Cybersquatting Cases Continue to Mount

Cybersquatting—the practice of registering or using a domain name to profit from the goodwill of someone else’s trademark—continues to cause problems for companies around the world. According to a recent report from the World Intellectual Property Organization (WIPO), its Arbitration and Mediation Center received a record number of cybersquatting cases in 2012.

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WIPO is authorized to resolve complaints under the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP requires that most trademark-based domain-name disputes be resolved by agreement, court action, or arbitration before a domain name is suspended, cancelled, or transferred. Trademark holders can pursue expedited administrative proceedings in cybersquatting cases by filing a complaint with an approved dispute-resolution service provider like WIPO.

Based on WIPO’s data, a record number of trademark holders took advantage of these proceedings in 2012. In total, trademark holders filed 2,884 cybersquatting cases covering 5,084 Internet domain names with the WIPO Center. This represents an uptick of 4.5 percent over 2011’s record levels.

Below are several other findings of note from WIPO’s cybersquatting cases:

  • Cases include complainants and respondents from 120 countries, ten countries more than the 2011 WIPO caseload.
  • Among WIPO cases in 2012, country-code top-level domains (ccTLDs) accounted for almost 12 percent of filings, with 67 national domain registries now connected to WIPO domain name dispute resolution services.
  • The top three areas of complainant activity in 2012 were retail, fashion and banking and finance. The caseload featured many well-known names from business as well as public interest sectors.
  • Of the generic top-level domain (gTLD) cases filed with WIPO in 2012, three quarters (74.8%) concerned registrations in the .com domain.
  • The increased filings related to fashion and luxury brands reflect in part a growth in the number of cases filed by brand owners alleging counterfeiting via the web pages offered under the disputed domain name.
  • Parties settled around one out of five WIPO cases before reaching panel decision.
  • Applying UDRP jurisprudence, WIPO panels in 2012 found evidence of cybersquatting in 91 percent of all decided cases.

As we discussed last week, cybersquatting cases are only expected to increase with the introduction of new gTLDs in the coming months. Therefore, trademark holders should consider reviewing their procedures for detecting and enforcing trademark abuse online.

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Cybersquatting Cases Continue to Mount

Cybersquatting—the practice of registering or using a domain name to profit from the goodwill of someone else’s trademark—continues to cause problems for companies around the world. According to a recent report from the World Intellectual Property Organization (WIPO), its Arbitration and Mediation Center received a record number of cybersquatting cases in 2012.

WIPO is authorized to resolve complaints under the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP requires that most trademark-based domain-name disputes be resolved by agreement, court action, or arbitration before a domain name is suspended, cancelled, or transferred. Trademark holders can pursue expedited administrative proceedings in cybersquatting cases by filing a complaint with an approved dispute-resolution service provider like WIPO.

Based on WIPO’s data, a record number of trademark holders took advantage of these proceedings in 2012. In total, trademark holders filed 2,884 cybersquatting cases covering 5,084 Internet domain names with the WIPO Center. This represents an uptick of 4.5 percent over 2011’s record levels.

Below are several other findings of note from WIPO’s cybersquatting cases:

  • Cases include complainants and respondents from 120 countries, ten countries more than the 2011 WIPO caseload.
  • Among WIPO cases in 2012, country-code top-level domains (ccTLDs) accounted for almost 12 percent of filings, with 67 national domain registries now connected to WIPO domain name dispute resolution services.
  • The top three areas of complainant activity in 2012 were retail, fashion and banking and finance. The caseload featured many well-known names from business as well as public interest sectors.
  • Of the generic top-level domain (gTLD) cases filed with WIPO in 2012, three quarters (74.8%) concerned registrations in the .com domain.
  • The increased filings related to fashion and luxury brands reflect in part a growth in the number of cases filed by brand owners alleging counterfeiting via the web pages offered under the disputed domain name.
  • Parties settled around one out of five WIPO cases before reaching panel decision.
  • Applying UDRP jurisprudence, WIPO panels in 2012 found evidence of cybersquatting in 91 percent of all decided cases.

How Can I Help?

Cybersquatting cases are only expected to increase with the introduction of new gTLDs in the coming months. So if you are a trademark holder you should consider reviewing your procedures for detecting and enforcing trademark abuse online. If you, need help with this, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

ADR an Attractive Alternative For IP Disputes.

