WIPO Sees Decrease In Cybersquatting Complaints, Warns Of Domain Name Expansion

The expansion of internet domain names as proposed is worrying to trademark owners as a significant number cybersquatting cases continue to be filed in the World Intellectual Property Organization dispute resolution system, WIPO said this week. Meanwhile internet intermediaries should play a bigger role in the fight against trademark infringement, WIPO officials said.

Complaints filed with the Uniform Domain Name Dispute Resolution Policy (UDRP) in 2009 decreased by 9.5 percent compared to the previous year. WIPO is the recipient of over half of global internet domain dispute cases, it said.

However, complaints filed at WIPO in 2009, though down, covered “the highest number of individual domain names in a given year,” as opposed to collective filings, WIPO Director General Francis Gurry said during an 18 March press conference at the United Nations.

The decrease has been brought by a diminution in enforcement budgets following the global economic crisis, according to Gurry.

The UDRP was proposed by WIPO in 1999 and was designed to address the abusive registration of domain names, known as cybersquatting.

In 2009, 2,107 cases were brought to the WIPO UDRP, compared to 2,329 cases in 2008. Those complaints concerned 4,688 domain names, compared to 3,958 in 2008, according to a WIPO press release. This is a fraction of the estimated 180 million domains in the world, WIPO said. The vast majority of disputed domain names are under the .com top-level domain, it said.

New Generic Top-Level Domains a Threat to IP Rights?

The Internet Corporation for Assigned Names and Numbers (ICANN), the technical coordination body for the internet domain name system, is planning a significant expansion of the domain name system. WIPO said “the associated potential for trademark abuse is a serious concern for brand owners and users.”

To address concerns about preventing intellectual property rights infringers online, WIPO proposed a “pre-delegation” procedure so that trademark owners can seek to protect their rights before ICANN approves a new domain. This procedure is included in the ICANN’s top-level domain draft applicant guidebook.

WIPO: Raise Responsibility of Intermediaries

WIPO also proposed a “post-delegation” procedure that would give trademark owners a method for addressing concerns after a new domain is awarded (IPW, WIPO, 16 March 2009). This procedure is also included in ICANN’s draft applicant guidebook, but with significant amendments which WIPO believes require further discussion in order for the mechanism to have its intended effect, according to Erik Wilbers, director of the WIPO Arbitration and Mediation Centre, who spoke at the press conference and afterward to Intellectual Property Watch.

WIPO believes that intermediaries, in particular domain name registries, should hold more responsibility in cases of cybersquatting, as it is important to go to the “root of the problem,” Wilbers said.

The post-delegation procedure introduced by WIPO provides a “means for brand owners to file an objection against a domain registry whose operation or use of an ICANN-approved new domain is alleged to cause or materially contribute to trademark abuse,” according to the press release.

In WIPO’s proposal, intermediaries should be able to benefit from “safe harbours.” The proposed WIPO mechanism would go beyond the current ICANN proposal – where intermediaries are only liable when they themselves are in effect cybersquatters – also include instances of wilful blindness on the part of the intermediaries, said Wilbers.

Statistics on UDRP Filings

The main complainant country filings over the last 10 years came from the US (42.41 percent), followed by 12 European countries, including France (10.94 percent), United Kingdom (7.51 percent), Germany (5.77 percent), and Switzerland (5.13 percent). Far behind stand India (1.01 percent) and Brazil (0.94 percent).

The main respondent countries, in the same period, were the US (38.45 percent), the UK (8.40 percent), China (5.53 percent), Canada (4.62 percent), and Spain (4.50 percent).

The main areas of WIPO domain name complainant activity, in 2009, biotechnology and pharmaceuticals (9.52 percent), banking and finance (9.30 percent), internet and IT (8.55 percent), retail (8.51 percent), and food, beverages and restaurants (7.08 percent).

In 2009, the Inter-Continental Hotel Group filed “the largest UDRP dispute on record, involving 1,542 domain names in a single WIPO case,” according to the release. Ironically, there is an Inter-Continental Hotel directly facing WIPO headquarters in Geneva.

The UDRP allows the “straightforward enforcement of panel decisions, without need for further judicial intervention,” according to the release.

One limitation of the UDRP procedure is that it does not provide for monetary penalties. Currently the system allows for the cancellation of registration or the transfer of registration without damages. Damages can only be sought in front of a court, said Gurry.

Regarding its earlier discussions of practical options to streamline the efficiency of UDRP case processes, WIPO, within the existing UDRP framework, expects to come out with some practical adjustments that would likely involve fee levels and word limits, Wilbers said.

[Editor’s Note: this story was corrected and updated at 13:40 and 15:10 on 23 March.]