The World Intellectual Property Organization (WIPO), the United Nations specialized agency based in Geneva that administers the Uniform Domain Name Dispute Resolution Policy (UDRP) has released a press release revealing that cyber squatting cases in 2015 were up 4.6% compared to 2014. The increase in cyber squatting activity appears to be explained by the recent expansion of the domain name system from 22 generic Top Level Domains (gTLDs), also known as “legacy” gTLDs (such as .COM and .NET) to thus far almost 1,000 new gTLDs (such as .GURU, .EMAIL and .PARIS).“brand owners across the globe are well advised to define a suitable strategy to protect their brands online.”
The UDRP is an alternative dispute resolution procedure for resolving domain name disputes. To be successful under the UDRP, a complainant must demonstrate three cumulative requirements, namely that (i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; (ii) that the respondent does not have rights or legitimate interests in the domain name in question and; (iii) that the respondent registered and is using the domain name in bad faith.
WIPO’s press release revealed that in 2015 brand owners filed 2,754 UDRP cases with WIPO covering a total of 4,364 disputed domain names, compared to 2,634 cases filed the previous year covering a total 5,603 domain names. This represents a 4.6% increase in the number of complaints filed, although a decrease in the number of disputed domain names that were the subject of a UDRP (though this decrease is probably accounted for by the fact that one of the 2014 complaints concerned 1,152 domain names). While the number of domain name disputes filed with WIPO in 2015 did not surpass the record 2,884 cases filed in 2012 covering 5,080 domain names, it did reach the third highest level since 1999.
However, an important fact revealed by WIPO is that domain name disputes under new gTLDs accounted for an impressive 10.5% of all UDRPs filed with WIPO in 2015, with .XYZ, .CLUB and .EMAIL amongst the new gTLDs with most disputed domain names. Additionally, this figure looks set to increase in 2016, with domain name disputes under new gTLDs accounting for 15% of all UDRP complaints filed thus far with WIPO. It would appear that the overall number of complaints filed with WIPO is likely to surpass the 2012 mark soon as a direct result of the introduction of new gTLDs into the root.
While the UDRP is most often associated with gTLD domain name registrations, it is worth noting that 71 country code Top Level Domain (ccTLD) Registries have adopted the UDRP, or a variation of it, and have designated WIPO as dispute resolution provider for their ccTLD. As a result of this, ccTLDs represented 13.7% of UDRP cases filed with WIPO in 2015 and this figure also looks set to increase. Of the 4,364 disputed domain names in 2015, 3,810 (87.3%) were gTLDs and 554 (12.7%) were ccTLDs, with the extensions .NL (the Netherlands), .ES (Spain), .CO (Colombia), and .AU (Australia) accounting for the ccTLDs with the highest number of disputed domain names.
Another interesting statistic revealed by WIPO is that in 2015 out of the 3,810 gTLD domain names, .COM remained the TLD with the highest number of disputed domain names (2,732 or 71.71%), followed by .NET (262), .ORG (200), .INFO (81), .XYZ (62), .BIZ (45), .CLUB (24), .EMAIL (20), .WEBSITE (15) and .ONLINE (15). This statistic reflects .COM’s dominant position in the domain name space in general and how it remains the TLD of choice for cybersquatters.
The global nature of the UDRP is reflected by the fact that in 2015 over 300 WIPO panellists from 45 countries were appointed, proceedings were administered in 15 different languages and parties involved in UDRP complaints filed with WIPO originated from 113 countries. In this regard, the United States was the country with most complaints filed (847), followed by France (337), Germany (272), the United Kingdom (229) and Switzerland (169). Interestingly, Germany experienced the highest growth rate for cases filed, with an increase of 48.6%. The majority of the respondents originated also from the United States (612), followed by China (412), the United Kingdom (203), Australia (107) and France (99).
The WIPO report also showed that the main sectors of cybersquatting activity were in the fields of fashion (representing 10% of all cases), banking and finance (representing 9% of cases) and internet and IT (also representing 9% of cases), followed by retail (8%) and biotechnology and pharmaceuticals (7%).
One problem WIPO’s statistics fail to highlight is the prevalence of cybersquatting in the numerous country code extensions which have not adopted the UDRP (or a variation of the same) and have chosen to create and run their own dispute resolution service (for instance, Nominet for the .UK name space and AFNIC for the .FR name space). Furthermore, such statistics do not reflect the number of complaints filed under the Uniform Rapid Suspension System (URS). Many trade mark owners have now opted to file URS complaints instead of UDRPs (even though the remedy available under the URS is merely a suspension of the domain name, as opposed to a transfer), which has likely prevented the number of UDRP complaints filed from increasing even more.
Additionally, WIPO is only one of five providers accredited by the Internet Corporation for Assigned Names and Numbers (ICANN) to provide services in relation to the UDRP, the others being the Asian Domain Name Dispute Resolution Center (with offices in Beijing, Hong Kong, Seoul and Kuala Lumpur), the National Arbitration Forum (NAF) (Minneapolis, US), the Czech Arbitration Court (Prague) and The Arab Center for Dispute Resolution (ACDR) (Jordan), which was approved as a dispute resolution service provider by ICANN in 2013.
Over 33,000 cases have been filed thus far with WIPO (covering over 61,000 domain names) since the first UDRP case was decided in 1999 (World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D99-0001).
In summary, WIPO’s statistics show that cybersquatting activity continues to grow, particularly as a result of the expansion of the domain name system, and so brand owners across the globe are well advised to define a suitable strategy to protect their brands online. If you would like advice on the UDRP or devising a brand protection strategy