strategy might instead aim to disrupt cybersquatters and counterfeiters, making the brand more difficult or risky to counterfeit. It is also recommended to educate consumers about the risks of buying counterfeit products.
It is also possible to seek to make intermediaries aware of their responsibilities, such as online marketplaces, pushing them to improve their infringement detection and management processes.
Measuring success
The goal must be realistic and success measurable, although this is often difficult to assess the number of sales diverted from counterfeit products.
We recommend using other metrics that could include:
– Targeted response rates
– The number of website takedowns achieved
– The number of infringing domain names canceled.
Robust monitoring and investigations
Once a problem is identified, the next steps are to gather contextual information, determine the problem’s origin, and identify the various protagonists involved before deciding on an approach.
Once the investigation had been carried out, the approach depends on the trademark owner’s goals : getting a site blocked, recovering the disputed domain name, obtaining damages, protecting consumers or even defending executives and the executive comity.
Depending on the situation, we recommend to send a cease and desist letter to the various parties in a case, to request for the site to be blocked by web hosting services and technical intermediaries, to filing a UDRP complaint or to undertake a legal action in a civil or criminal court.
Engaging with intermediaries
Establishing good relationships with intermediaries such as ISPs, e-commerce platforms, search engines, and payment providers is a valuable tactic in online protection. Responsible and responsive intermediaries can help rights owners tackle issues such as misleading ads, fraudulent domain registrations, phishing campaigns, counterfeits, grey imports, piracy, and ID theft.
Implementing trademark monitoring among domain names to detect infringements as soon as possible
In order to be aware of trademark infringement in domain names, it is recommended to set up a watch among gTLD and ccTLD domain names. If a domain name appears problematic, it’s also possible to carry out a specific watch. There is a whole range of watches available, and we can advise you on the ones best suited to your situation.
The online world evolves rapidly. Online protection teams must stay updated with technological developments and new platforms to ensure their strategy evolves with the market. Regular reviews are essential to avoid rights holders constantly playing catch-up with bad actors.
Adopting a proactive and strategic approach to online brand protection enables companies to defend against cybersquatters while strengthening their reputation and ensuring customer loyalty. At Dreyfus, we are committed to providing tailored solutions to meet these challenges and protect your brands in the ever-changing digital landscape.
As the legal framework continues to evolve, it’s essential to remain informed and adapt your brand strategy.
Dreyfus partners with an international network of Intellectual Property attorneys
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