Cybersquatting Hits Record Level, WIPO Center Rolls out New Services

Geneva Thu Mar 31 08:56:00 CEST 2011
PR/2011/684

Video

In 2010, trademark holders filed 2,696 cybersquatting cases covering 4,370 domain names with the WIPO Arbitration and Mediation Center (WIPO Center) under procedures based on the Uniform Domain Name Dispute Resolution Policy (UDRP), an increase of 28% over the 2009 level and of 16% over the previous record year, 2008 (annex 1). Parties took advantage of user-friendly online facilities such as the WIPO-initiated paperless eUDRP, the Legal Index of WIPO UDRP Decisions, and the Overview of WIPO Panel Views on Selected UDRP Questions (WIPO Overview) to assist their case preparation and submission.

“The WIPO Center is the leading provider of domain name dispute services and provides a rich range of resources for users and the general public. The just-released major update to the WIPO Overview is an excellent illustration of these resources and reflects the long experience of the WIPO Center,” said WIPO Director General Francis Gurry. The freely-available WIPO Overview is a unique tool used by parties, counsel and others around the world to find their bearings in cybersquatting jurisprudence (annex 2). “The revised WIPO Overview distills panel findings in thousands of domain name cases filed with WIPO since its launch,” added Mr. Gurry.

Domain Name Dispute Resolution

Since the UDRP’s launch in December 1999, the WIPO Center has received over 20,000 UDRP-based cases, covering some 35,000 domain names in both generic and country code Top Level Domains (gTLDs and ccTLDs). Cases filed with WIPO in 2010 included parties from 57 countries. These cases were decided by 327 panelists from 49 countries in 13 different languages, namely (in order of frequency) English, Spanish, French, Dutch, German, Chinese, Korean, Portuguese, Italian, Turkish, Romanian, Swedish, and Japanese. In 91% of cases, panels found evidence of cybersquatting, deciding in favor of complainants.

The top five areas of WIPO complainant activity were retail, banking and finance, biotechnology and pharmaceuticals, Internet and IT, and fashion (annex 3). WIPO’s 2010 caseload featured well-known names from business and public interest sectors (annex 4). Most of these cases (82%) concerned registrations in the .com domain.

Among WIPO cases, the percentage related to country code Top Level Domains rose to 15% of all cases in 2010 from just 1% in 2000. National registries designating WIPO to provide domain name dispute resolution services increased to 65 in 2010 from 62 in 2009. Among the new additions, the policy for the .BR domain of Brazil is inspired by the UDRP but also imports several modifications specific to expressed local needs.

Against the background of the global emergence of domain names in local language scripts, as of October 2010, the WIPO Center is providing domain name dispute resolution services for both .AE and امارات. (dotEmarat). The United Arab Emirates now not only utilizes its existing .AE two-letter country code in Latin characters, but also the امارات. (dotEmarat) Internationalized ccTLD in Arabic script.

New Generic Top Level Domains

Building on the UDRP experience, the WIPO Center continues to provide trademark-based domain name policy input to ICANN stakeholders. WIPO’s institutional commitment to cost- and time-effective domain name dispute resolution is found in its proposals for a rapid suspension mechanism (in ICANN terms, “URS”) addressing registrants and for pre- and post-delegation procedures addressing registration authorities. The post-delegation proposal was made to encourage responsible registry operator conduct through standards coupled with realistic safe harbors. The WIPO Center believes that alternative dispute resolution can be an important tool for enhancing business and user confidence in Internet platforms.

With ICANN’s ongoing discussion of new trademark protection mechanisms subject to registration and political pressures, the WIPO Center continues to monitor and where possible assist the overall effectiveness of the various proposals being tabled.

WIPO Arbitration and Mediation of Intellectual Property Disputes

In addition to domain names disputes, the WIPO Center in 2010 continued to administer cases under the WIPO Mediation, Arbitration, and Expedited Arbitration Rules. As of December 2010, the WIPO Center had administered some 240 mediations and arbitrations, the majority of which were filed in the last six years by large companies, small and medium sized enterprises, research organizations and universities. These cases involved a range of issues, such as patent infringement, patent licenses, information technology transactions (including telecommunications), distribution agreements for pharmaceutical and consumer products, copyright issues, research and development agreements, trademark co-existence agreements, art marketing, artistic production, and media-related agreements, joint venture agreements, and cases arising out of agreements in settlement of prior multi-jurisdictional intellectual property litigation. Parties were able to use the WIPO Electronic Case Facility (WIPO ECAF). WIPO ECAF allows for secure filing, storing and retrieval of case-related submissions in a web-based electronic case file, by parties and neutrals anywhere in the world.

In May 2010, the WIPO Center established a presence in Singapore. With the increasing economic importance of the Asia Pacific region, the disputes that are an unavoidable part of doing business can benefit from alternative dispute resolution options, especially in cross-border transactions. This new Singapore activity includes the provision of party guidance and training in intellectual property alternative dispute resolution.

