WIPO responds to significant cybersquatting activity in 2005 (news release)

Posted in: Domain Names at 29/01/2006 16:54

The World Intellectual Property Organization (WIPO) saw a 20% increase in the number of cybersquatting (abusive registration of trademarks as domain names) cases filed in 2005 as compared to 2004. In 2005, a total of 1,456 cybersquatting cases were filed with WIPO's Arbitration and Mediation Center. This increase represents the highest number of cybersquatting cases handled by the WIPO Center since 2001.

WIPO's Arbitration and Mediation Center has handled a total of over 8,350 disputes, involving parties from 127 countries and covering some 16,000 domain names since the Uniform Domain Name Dispute Resolution Policy (UDRP) - a quick and cost effective dispute resolution procedure - went into effect in December 1999. In another development in 2005, the Internet Corporation for Assigned Names and Numbers (ICANN) approved the creation of new generic top-level domains (gTLDs), such as .travel and .jobs, with a number of further domains awaiting introduction in 2006.

"Notwithstanding the unique effectiveness of the UDRP as a global remedy against cybersquatting, the fact that WIPO's caseload in 2005 was the highest in four years and that many of these cases concern recently registered domain names, underlines the need for continued vigilance by intellectual property owners," said Mr. Francis Gurry, Deputy Director General of WIPO who oversees the work of the Center. He further noted that, while WIPO's experience shows that UDRP disputes are heavily concentrated in the .com domain, attention must also be paid to the establishment of robust preventive mechanisms against abusive registration in new gTLDs. "If domain names are randomly attributed in new domains, intellectual property owners will be forced to compete with cybersquatters for their own trademarks - unless additional preventive safeguards are introduced," he added.

The UDRP's popularity stems from its cost-effectiveness, the predictability of the process and swift enforcement of the results. Frequent users of the UDRP include the entertainment industry, pharmaceutical companies, IT firms and a significant number of small-to-medium-sized businesses who favor the UDRP over traditional litigation, because they consider it to be a far quicker and cheaper way of protecting their trademark rights against cybersquatting. Many UDRP decisions involve high-value brands that fall prey to cybersquatters; cases handled by the WIPO Center have involved most of the 100 largest international brands by value. Numerous well-known individuals, including Madonna, Julia Roberts, Eminem, Pamela Anderson, J K Rowling, Morgan Freeman, Ronaldinho and Lance Armstrong have also used the Center's services.

The Center's online facilities and its ability to handle cases in different languages have allowed parties from all parts of the world to protect their rights under the UDRP. While most cases are filed by parties based in the United States of America or Europe (including, increasingly, in Eastern European countries), cases have also been filed in 2005 by parties from Antigua and Barbuda, Argentina, Bahamas, Barbados, Brazil, China, Honduras, Israel, Japan, Mexico, Morocco, Qatar, Senegal, South Africa, Tanzania, United Arab Emirates and Venezuela.

The UDRP, which was proposed by WIPO and has become accepted as an international standard for resolving domain name disputes, is designed specifically to discourage and resolve the abusive registration of trademarks as domain names. Under the UDRP, a complainant must demonstrate that the disputed domain is identical or confusingly similar to its trademark, that the respondent does not have a right or legitimate interest in the domain name and that the respondent registered and used the domain name in bad faith.

Disputes are decided by independent panelists drawn from the Center's list of 400 trademark specialists from over 50 countries. The domain name in question is frozen (suspended) during the proceedings. After carefully reviewing each case, panelists submit their decisions within a period of about 14 days. If a panelist's decision to transfer a domain name is not challenged in court within a period of ten days, the registrar is legally bound to implement the panelist's order.

All panel decisions are posted on the Center's web site. To facilitate access to the decisions, the Center also makes available an online legal Index, which is unique in the world and continues to rank among the most-viewed WIPO web pages. WIPO parties and panelists use this Index for their detailed jurisprudential research. To also offer them an overview of broad decision trends, the Center in 2005 created the new WIPO Overview of WIPO Panel Views on Selected UDRP Questions. The result of a review of the thousands of UDRP cases entrusted to the Center, the Overview is an important instrument to help maintain the consistency of WIPO UDRP jurisprudence. It identifies common and important substantive and procedural questions and the views expressed in WIPO panel decisions on those questions, with reference to decisions that may be considered representative of those views.

In addition to enhancing its domain name case facilities, the Center in 2005 also supported policy work relevant to the domain name system. Notably, it issued a report on "New Generic Top-Level Domains: Intellectual Property Considerations". This report responded to a request for expert advice received from ICANN, which has been in the process of approving the introduction of new gLTDs. Based on extensive analysis of the Center's experience in the processing of cases under different domain name dispute policies, the report lists specific registration and dispute resolution practices and models that should benefit the protection of intellectual property rights in the introduction and operation of new gTLDs. Specifically, the report recommends the introduction of a uniform preventive intellectual property protection mechanism in all new gTLDs, in order to complement the curative relief provided by the UDRP.