A recent survey by the World Intellectual Property Organization (WIPO) shows that IP rights holders are increasingly concerned about the high costs of disputes. As a result, they are increasingly looking to alternative dispute resolution (ADR).

The survey examined the practices and motivation of almost 400 survey respondents from over 60 countries, and assessed their current use of ADR to resolve technology-related disputes.

According to the WIPO, respondents hailed from all across the globe (Europe, North America, Asia, South America, Oceania, the Caribbean and Central America, and Africa, in order of number of responses received) and worked for a number of different entities, including law firms, corporations, research organizations and universities, and government bodies.
Below are some of the more notable findings from the survey:
•    Costs: Respondents incurred significantly higher costs in court litigation than in arbitration and mediation. The legal costs of court litigation in home jurisdictions amounted on average to USD 475,000, and the legal costs of foreign court litigation to slightly over USD 850,000. Meanwhile, 91 percent of respondents stated that costs of mediation typically did not exceed USD 100,000. Arbitration cost on average just over USD 400,000.
•    Time: Court litigation in home jurisdictions also took longer, taking approximately three years. Arbitration took on average slightly more than one year and mediation was typically concluded within eight months.
•    Frequency: More than 90 percent of respondents executed agreements with parties from other jurisdictions, with more than a quarter indicating that some 60 percent of their agreements involved parties from other jurisdictions. In the area of patents, 80 percent of respondents concluded agreements involving parties from other jurisdictions concerning technology patented in at least two countries.
•    Priorities: Respondents identified costs, followed, in close connection, by time, as their number one priority when negotiating a dispute process. Enforceability ranked as a further consideration among users of court litigation and arbitration clauses. Factors following at some distance included quality of outcome, neutral forum, confidentiality, and desire for a business solution.

How Can I Help?

My firm’s ADR group provides independent neutrals for mediation, arbitration, early neutral evaluation (ENE) and other ADR proceedings, as well as represent clients in such proceedings. To learn more, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Patent Law Treaty Legislation

President Obama signed the Patent Law Treaties Implementation Act.  The Act amends federal patent law to implement the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs and the Patent Law Treaty. It will take effect one year from the date of enactment.

Under the Hague Treaty, any person who is a U.S. national, or has a domicile, habitual residence, or real and effective industrial or commercial establishment in the United States, can file an international design application for international registration with the U.S. Patent and Trademark Office (USPTO).

This is good news for design patent applicants because it will allow them to file a single application with USPTO instead of separate applications in multiple countries, thereby reducing the time and expense. The Hague Treaty will also increase the term of design patents from fourteen years to fifteen years from grant.

The Patent Law Treaty aims to harmonize and streamline formal procedures for patent applications and patents among signatory countries. Thus, the Act revises U.S. patent application procedures with respect to filing dates, fees, and surcharges for fees, oaths, or declarations and claims submitted after the filing date to bring them in line with international norms.

The most significant change for U.S. applicants is that utility application will now be given a filing date even when submitted without claims. The Act also authorizes the USPTO to establish procedures to revive an unintentionally abandoned patent application and accept an unintentionally delayed claim for priority.

How Can I Help?

The new treaty will offer another tool for protecting our clients’ intellectual property in foreign countries. For more information about all of the other options available to you or your business, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

 

How do I protect my idea outside the United States?

A patent filed in the United State only protects your invention here.  The patent rights granted to you can be used to stop the making, using, selling or importation of infringing products in the US.  However, if your US-patented invention is made abroad and only sold abroad, the US patent owner may not have any recourse against the infringer.

Additionally, you have to seek protection country by country.  There is no such thing as a world wide patent.  So, the decision to seek patent protection in other countries can be a tough one.

The major drawback that people encounter when exploring foreign patent protection is a limited budget.  Seeking foreign patent protection can be  very expensive.  There are many different filing fees, translation costs, annuities, and legal fees for both your US and foreign patent attorneys.

Above  is the basic timeline for filing foreign patent protection.  This is if you use the Patent Cooperation Treaty (PCT) path.  If you desire, you can just file in the individual countries, but that must be done within 12 months of filing any application, including a provisional application.

How Can I Help?

There are many factors to consider when deciding which path to take in protecting your invention overseas.

If you, or someone you know, is looking to protect your idea abroad, I can help you determine which path to protection is best for you including costs, convenience, and deadlines.  To protect your valuable patent rights; please contact me for a free 30 minute consultation by sending me an email or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities.  Connect with me on Google +

Norman