Allegations of cybersquatting by trademark holders continued to rise in 2008, with a record 2,329 complaints filed under the Uniform Domain Name Dispute Resolution Policy (UDRP), the dispute resolution procedure administered by the WIPO Arbitration and Mediation Center. This represented an 8% increase over 2007 in the number of generic and country code Top Level Domain (gTLDs and ccTLDs) disputes handled and brings the total number of WIPO cases filed under the UDRP since it was launched ten years ago to over 14,000.
The increasing number of cases filed with the Center is occurring at a time when the Internet Corporation for Assigned Names and Numbers (ICANN), responsible for managing the generic top level domain space (gTLD) is preparing to launch large numbers of new gTLDs. ICANN’s current expectation is to begin accepting applications by late 2009.
‘The creation of an unknowable and potentially vast number of new gTLDs raises significant issues for rights holders, as well as Internet users generally,’ said Mr. Francis Gurry, WIPO Director General. ‘Cybersquatting remains a serious issue for trademark holders. Supported especially by registrar and registry stakeholders, the sale and broad expansion of new top level domains in the open market, if not properly managed, will provide abundant opportunities for cybersquatters to seize old ground in new domains,’ said Mr. Gurry. In this regard, he recalled that one of the recommendations of the Report of the First WIPO Domain Name Process which also gave rise to the UDRP, was that any new gTLDs should be introduced and monitored in a controlled manner.
‘If ICANN’s considerations lead it to proceed with the broad introduction of new gTLDs, trademark owners as well as consumers will expect a careful framework to be put into place to address top level operators permitting or undertaking abusive registration practices. To this end, WIPO has been working with ICANN in the development of pre- and post-delegation procedures and standards for the new gTLDs, insofar as they relate to intellectual property,’ said Mr. Gurry, adding that ‘failure to implement such safeguards carries the risk of stakeholders in the Domain Name System becoming involved in protracted court litigation.’ The Director General stressed that this is not just an issue of protecting rights of trademark holders under existing law, but also of ‘the reliability of the addressing system of the Internet in matching interested parties with authentic subjects,’ noting that WIPO looks forward to continuing to assist ICANN and its stakeholders in the policy work in this regard.
WIPO Caseload
Since the launch of the UDRP in December 1999 through December 2008, the WIPO Center has received 14,663 UDRP or UDRP-based cases (gTLDs and ccTLDs), covering 26,262 separate domain names. Reflecting the truly global scope of this dispute mechanism, named parties to WIPO cases represented over 100 countries in 2008 alone. The United States of America (US), France, the United Kingdom (UK), Germany, Switzerland and Spain were the most frequent bases for complainants, while the US, the UK, China, Spain, Canada, and France were the most represented countries by named respondent party.
English remained the most common language for WIPO case proceedings (86%) in 2008, largely because the vast majority of domain names involved were registered with US-based registrars. Cases were also processed in 12 other languages, including (in order of frequency) Spanish, French, Dutch, German, Chinese, Korean, Japanese, Italian, Romanian, Russian, Hebrew and Portuguese. The character set of the disputed domain names themselves remained overwhelmingly ASCII (English alphabet), with a small number of names in Chinese, French, Hebrew, Spanish, and Swedish. The .com gTLD remained the solid leader in terms of the number of domain names included by complainants in cases filed with WIPO (79%).
In line with a global percentage increase in the share of ccTLD registrations in recent years, the WIPO Center saw the number of ccTLD domain names included in the filed cases jump from 1% in 2000 to 7% in 2007 to 13% in 2008. The number of ccTLD registries which have designated WIPO to provide domain name dispute resolution services rose to 56 with the addition of Bermuda (.bm), Montenegro (.me), the Commonwealth of the Northern Mariana Islands (.mp) and Sierra Leone (.sl). With the addition of Bolivia (.bo) in early 2009, the total number has grown to 57.
Case Outcomes
In 2008, almost 30% of all cases were settled without a panel decision. Of the remainder, 85% of the panel decisions favored the complainant, while 15% of the complaints were denied, leaving the names in the possession of the registration holder. Cases were handled by 285 WIPO panelists from 40 countries.
Main Sectors
In 2008 cases covered a wide variety of sectors, reflecting prevailing public interest, business activity and upcoming events (eg., Singapore Flyer observation wheel, Madrid 2016 Olympic bid, Montreal Jazz Festival, Golden Globes); transportation (eg., Air France, Austrian Airlines, BMW, Lufthansa, Southwest Airlines, Subaru); hotels (eg., Taj Hotels, InterContinental Hotels, The Sheraton/Westin Hotels); media and publishing (eg., the BBC, Edmonton Journal, National Geographic, Harvard University Press); educational institutions (eg., The John Hopkins University, Sydney University, Yale University, TOEFL); computers and electronics (eg., Research in Motion’s BlackBerry, computer manufacturer Gateway, Samsung); sports teams, leagues and personalities (eg., English Premier League, the Arsenal Football Club, as well as its player Cesc Fàbregas, yachting’s Volvo Ocean Race, former basketball star Dennis Rodman, Adidas); actors and personalities past (eg., Ian Fleming, Gene Kelly) and present (eg., Scarlett Johansson); fashion (eg., Christian Dior, Lancôme); popular culture (eg., Barbapapa, Bob the Builder, Marvel Comics’ Xmen); numerical identifiers (eg., 4711); and other familiar enterprises and groups such as Breitling, Canada Post, Coca-Cola, Ebay, Ghirardelli Chocolate, the International Organization for Standardization (ISO), Google, Hard Rock Café, LEGO, Nestlé, Ticketmaster, and Western Union. A case was also filed by the Thomas Jefferson Foundation in relation to the Monticello estate.
The top five sectors for complainant business activity were biotechnology and pharmaceuticals, banking and finance, Internet and IT, retail, and food, beverages and restaurants. As in 2007, pharmaceutical manufacturers remained the top filers due to numerous permutations of protected names registered for web sites offering or linking to online sales of medications.
For the full WIPO report, click here.
