What is intellectual property and how is it protected?

Your trademark has been copied by a malicious party on the internet - what do you do? Like most people, you probably turned to Google only to find yourself in a proverbial rabbit warren of acronyms, procedures and 3-part tests, leaving you feeling overwhelmed and confused. In this article we’ll provide a summary of all the most commonly found terms and procedures associated with trademark and copyright infringements, as well as provide a basic understanding of what is intellectual property.

If you’re reading this and are wondering how to even determine whether a copyright or trademark infringement has occurred, take a look at one of our previous blogs to help you distinguish between a copyright and trademark infringement.

 *PhishFort is not a law firm and does not purport to offer legal advice of any kind. The content in this article is for information purposes only. Please seek legal counsel if you are uncertain about protecting and enforcing any trademarks and/or copyrights relating to you*

TL;DR

  • Intellectual property refers to creations of the mind.
  • Intellectual property is protected by patents, trademarks and copyrights. It’s up to you whether you want to formally register these.
  • ICANN is the Internet Corporation for Assigned Names and Numbers. ICANN coordinates the global use of internet addresses.
  • WIPO is the World Intellectual Property Organization. WIPO is the global watchdog for intellectual property.
  • UDRP is the Uniform Domain Name Dispute Resolution Policy. It’s an alternative to court proceedings for trademark owners.
  • URS stands for Uniform Rapid Suspension. Like the UDRP, it’s an alternative dispute resolution process for trademark owners. It’s quicker than the UDRP but more complex. 
  • If you need content which is infringing on your copyright or trademark taken down, contact the PhishFort team for assistance. 

What is intellectual property?

Before we delve into the intricacies of ICANN, WIPO and all their acronym friends, you may be asking yourself: “But what is intellectual property?” 

Intellectual property refers to creations of the mind. This includes inventions, literary works, blogs, art, and designs as well as names, logos, or symbols used commercially. Intellectual Property is legally protected, the most commonly known protection tools are patents, copyrights and trademarks. Patents, copyrights and trademarks are the means by which creators, inventors, writers etc. earn recognition or financial benefit for their mind’s creations. The recognition and protection of intellectual property balances the interests of innovators and the public at large, allowing innovation and creativity to be fostered.

But do you need to register your copyright, trademark or patent to have your wonderful idea or brilliant work recognised and protected? The short answer: it depends.  

Whilst registering your intellectual property is the most sure way of publicly recognising your creation, invention, or brand identifier, it is not always necessary. The most beneficial reason for registering intellectual property is for clarity in a dispute. Owning the registration to your creations publicly announces that you are the original creator or owner of the works.That said, in most jurisdictions, trademarks and copyrights are recognised and protected upon creation. This means that without going through the process of registering a trademark or copyright, your work is still legally protected from copycats - you may just need to do a bit extra to prove that you created the original. We’ve put together some helpful tips on protecting copyrights and trademarks which include measures other than registration. 

Registering your intellectual property is a commercial decision. For example, had Coca-Cola opted to register a patent over their secret recipe they would’ve been choosing to make their signature ingredients public knowledge, opening themselves up to a sleuth of copycat competing (and, dare I say, better) sodas. On the other hand, registering a trademark over the names “Coca-Cola” and “Coke” as well as a trademark over the signature Coca-Cola bottle shape makes more commercial sense to the Coca-Cola company because it reinforces the Coca-Cola brand and deters copycats from confusing people into buying their lesser, cola alternative. 

Whether you register your intellectual property or not, in the age of technology and the internet someone may still find a way to copy your creations. What should you do then? This is where ICANN, WIPO and their friends UDRP and URS come in. 

Who is ICANN?

ICANN stands for the Internet Corporation for Assigned Names and Numbers. ICANN was established in 1998 with the vision of creating "one world, one Internet”. ICANN operates to ensure the global coordination of the unique identifiers found in internet addresses.

What is a unique identifier? When reaching another person over the Internet, you need to provide an address otherwise your computer might not find the other computer you’re attempting to reach. This address is a unique or specific name or number - the unique identifier. 

But, how does ICANN work?

ICANN provides technical operations for the Internet’s address book called the Domain Name System (DNS). ICANN also defines the policies for how the unique identifiers or names and numbers or the Internet should run. ICANN follows three models when creating policy: Bottom up; Consensus Driven; and Multistakeholder. We won’t go into the details of these models here but if the nerd in you is eager to know more about them, check out the ICANN website for more information.

Now that you have a basic understanding of ICANN, let’s introduce you to WIPO. 

What is WIPO?

WIPO is the World Intellectual Property Organization, a self-funded agency of the United Nations. WIPO was established in 1967 with the mission “to lead the development of a balanced and effective international IP system that enables innovation and creativity for the benefit of all”. With 193 member states, WIPO is the global forum for Intellectual Property information, services, policy and cooperation. 

So what purpose does WIPO serve? WIPO has two main objectives: (1) the global promotion of intellectual property protection; and (2) the administrative cooperation among the WIPO established intellectual property Unions. WIPO undertakes a number of activities in attaining these objectives, namely: 

  1. the establishment of global norms and standards for the enforcement and protection of intellectual property property rights - this is done through the implementation and maintenance of international treaties;
  2. providing legal and technical assistance to member states on intellectual property matters;
  3. the creation of international classification and standardization of intellectual property documentation through the cooperation of member states’ industrial property offices; and
  4. Registration and filing of international applications for invention patents, registration of marks, and industrial designs. 