In addition to case services under the WIPO Rules, the WIPO Center also works with industry associations to develop dispute resolution procedures tailored to their specific needs. For example, in 2010 the WIPO Center developed WIPO Expedited Arbitration Rules for EGEDA, the collecting society that represents and defends the interests of audiovisual producers in Spain.

Background on WIPO Arbitration and Mediation Center

Based in Geneva, Switzerland, the WIPO Arbitration and Mediation Center was established in 1994 to offer Alternative Dispute Resolution (ADR) options for the resolution of international commercial disputes between private parties. Developed by leading experts in cross-border dispute settlement, the arbitration, mediation and expert determination procedures offered by the WIPO Center are widely recognized as particularly appropriate for technology, entertainment and other disputes involving intellectual property. Since 2010 the WIPO Center also has an office at Maxwell Chambers in Singapore.

The WIPO Center is committed to understanding user needs. It is currently undertaking an International Survey on Dispute Resolution in Technology Transactions which will bring WIPO closer to the expectations of all parties in technology-related disputes and enable the WIPO Center to further improve its mediation, arbitration and expert determination services.” (annex 5) A report on the results of the Survey is expected later in 2011. Other examples of the WIPO Center’s focus on innovation are the contributions it has been making to further rights protection mechanisms under consideration by the Internet Corporation for Assigned Names and Numbers (ICANN), which is responsible for the Domain Name System.

Background on UDRP

The Uniform Domain Name Dispute Resolution Policy (UDRP), which was proposed by WIPO in 1999 and has become accepted as an international standard for resolving domain name disputes outside the traditional courts, is designed specifically to discourage and resolve the abusive registration of trademarks as domain names, commonly known as cybersquatting. Under the UDRP, a complainant must demonstrate that the disputed domain name is identical or confusingly similar to its trademark, that the respondent does not have a right or legitimate interest in the domain name and that the respondent registered and used the domain name in bad faith.

Disputes are decided by independent panelists drawn from the WIPO Center’s list of trademark specialists. The domain name registration in question is frozen (suspended) during the proceedings. After reviewing a case, panelists submit their decision within a period of 14 days. If a panelist’s decision to transfer a domain name is not challenged in a competent court within a period of ten business days, the registrar is legally bound to implement the panelist’s decision. The entire case normally takes no more than about two months.

Annex 1

Total Number of WIPO Domain Name Cases and Domain Names by Year

Annex 2

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview, 2.0")

© World Intellectual Property Organization

1. First UDRP Element

• 1.1 Does ownership of a registered trademark to which the domain name is identical or confusingly similar automatically satisfy the requirements under paragraph 4(a)(i) of the UDRP?
  
• 1.2 What is the test for identity or confusing similarity, and can the content of a website be relevant in determining this?
  
• 1.3 Is a domain name consisting of a trademark and a negative term confusingly similar to the complainant's trademark? ("sucks cases")
  
• 1.4 Does the complainant have UDRP-relevant trademark rights in a trademark that was registered, or in which the complainant acquired unregistered rights, after the domain name was registered?
  
• 1.5 Can a complainant show UDRP-relevant rights in a geographical term or identifier?
  
• 1.6 Can a complainant show UDRP-relevant rights in a personal name?
  
• 1.7 What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?
  
• 1.8 Can a trademark licensee or a related company to a trademark holder have rights in a trademark for the purpose of filing a UDRP case?
  
• 1.9 Is a domain name consisting of a trademark and a generic, descriptive or geographical term confusingly similar to a complainant's trademark?
  
• 1.10 Is a domain name which contains a common or obvious misspelling of a trademark (i.e., typosquatting) confusingly similar to a complainant's trademark?
  
• 1.11 Are disclaimed or design elements of a trademark considered in assessing identity or confusing similarity?

2. Second UDRP Element

• 2.1 Is the complainant required to prove that the respondent lacks rights or legitimate interests in the disputed domain name?
  
• 2.2 Does a respondent automatically have rights or legitimate interests in a domain name comprised of a dictionary word(s)?
  
• 2.3 Can a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark?
  
• 2.4 Can a criticism site generate rights or legitimate interests in the disputed domain name?
  
• 2.5 Can a fan site generate rights or legitimate interests in the disputed domain name?
  
• 2.6 Do parking and landing pages or pay-per-click (PPC) links generate rights or legitimate interests in the disputed domain name?
  
• 27 Does a respondent trademark corresponding to a disputed domain name automatically generate rights or legitimate interests?

3. Third UDRP Element

• 3.1 Can bad faith be found if the domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?
  
• 3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or to contact the trademark holder (passive holding)?
  
• 3.3 What constitutes a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name?
  
• 3.4 Can constructive notice, or a finding that a respondent "knew or should have known" about a trademark, or willful blindness, form a basis for finding bad faith?
  
• 3.5 What is the role of a disclaimer on the web page of a disputed domain name?
  
• 3.6 Can statements made in settlement discussions be relevant to showing bad faith?
  
• 3.7 Does the renewal of the registration of a domain name amount to a registration for the purposes of determining whether the domain name was registered in bad faith?
  
