Cybersquatting WIPO cases up in 2015
Amid the roll-out of hundreds of new generic Top-Level Domains (gTLDs) such as .GURU, .NINJA and .NYC, trademark owners filed 2754 cases under the Uniform Domain Name Dispute Resolution Policy (UDRP) with WIPO, the World Intellectual Property Organisation in 2015, an increase of 4.6 % over the previous year
Cybersquatting disputes relating to new gTLDs accounted for 10.5 % of WIPO’s UDRP caseload in 2015, which covered a total of 4364 domain names. Among these names, .XYZ, .CLUB and .EMAIL were the most common new gTLDs.
WIPO Director General Francis Gurry said: “As brand owners face the possibility of further abuse of their trademarks in domains – both old and new – they continue to rely on WIPO’s cybersquatting dispute resolution procedures. By combating opportunistic domain name registration practices, WIPO’s services help consumers to find authentic web content and enhance the reliability of the Domain Name System.”
Country code Top-Level Domains (ccTLDs) accounted for 13.7% of all filings with WIPO in 2015, with 71 national domain registries designating this WIPO dispute resolution service.
WIPO UDRP cases in 2015 involved parties from 113 countries. The U.S., with 847 cases filed, was the first-ranked WIPO filing country, followed by France (337), Germany (272), the U.K. (229) and Switzerland (169). Among the top five users, Germany (+48.6 %) saw the highest growth in cases filed.
The top three sectors of complainant activity were fashion (10 % of all cases), banking and finance (9 %), and Internet and IT (9 %). Hugo Boss leads the list of filers – 62 cases – followed by Philip Morris (60) and AB Electrolux (48). Sample of WIPO Domain Name Cases (2015) 313 WIPO panellists from 45 countries were appointed in 2015, and proceedings were administered in 15 different languages.
The increase in new gTLD registrations in WIPO’s caseload is anticipated to continue, in particular as new gTLDs contested at Internet Corporation for Assigned Names and Numbers (ICANN) auction, such as “.SHOP”, are yet to launch. Meanwhile, calls are being made for a next round of new gTLDs, particularly by brand owners, such as Twitter. At the same time, ICANN has commenced a process to review Rights Protection Mechanisms such as the URS (Uniform Rapid Suspension system) and the UDRP. As the UDRP initiator and leading administrator, WIPO takes a strong interest in these ICANN processes.
Since the WIPO Arbitration and Mediation Centre administered the first UDRP case in 1999, total WIPO case filings passed the 33000 mark in 2015, encompassing over 61000 domain names.
Intellectual Property Disputes
For intellectual property disputes more broadly, the WIPO Center has updated the WIPO Mediation Rules to facilitate submission of a dispute to mediation in cases where there is no prior mediation agreement between the parties. Effective as of January 1, 2016, these provisions may be particularly suitable for cases in which a court encourages mediation.
Also in 2015, the WIPO Centre published the WIPO Guide on Alternative Dispute Resolution Options for Intellectual Property Offices and Courts PDF, WIPO Guide on Alternative Dispute Resolution Options for Intellectual Property Offices and Courts. Informed by WIPO Centre experience in this area, this Guide provides a broad overview of ADR for intellectual property disputes and presents options for interested Intellectual Property Offices (IPOs), courts and other bodies (before which intellectual property disputes are adjudicated) to integrate ADR processes into their existing services.
In 2015, the United States Patent and Trademark Office (USPTO) included the WIPO Centre among listed ADR providers available at the option of parties to administer disputes before the Trademark Trial and Appeal Board (TTAB) and the Patent Trial and Appeal Board (PTAB).
WIPO Arbitration and Mediation Centre is based in Geneva, Switzerland, with an office in Singapore, the WIPO Arbitration and Mediation Center offers Alternative Dispute Resolution options for the resolution of international commercial disputes between private parties. The arbitration, mediation and expert determination procedures provided by the WIPO Centre are recognized as particularly appropriate for technology, entertainment and other disputes involving IP. The WIPO Center is also the global leader in the provision of domain name dispute resolution services under the WIPO-designed UDRP, receiving cases from trademark owners from around the world.