The WIPO Arbitration and Mediation Center was created in 1994 to offer dispute resolution procedures for all types of intellectual property disputes. In addition to domain name dispute resolution mechanisms, the Center offers arbitration and mediation procedures as an alternative to court litigation, for example for disputes involving patent, trademark or copyright licensing. Often, such disputes involve parties or decision-makers based in different locations. As part of its continuing efforts to help improve time and cost efficiency in intellectual property dispute resolution, the Center in 2005 launched a new tool, known as the WIPO Electronic Case Facility (WIPO ECAF). Parties may elect to use WIPO ECAF to manage disputes filed under the WIPO Mediation, Arbitration and Expedited Rules.

WIPO ECAF is a user-friendly and practical web-based tool that allows parties to conduct their case through the aid of an electronic facility. Through its secure online docket function, WIPO ECAF facilitates submission of case filings and enhances access by concerned parties to that submission. As an alternative to dispatching heavy packages to multiple locations, parties may submit communications - documents of hundreds of pages, recorded witness statements, etc. - electronically into a secure online docket. This prompts the dispatch of an email alert to all other actors involved in the case. Parties may view this docket at any time from any location through the Internet. The search function of the online docket facilitates access to case documents and allows easy organization of the documents chronologically or by party. WIPO ECAF also provides, at a glance, core case information - case summary, overview of timelines, including in particular upcoming deadlines, contact information for all parties, and the financial status of the case.

A Few Facts

* An average of 4 UDRP and UDRP-based cases were filed with WIPO per calendar day in 2005, bringing the total number of cases received in 2005 to 1,456 - an increase of 280 cases (almost 20%) as compared to 2004.
*

Of the total of 8,354 UDRP and UDRP-based cases the Center has received, 8,054 (96.41%) have been resolved. In the 6,349 decisions they have rendered, WIPO panels have found for the complainant in 5,327 (83.9%) cases. The remainder of the resolved cases were settled by the parties.
* WIPO's UDRP and UDRP-based cases filed since 1999 have by now covered some 16,000 separate domain names.
* In addition to famous corporate brands (2005 cases covered such names as , , and ), celebrities continued to be targeted by cybersquatters. In 2005, this again concerned in particular persons and entities involved in arts and entertainment (Antoine de Saint-Exupery, The Little Prince, Frank Gehry, Damien Hirst, Morgan Freeman, Abbey Road Studios, Larry King). Fashion brands involved in 2005 cases concerned such names as Ralph Lauren, Hugo Boss, Armani and Calvin Klein. Sports-related cases were filed by the Lance Armstrong Foundation, Juventus and the FA Premier League.
* Most disputes concern international domains, with .com again representing over 80% of names involved. However, in 2005 the Center also dealt with 44 cases involving country code top-level domains (ccTLDs). Examples have included the domain names , and . With the addition of three ccTLDs in 2005, the Center now provides services for disputes in 46 ccTLDs, such as .au (Australia), .ch (Switzerland), .co (Colombia), .fr (France), .mx (Mexico), and .tv (Tuvalu).
* The Center's services are multinational and multilingual. So far, parties to WIPO UDRP disputes have come from 127 different countries. The Center has managed proceedings in 12 languages, namely, Chinese, Dutch, English, French, German, Italian, Japanese, Korean, Norwegian, Portuguese, Russian and Spanish. Domain names themselves may also be presented in different scripts, such as Chinese, Cyrillic or Korean. The Center has handled 52 such "multilingual name" disputes so far, with further growth expected as the Internet becomes increasingly multilingual.
* All domain name decisions handled by the Center are fully indexed and published on the Center's web site (http://www.wipo.int/amc/en/domains/search); this legal Index rates among the most-viewed WIPO web pages. The new WIPO Overview of WIPO Panel Views on Selected UDRP Questions, which the Center has created to offer parties and panelists an overview of broad decision trends, is available at http://www.wipo.int/amc/en/domains/search/overview.
* The Center's new report, "New Generic Top-Level Domains: Intellectual Property Considerations", recommends the introduction of a uniform preventive intellectual property protection mechanism in all new gTLDs, in order to complement the curative relief provided by the UDRP. The Report is available at http://www.wipo.int/amc/en/domains/reports/newgtld-ip.
* Non-domain name activities of the Center:
- Model WIPO arbitration and mediation clauses can be downloaded from http://www.wipo.int/amc/en/arbitration/contract-clauses.
- The optional WIPO Electronic Case Facility (WIPO ECAF) introduced in 2005 may be viewed at http://www.wipo.int/amc/en/ecaf/introduction.jsp.
- The next Center training events: WIPO Workshop for Mediators in Intellectual Property Disputes on June 15 and 16, 2006; WIPO Advanced Workshop for Mediators in Intellectual Property Disputes on June 19 and 20, 2006. Program information and registration at http://www.wipo.int/amc/en/events.

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