Record Cybersquatting Cases As WIPO Seeks New Trademark Protections

A record number of cybersquatting complaints were filed at the World Intellectual Property Organization in 2008, and the organisation is preparing for a potentially much larger set of concerns as the launch of an unknown number of new domains approaches.

WIPO is one of the locations complaints about rights over internet domain names may be filed. The Internet Corporation for Assigned Names and Numbers (ICANN), the internet technical coordinating body, is working to open the internet broadly to new domains by late 2009. WIPO has made proposals to ICANN’s comment process for ways to minimise the impact on trademark owners of the new domain launch.

ICANN’s decision to open the internet is a “watershed moment in the development of the domain name system and is of genuine concern for trademark holders,” WIPO said in a release. Rights holders have been asked by ICANN to come up with suggestions on how to address their concerns (IPW, Information and Communications Technology, 12 March, 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 WIPO Director General Francis Gurry. The broad expansion of domains in the open market could provide “abundant opportunities for cybersquatters to seize old ground in new domains.” Gurry told reporters at a press conference last week that there is “potential for strife,” and that it could become a “nearly unmanageable task” for trademark owners to monitor and protect their brands online.

WIPO has proposed a “pre-delegation” procedure to allow trademark owners to protect their rights before a new top-level domain is introduced. The pre-delegation procedure was included in ICANN’s draft guidebook for applicants for new domains, and is being further finalised by WIPO.

Now, WIPO also has proposed a “post-delegation” procedure for ICANN’s consideration. It would offer trademark owners a method for addressing concerns after award of a domain, and if concerns arise with the operator of a registry for certain domains. The WIPO proposal also contains expedited take-down measures.

WIPO’s proposal was discussed at the early March ICANN meeting in Mexico City, and will be discussed further before the next ICANN meeting in Sydney in June, WIPO officials said. “It is our hope that ICANN will somewhat get behind this,” Gurry told reporters.

WIPO set out its proposals in a 13 March letter to ICANN, available here.

WIPO saw a record 2,329 complaints filed in 2008, an 8 percent increase over the previous year. Complaints at WIPO are filed under the Uniform Name Dispute Resolution Policy (UDRP), which is administered by the WIPO Arbitration and Mediation Centre. The centre handles cases involving generic top-level domains (gTLDS), such as .com, and country code top-level domains, such as .fr for France.

[Update: the National Arbitration Forum, another ICANN-approved dispute resolution body based in Minneapolis, Minnesota, reported that it handled 1,770 domain name disputes in 2008.]

To handle the increase in cases WIPO proposed in December a “eUDRP initiative” that would make the UDRP process paperless and electronic. Gurry said he hoped the idea is receiving favourable consideration by ICANN.

The top areas for complaints in 2008 were biotechnology and pharmaceuticals, followed by banking and finance. Drugmakers are most active in fighting online sales of medications.

From the UDRP’s inception through 2008, almost 44 percent of complainants in dispute cases filed were from the United States, and about 40 percent of the respondents also were in the United States. Nearly 80 percent of cases in 2008 involved the .com domain. Almost 30 percent of cases filed at WIPO were settled without a panel decision. Of the remainder, 85 percent of decisions were in favour of the complainant, WIPO said.

The number of ccTLD cases filed jumped from one percent of the total in 2000 to 7 percent in 2007 to 13 percent in 2008, as more ccTLD registries are brought into the system.

WIPO’s Arbitration and Mediation Centre will hold a conference in Geneva on 12 October, 2009 looking back at the first 10 years of the UDRP and ahead to the future.