WIPO Says U.S.-Related Cybersquatting Complaints Continued to Increase in 2012

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By Daniel Pruzin  


GENEVA--The number of cybersquatting complaints brought to the World Intellectual Property Organization's Arbitration and Mediation Center for resolution continued to increase in 2012, with complaints from and against U.S. respondents accounting for a large share of the cases, according to a March 26 statement by WIPO.

Trademark holders filed a record 2,884 cybersquatting cases last year through WIPO’s Arbitration and Mediation Center, implicating more than 5,000 internet domain names, the United Nations agency reported. That represented a 4.5 percent increase over the number of cases filed in 2011.

WIPO Director-General Francis Gurry said that the “simple explanation” for the continued increase was increasing use of the internet, which means an “increased range of potential infringers.”

WIPO’s Arbitration and Mediation Center is one of several bodies accredited by the Internet Corporation for Assigned Names and Numbers to offer domain name dispute services under its Uniform Domain Name Dispute Resolution Policy. WIPO handles around half of all domain name dispute cases worldwide, according to WIPO estimates.

Since the adoption of the UDRP in late 1999, WIPO has processed more than 25,500 complaints covering some 47,000 domain names in both generic and country-code top-level domains, the organization said.

U.S. Complainants, Respondents Lead Pack

Of the total cases filed in 2012, 798 cases were filed by U.S. complainants, followed by those from the United Kingdom (280), France (279), Germany (243), and Denmark (226).

U.S. nationals accused of cybersquatting were the respondents in 784 cases, followed by those from China (500), the United Kingdom (192), Australia (158), and the Netherlands (93).

WIPO noted that it had received complaints from 120 countries in 2012, 10 more than in the previous years.

Of the cases filed in 2012, WIPO dispute panelists issued 2,246 decisions on the complaints, with 88 percent of the decisions resulting in the transfer of the domain name to the complainant and 3 percent resulting in the cancellation of the domain name registration.

A further 613 cases--or more than 20 percent of the 2012 total--were terminated, mainly as the result of settlements, while 25 cases are still pending.

Complaints involving alleged cybersquatting in the ccTLD domains slipped to 12 percent of all cases filed, down from 16 percent the previous year. WIPO currently has agreements with 67 national registries to provide dispute resolution for ccTLD domain names, including Tanzania (.tz) and Palau (.pw), which entered into such agreements in 2012.

The remainder of the WIPO complaints involved disputes over trademark abuse in the gTLDs, with three quarters of these cases concerning registrations in the .com domain.

Complaints of trademark abuse in the retail and fashion sectors accounted for nearly a third of all cases filed last year, followed by banking and finance (11 percent) and pharmaceuticals/biotechnology (8 percent).

Fashion, Luxury Brands See More Action

“The increased filings related to fashion and luxury brands reflect in part a growth in the number of cases filed by brand owners alleging counterfeiting via the web pages offered under the disputed domain name,” WIPO said.

WIPO also announced that its Arbitration and Mediation Center has received 71 legal rights objection cases involving complaints by trademark owners over applications with ICANN for new gTLDs.

WIPO was appointed by ICANN as the exclusive provider of dispute resolution services with respect to trademark-based objections to new gTLDs applications. More than 1,900 applications were received for some 1,400 new domains as part of ICANN’s new gTLD program, with the list of applications made public June 13.

Trademark holders then had until March 13 of this year to file LRO cases with WIPO objecting to any of the new domains. The cases are to be decided prior to any new gTLD being approved and becoming operational.

Among the objections filed, nine complaints concern the proposed .home top-level domain, followed by seven complaints apiece for the .mail and .music TLDs.

Decisions on the 71 cases are due to be issued by October, WIPO said.

By Daniel Pruzin