Brands Tackle Cybersquatters

by Ulrika Lomas, for LawAndTax-News.com, Brussels

23 March 2010

Demand for the World Intellectual Property Organization's (WIPO’s) dispute resolution services, in particular relating to cybersquatting cases, continued in 2009 with trademark holders filing 2,107 complaints under procedures based on the Uniform Domain Name Dispute Resolution Policy (UDRP).

While this caseload represents a 9.5% decrease over 2008, it covers the highest number of individual domain names in a given year (4,688) since the UDRP was launched ten years ago.

Since the UDRP’s launch in December 1999, the WIPO Arbitration and Mediation Center has received more than 17,000 UDRP-based cases. A total of some 31,000 domain names covering both generic and country code Top Level Domains (gTLDs and ccTLDs) have been handled by WIPO.

The UDRP has become accepted as an international standard for resolving domain name disputes outside traditional courts. Proposed by WIPO in 1999, it is designed specifically to discourage and resolve the abusive registration of trademarks as domain names, commonly known as cybersquatting.

Commenting on the success of the UDRP, WIPO Director General Francis Gurry said: “The UDRP has proven to be a pioneering and globally applicable low-cost alternative to court litigation. It offers a practical solution to the abusive registration of trademarks as domain names, a very real issue where the practical effect, legal status and desired outcome are normally not confined to any particular location."

Gurry added that: “Another key element of the UDRP’s popularity is the straightforward enforcement of panel decisions, without need for further judicial intervention, although this still remains an option. The UDRP can provide inspiration for alternative self-regulation in areas of commerce and other human activity that cross jurisdictional borders."

Gurry also noted the relevance of a UDRP-type approach to resolving disputes arising from a range of uses of identity on the Internet, such as on social networking sites, auction platforms and in search engines.

Parties based in 114 countries were named in WIPO cases in 2009, up 10% on the previous year, reflecting the global reach of cybersquatting. In 2009, the Inter-Continental Hotel Group filed the largest UDRP dispute on record, involving 1,542 domain names in a single WIPO case.

Cases in 2009 were handled by 310 WIPO panelists from 46 countries. Although down 2% from 2008, English remained the most common language for WIPO proceedings (84%), largely because the majority of domain names involved were registered with US-based registrars.

Cases were also processed in 13 other languages, including (in order of frequency) Spanish, French, Dutch, German, Chinese, Italian, Japanese, Korean, Swedish, Polish, Portuguese, Romanian, and Turkish. The character set of the disputed domain names themselves remained overwhelmingly ASCII (English alphabet), with a small number of domain names in Chinese, Danish, French, German, Turkish and Spanish.

The United States (US), France, the United Kingdom (UK), Germany, Switzerland and Spain remained the most frequent bases for complainants through 2009. The US, UK, China, Canada, Spain, and the Republic of Korea were cited most frequently as respondents in alleged cybersquatting cases.

Among Top Level Domains, the .com gTLD remained the solid leader in terms of the number of domain names featuring in WIPO cases (87%).

Almost 24% of all cases filed in 2009 were settled prior to a panel decision. Of the remainder, 87% of the panel decisions ordered the transfer of the domain name(s) to the complainant (or cancellation of the name), and 13% denied the complaints, leaving the names in the possession of the registration holder.

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