WIPO: Internet Domain Expansion Disruptive To Trademark Strategies

The UN World Intellectual Property Organization today announced its concern over the effect on trademark protection of the current launch of potentially hundreds of new internet domains by the Internet Corporation for Assigned Names and Numbers (ICANN).

“The unprecedented expansion of the Internet domain name space, until now dominated by .com and a handful of other generic top-level domains (gTLDs), is likely to disrupt existing strategies for trademark protection on the web,” WIPO said in a release.

“Trademark owners have been facing significant uncertainty in the expansion of the Domain Name System (DNS) while at the same time working with reduced protection budgets,” WIPO Director General Francis Gurry said in the release. “The proliferation of potential web addresses, with the expected roll-out of 1,400 new gTLDs, will force trademark owners to adjust their priorities in terms of registration and protection choices.”

“The exact nature of the impact we are unsure of at this stage but it is likely to be significant and disruptive,” Gurry said in a press briefing on 13 March. So far ICANN has approved more than 160 generic top-level domains (gTLDs). A gTLD is like .com.

The WIPO Arbitration and Mediation Center handles many cybersquatting cases under the Uniform Dispute Resolution Procedures (UDRP), and saw a significant increase in the number of domains involved in disputes last year (though the actual number of cases declined). The center also has been active in administering cases under the Legal Rights Objection (LRO) procedure aimed at protecting third party trademark rights, and issued a report on 69 cases in December.

On 11 February, WIPO received its first dispute case about one of the new top-level domains approved by ICANN (.bike, see case here). “This and other new gTLD cases now being filed with the WIPO Center will provide insight into how brand owners spend legal budgets in the new domains,” WIPO said in the release.

The WIPO announcement comes on the first day of the WIPO Committee on the Law of Trademarks (SCT), and also just days after the United States government announced it would step further back from its privileged oversight of ICANN.

WIPO also said the center conducted a review last year of the WIPO Mediation and (Expedited) Arbitration Rules (WIPO Rules) that provide a framework for resolving disputes, and updated rules will enter into effect on 1 June 2014.

“The update of the Rules serves the WIPO Center’s goal to provide economical and productive dispute resolution procedures,” Gurry said. “The latest provisions, for example on emergency relief and multiparty arbitration, ensure that the WIPO Rules respond to the evolution of technology, business, and legal conditions.”

Separately, WIPO said that in December the center made available “tailored model agreements that companies involved in the telecom industry may use to refer a dispute concerning the fair, reasonable and non-discriminatory (FRAND) terms to WIPO Mediation and (Expedited) Arbitration.”

“Aiming to facilitate cost- and time-effective FRAND adjudication, these model agreements were developed in consultation with patent law, standardization and arbitration experts from various jurisdictions, including some members and the Secretariat of the European Telecommunication Standards Institute (ETSI),” it said.

The release also cited the annual results of the center, for instance identifying that again retail, fashion, and banking and finance were the top three areas of complainant activity.