• 3.8 Can third-party or "automatically generated" material appearing on a website form a basis for finding registration and/or use in bad faith?
  
• 3.9 Can use of a privacy or proxy registration service form a basis for finding bad faith?
  
• 3.10 Can the use of "robots.txt" or similar mechanisms to prevent website content being accessed in an on-line archive form a basis for finding in bad faith?
  
• 3.11 Can tarnishment of a trademark form a basis for finding bad faith?

4. Procedural Questions

• 4.1 What deference is owed to past UDRP decisions dealing with similar factual matters or legal issues?
  
• 4.2 Will the WIPO Center put an unsolicited supplemental filing before a panel, and in what circumstances would a panel accept such filing?
  
• 4.3 What is the proper language of the proceeding and what are the relevant considerations in this regard?
  
• 4.4 Under what circumstances can a refiled case be accepted?
  
• 4.5 May a panel perform independent research when reaching a decision?
  
• 4.6 Does failure of a respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?
  
• 4.7 What is the standard of proof under the UDRP?
  
• 4.8 Under what circumstances may further domain names be added to a filed complaint?
  
• 4.9 Who is the proper respondent in a case involving a privacy or proxy registration service?
  
• 4.10 Does delay in bringing a complaint prevent a complainant from filing under the UDRP?
  
• 4.11 Can a registrar be liable as a registrant under the UDRP?
  
• 4.12 Can UDRP proceedings be suspended for purposes of settlement?
  
• 4.13 Can a panel decide a case under the UDRP based on a respondent's consent to transfer?
  
• 4.14 What is the relationship between UDRP proceedings and court proceedings?
  
• 4.15 To what extent is national law relevant to a panel assessment of rights and legitimate interests and/or bad faith?
  
• 4.16 Can multiple complainants bring a single consolidated complaint against a respondent? Can a single consolidated complaint be brought against multiple respondents?
  
• 4.17 In what circumstances should a finding of Reverse Domain Name Hijacking or abuse of process be made?

Annex 3

Areas of WIPO Domain Name Complainant Activity (2010)

Annex 4

Sample of WIPO Domain Name Cases (2010)

Annex 5

International Survey on Dispute Resolution in Technology Transactions

Completion

The World Intellectual Property Organization’s (WIPO) Arbitration and Mediation Center is pleased to inform you about an international Survey it is conducting in recognition of the usefulness of having more precise statistical and comparative information on dispute resolution of technology disputes. This Survey has been developed with the support of the International Association for the Protection of Intellectual Property (AIPPI), the Association of University Technology Managers (AUTM), the Fédération Internationale des Conseils en Propriété Industrielle (FICPI) and the Licensing Executives Society International (LESI) and in collaboration with in-house counsel and external experts in technology disputes from different jurisdictions and business areas. Their collective experience with technology disputes is reflected in the content, scope and structure of this questionnaire, and they are also assisting in its distribution.

Respondents

This Survey is addressed to companies, research organizations, universities, government bodies, law firms, individuals and other entities involved in technology licensing and technology disputes. A response from your legal or patent department, technology transfer office or other internal unit dealing with patent and technology licensing and/or litigation/dispute resolution is key to the success of the Survey. The WIPO Center would very much appreciate your distributing this Survey within your entity where appropriate. If you are working in a law firm, we hope that you are prepared either to complete this Survey on behalf of one of your clients most relevant in this context, or to distribute this Survey to selected clients.

Objectives

Participation in this Survey will help provide a fact-based assessment of the current use of Alternative Dispute Resolution (ADR) as compared to court litigation in technology related disputes, as well as a qualitative evaluation of these dispute resolution options. Your responses will also support the anticipation of future trends in this area. The Survey should thus help inform both the WIPO Center’s provision of appropriate ADR services and, where applicable, party dispute resolution strategy. The Survey may also support discussions on best-practices in technology dispute resolution. For purposes of the Survey, we understand technology to encompass patents, know-how and, in certain instances, copyright.

Outreach

The Survey results will be presented in a WIPO Center report which we hope may support you in negotiating dispute resolution contract provisions with business partners, and in identifying appropriate solutions for existing disputes. The WIPO Center will provide you as a participating respondent with a preview of the Survey results prior to full publication. We would also be pleased to offer to you or to one of your colleagues access to the WIPO Center's Workshop for Mediators or Arbitration Workshop at a considerably reduced registration fee.

Confidentiality

Participation in this Survey is confidential. Unless you indicate otherwise, any information which you have provided will only be used to identify aggregate trends or, in appropriate cases, to quote generic comments anonymously. The WIPO Center will use the information obtained for the above stated Survey purposes only. Your email address will be stored confidentially and used to send a copy of the results to you.

Content

The Survey covers the following topics:

1. Information about the Survey Respondent
2. Technology Related Agreements
3. Dispute Resolution Clauses in Technology Related Agreements
4. Types of Technology Related Disputes
5. Resolution of Technology Related Disputes
6. Final Comments