WIPO is essentially the watchdog of all things intellectual property in the world. WIPO ensures that intellectual property rights are globally recognized and protected by coordinating with member states on policy, regulation, registration and filing for intellectual property. 

WIPO is also a service provider for the most efficient domain name dispute resolution process: the UDRP.

What is UDRP?

UDRP is the Uniform Domain Name Dispute Resolution Policy. As the name suggests, the UDRP is used by trademark owners to resolve a dispute over a domain name infringing on their trademark rights. The UDRP was adopted by ICANN in 1999 to provide trademark owners a quick and relatively inexpensive mechanism to resolve a trademark dispute. The UDRP is possibly the most useful tool available to trademark owners so we’re going to spend some time fleshing it out in more detail.

What are the Elements of a UDRP Complaint?

The UDRP consists of a three part test. When filing a UDRP complaint, the trademark owner or complainant must prove each of the elements in the test. These are:

  1. The infringing domain is identical or confusingly similar to the trademark which the trademark owner has rights.
  2. The registrant of the infringing domain does not have any rights or legitimate interest in the trademark name.
  3. The infringing domain was registered and is being used in bad faith. 

The trademark owner must prove each of the above elements for their complaint to be successful. Once a trademark owner has compiled and submitted its UDRP complaint, the infringing domain registrant has an opportunity to respond. But this opportunity is only available for 20 days from receipt of the complaint.  

Once the 20 day period has expired, the UDRP service provider will appoint a panel to adjudicate the complaint. The decision making process normally takes about 14 days after the panel has been appointed. Although this period may be extended in exceptional circumstances. 

If the panel finds in favour of the trademark owner, the infringing domain is then transferred to the trademark owner for their use. 

Who can file a UDRP complaint?

In order to file a UDRP complaint you must be the holder of the trademark under dispute and be able to prove all three elements in the test. 

Another question you may be asking is: do I need an attorney or legal practitioner to file a UDRP complaint? In short, no. Any trademark owner can complete the UDRP complaint form on the ICANN website. There are many resources available to explain how to do this. For example, have a look at the WIPO guidelines explaining the ins and outs of filing a complaint. However, if you make an error in your submission it may become costly and time-consuming to amend your complaint. An attorney with experience in filing UDRP complaints will be able to help you craft a winning complaint submission from the start.

Where do you file a UDRP complaint?

It’s important to note that whilst ICANN has adopted the UDRP, a UDRP complaint is not filed directly to ICANN. A UDRP complaint must be filed with any of the approved UDRP service providers. There are currently 6 recognised UDRP service providers. These are:

  1. WIPO
  2. The Forum
  3. Czech Arbitration Court (CAC)
  4. Asian Domain Name Dispute Resolution Centre (ADNDRC
  5. Arab Centre for Dispute Resolution (ACDR)
  6. Canadian International Internet Dispute Resolution Centre (CIIDRC)

When choosing a service provider a complainant is not bound by jurisdiction. In other words, you can choose the service provider you like best regardless of where your trademark is registered or where the infringing domain is being hosted. A UDRP decision can not be repealed or re-filed with a different service provider so it’s important you’re comfortable that the service provider is the right one to hear your complaint. 

Some things to consider when choosing a service provider are;

  1. The fees
  2. Who’s on their roster of panelists
  3. Previous decisions of the provider
  4. Advice from your attorney (if you’re using one)

How much does a UDRP complaint cost?

The UDRP process is cheaper and quicker than taking your complaint through a traditional court process, however, there are still costs to consider. There are 2 costs to consider before filing your UDRP complaint: (1) filing fee; and (2) legal fee. 

The filing fee is determined by and paid directly to the UDRP service provider you choose to use. At the date of this article, the service provider fees range from USD 1000 to USD 1500. The fee may be increased depending on the number of domains being included in the complaint as well as the number of panelists required to determine the complaint. Usually only 1 panel member is appointed but if the complaint involves many domains and/or is particularly complex, up to 3 panelists may be appointed.

If you choose to use a legal practitioner to file your complaint the legal practitioner will charge you their own fee which is normally charged on either an hourly rate or on a fixed fee. Be sure to discuss these fees with the legal practitioner upfront to make sure you understand exactly how much you’ll be expected to pay. 

It’s important to note that, unlike a court proceeding, there is no monetary award paid to a trademark owner for a successful complaint. The only remedy available to a trademark owner is the transfer of ownership of the domain name. 

What is URS?

The URS is a separate process to the UDRP. The Uniform Rapid Suspension (URS) was introduced by ICANN in 2013 as a supposedly simpler way for trademark owners to deal with new gTLDs. The URS uses the same 3 part test as UDRP but the decision of the panel is much quicker (provided within 3 business days) and legal fees tend to be much lower. However, the URS process has been described as far more complicated and not necessarily what trademark owners will want to use. 

For example, the URS may not be applied to common law or unregistered trademarks. Trademark owners must show a national trademark registration or a court confirmation of their trademark. What’s more, the remedy available to trademark owners under the URS is a suspension of the infringing domain for only 1 year. 

Needless to say that since its introduction, the URS has been an under-utilized dispute resolution process and most aggrieved trademark owners opt for the UDRP.

Takedowns 

Having your work copied can be very distressing, but unfortunately it is very common. If your trademark or copyright has been infringed contact the PhishFort team to help have the content removed. Our team will conduct a thorough investigation into your complaint and provide hands-on support throughout the takedown process. If we can’t get the content removed, you’ll receive a 100% money-back. 


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