Internet brand protection

Trademark ClearingHouse (TMCH)

Since autumn 2013 and for the next 3 years, ICANN plans to release more than 1,900 new “generic Top Level Domains” (gTLDs).

Excluding the new gTLDs registered by private companies and for internal use only (for example,. Audi -. Sony -. Ibm – etc …), many Internet Service Providers have registered generic Top Level Domains for the sole purpose of selling to the general public internet and respective second-level domains.

Many new gTLDs are extremely focused on typical contexts of online sales of multiple sectors such as clothing, .fashion, .shoes, .boutique, .buy, .sale, .site, .auction, .cheap, .bargains, .web, .online.. and many others (the list can be seen on ).

Therefore it will be  extremely easy for a counterfeiter/cybersquatter to register new websites with these new gTLDs abusing the famous brands of third parties (e.g.,, www., www., www., www. , etc.) – in order  to use them later as channels to convey illegal content (platforms, pay-per-click and/or real e-shop of counterfeit items).

In order to provide to the  holders of a trademark an instrument for protection to counter attack the imminent explosion of abuse of their IP titles, ICANN has come up with a dedicated  centralized system called Trademark Clearinghouse (TMCH).

Convey is an Agent authorized at the TMCH at the filing of applications of third parties and therefore it can act on the behalf of the Brand Owner with regards to activities necessary for the registration of trademarks in the new gTLDs.

See: Convey

Interventions of ‘web ecology and cleaning’

For the downstream output of the service “Internet brand intelligence” (IBI) – that generates strategic/operating reports on the presence of counterfeit trademarks and products (see: “Report on the counterfeiting of brand” ) Convey has developed a comprehensive range of concrete actions for “enforcement” in administrative/technical way (non-judicial ), able to solve at low cost and for a short period of time, specific issues of abuse/counterfeiting of the Brand on the web with an increase of complexity and intensity of function of the situations and needs: a real strategy of “cleansing” of the web.

The action plan includes actions of formal warning notice issued to the managers of the counterfeiter websites (cease & desist letters to registrant) or to the web service provider (cease & desist letters to registrar); application procedure – to the search engines – for de-indexation from their archives of contents that violate the Copyrights (under the DMCA – Digital Millennium Copyright Act); application procedures for obscuring of websites to prevent access to such counterfeit/illegal contents on the Italian territory (Measures AGCM – Authority guarantor of the competitions and the Market).

In parallel with the actions mentioned, Convey can activate specific alternative interventions of technical and computing nature, designed to worsen the ranking of counterfeit pages from the indexes of the search engines, identifying and eliminating the parasite links that the counterfeiters create by spamming and hijacking, hidden on websites of innocent third party operators (backward link crawling & deleting).

Enforcement of the trademark in the Domain Name (NaD)

When the trademark owner gets to know of abuses in the Domain Name (NaD), or a “Report on the counterfeiting of brand” produced by Convey brings out multiple infringements of trademark even in the “Domain Name” and the latter using specific TLD – Top Level Domains (for example the gTLDs including. com,. net. org,. info, etc..), such illegal uses should be countered by activating the appropriate administrative procedures of “enforcement” (the so-called UDRP – Uniform Domain-Name Dispute -Resolution Policy) addressed to specific international entities entrusted with the aim of ICANN (Internet Corporation for Assigned Names and Numbers) benefiting from the low cost and the short time of execution of these procedures.

In the presence of myriads of counterfeiting  websites, the service of enforcement on the NAD provided by Convey makes use of the relevant value added to the service “detection of clusters of websites counterfeiters” able to find and to demonstrate amongst the analyzed contents the presence of “pattern” i.e. of evidence/recurring elements, even the hidden ones.

In  the methodology of Convey, each “cluster” to fight with, hence becomes a “dossier” (administrative) of a UDRP procedure, with the advantages of reducing the costs, increasing the chances of success of the protection activities  and multiplying the deterrent effect on the counterfeiters.

Enforcement of the brand on platforms of e-Commerce

The large platforms of e-Commerce B2B and B2C (especially the Chinese and the Far East ones) are the engine of the global counterfeiting on the Internet, fuelling even the counterfeiting on the minor websites.

Based on the results of the Internet intelligence phase (see “Report on the counterfeiting of brand”) – that provides the precise, quantitative and economic enhancement of the existing insertions by product family and identifies counterfeitinsertions with higher sales volumes – Convey, on behalf of the Brand Owner, activates a systematic plan of administrative enforcement (non-judicial), using and relying on the administrative regulations adopted by the same e-Commerce Platforms with regards to the protection of Intellectual Property Rights (IPRs – Intellectual Property Rights).

The methodology of Convey involves the creation of a “complaint-dossier”, detailed about each type of counterfeit identified, the systematic transmission of these dossiers to the Platform in order to obtain from one side the de-listing of the counterfeit insertions, the closure of the e-shop offenders and on the other hand, the monitoring of the obedience of the regulations of IPRs by the same Platforms.

With the service of “enforcement of the brand on platforms of e-commerce” a precise reporting of all the activities performed and the productivity/efficiency of the enforcement  are also provided.

Contrast to the vulgarization of the brand

In the methodology of  Convey  , the  defense service of a brand from the danger of vulgarization on the Internet is based on the results of a specific analysis  activity developed with upstream solutions of “internet brand intelligence” in order to understand the existing situation and its peculiar “symptoms” (see “Analysis of popularization of trademark”).

On the basis of this monitoring, repeated systematically on all of  the main channels of the Network , a precise  action plan is defined aiming at communicating to all subjects interested in any way in the sign-term, the nature of its “brand”, its belonging to a specific owner, the need to quote it in combination with labels / logos that specify its  “status” of industrial property (e.g. logos ®, ™, “registered trademark”, etc..).

All the subjects identified by the monitoring (owners of websites, blogs, administrators, forum users, chat users, etc..) become the target of a specific and systematic communications, managed by Convey on behalf of the Brand Owner.

The reports produced on the different types of action to counter attack the vulgarization ​​and the actions of periodic inspection about the practical implications of such actions may constitute conclusive documentation about the behaviour of the owner of the trademark and its unequivocal willingness to make known and defend actively his industrial property rights, the way it is specifically required  by the law.