WIPO Reports On Domain Name Disputes, Sets New Targets

The World Intellectual Property Organization has seen increased activity in its work on arbitration and mediation of disputes, including domain names, and has proposed new targets for the coming biennium.

On 8 October, the WIPO General Assembly took note, without discussion, of the secretariat’s update on the WIPO Arbitration and Mediation Center, including domain names. The 55^th Meeting of the General Assembly is taking place from 5-14 October.

Uniform Dispute Resolution Procedure (UDRP)

According to the Director General’s (DG) Annual Report for 2015 [pdf], WIPO administered the first Uniform Domain Name Dispute Resolution Policy (UDRP) case in 1999 and since then the total number of cases filed has exceeded 32,000, encompassing 60,000 domain names.

The UDRP is limited to “clear cases of bad-faith, abusive registration and use of domain names and has proven highly popular among trademark owners,” according to the document prepared by the secretariat on WIPO Arbitration and Mediation Center, Including Domain Names [pdf].

The DG’s annual report establishes that between 1 January and 30 September 2014 1,940 UDRP cases were filed. 2015 has seen an increase of 3.9 percent of the number of cases filed: between 1 January to 30 September 2015, some 2,015 UDRP cases were filed.

The cases in 2014 were decided by 297 WIPO panellists coming from 43 countries, with 16 different languages of proceedings.

The total number of WIPO cybersquatting case filings in 2014 increased by 2 percent with 2,634 cases being lodged by trademarks owners claiming abuse of their mark.

All WIPO UDRP panel decisions are posted on the Arbitration and Mediation Center website.

WIPO UDRP cases in 2014 involved parties from 108 countries. According to the update by the secretariat, a “diverse mixture of enterprises, institutions and individuals used the Center’s dispute resolution procedures in 2014.”

The top industries filing UDRP cases in 2014 were the retail (17%), banking (11%), and fashion industries. The filings related to fashion and luxury brands (10.3%) include those by right owners alleging counterfeiting via the webpages offered under the disputed domain name.

The secretariat document also contains reports on arbitration and mediation in a range of other areas, such as trademarks, patents, research and development, franchising, trade shows, and copyright.

New Targets

The WIPO Proposed Program and Budget for the 2016/17 Biennium [pdf] (see Program 7, p. 62) sets out the aim of increasing the number of IP disputes being resolved through WIPO mediation, arbitration and other dispute resolution methods by adding an additional 40 disputes and “bons offices.” It also aims to increase the number of participants at events involving Center representation from 4,000 in 2012/13 to 6,000.

Moreover, the proposed budget states that the Arbitration and Mediation Center will continue to enhance awareness among stakeholder of IP ADR options and increase the attractiveness of dispute resolution services by adapting the Center’s “procedures and case infrastructure to the evolving needs of users, including through IT-based solutions” with an aim of increasing “user-friendliness.”

CCTLDs and New GTLDs

According to the proposed program and budget for 2016/17, the domain name system landscape is “undergoing considerable change” due to the expansion of the number of generic top-level domains (gTLDs) and the introduction of internationalised (non-Latin script) gTLDs and domain names.

With the growing number of registrations of newly introduced gTLDs, more UDRP cases have been triggered. Nearly 800 of the new gTLDs introduced by the Internet Corporation for Assigned Names and Numbers (ICANN) are operational, and cases involving these domains represent 14 percent of WIPO’s 2015 caseload as of 30 September 2015.

Meanwhile, country-code top-level domains (ccTLDs) – such as .ch for Switzerland – accounted for 13 percent of all filings in 2014 with 71 national domain registries now designating this WIPO service.

The secretariat document states that the Arbitration and Mediation Center “currently provides domain name dispute resolution services to 71 ccTLD registries, most recently including the domain space .gq (Equatorial Guinea).”

The proposed program and budget for 2016/17 proposes a slight increase to the overall resources for the program in 2016/17 as compared to 2014/15 budget: from CHF 11.221 million in 2014/15 to CHF 11.358 million in 2016/17. This is attributed to the “enhanced emphasis on developing the use of alternative dispute resolution options in response to member states requests.”