WIPO: Cybersquatting reaches all-time high with the introduction of new gTLDs

Hogan Lovells
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The World Intellectual Property Organization (WIPO), the United Nations agency based in Geneva that administers the Uniform Domain Name Dispute Resolution Policy (UDRP), issued a press release last month revealing that cybersquatting cases reached an all-time high in 2016, with 3,036 cases filed (as compared with 2,754 cases filed in 2015), representing a 10% increase over the previous year.  The increase in cybersquatting activity can apparently be put down to the recent expansion of the domain name system from 22 generic Top Level Domains (gTLDs) (such as .COM, .NET and .ORG) to over 1,200 new gTLDs (such as .GURU, .EMAIL and .PARIS).

brand owners across the globe would be well advised to define a suitable strategy to protect their brands online.

According to WIPO’s press release, cybersquatting disputes relating to new gTLDs represented 16% of all cases filed with WIPO in 2016 (compared to 10.5% in 2015) and this number is set to increase.  Domain name disputes before WIPO were most common under the .XYZ, .TOP and .CLUB extensions.

However, an interesting statistic revealed by WIPO is that, in 2016, .COM remained the TLD with the highest number of disputed domain names (3,135 domain names out of a total of 5,374, representing 66.89%), followed by .XYZ (321), .NET (272), .TOP (153), .ORG (129), .INFO (83), .CLUB (55), .ONLINE (46), .BIZ (29) and .VIP (27).  This shows not only that .COM still dominates the domain name space but also that it remains the TLD of choice for cybersquatters.

While the UDRP is most often associated with gTLD domain name registrations, it is worth noting that 74 country code Top Level Domain (ccTLD) Registries have also adopted the UDRP, or a variation thereof, and have designated WIPO as dispute resolution provider.  For instance, .AU (Australia), .BR (Brazil), .ES (Spain), .IR (Iran), .MX (Mexico) and .NL (the Netherlands) have adopted a variation of the UDRP.  In 2016, ccTLDs represented 14% of cases filed with WIPO.

The global nature of the UDRP is reflected by the fact that, in 2016, 305 WIPO panellists from 47 countries were appointed and proceedings were administered in 15 different languages, with the most popular being English (2,630 cases), Spanish (121), French (94), Chinese (72), Turkish (31) and German (27).

WIPO cases in 2016 involved parties from 109 countries.  In this regard, the U.S. remains the country with the most complaints filed (895), followed by France (466), Germany (273), the United Kingdom (237), Switzerland (180) and Italy (123).  Interestingly, France and Italy experienced the highest growth rate for cases filed, with an increase of 38% and 41%, respectively.  The majority of the respondents originated also from the United States (680), followed by China (473), the United Kingdom (179), Australia (130), France (107) and India (101).

The WIPO report also highlights that the main sectors of cybersquatting activity were in the fields of banking and finance (12% of all cases), fashion (9%), heavy industry and machinery (9%), internet and IT (8%), biotechnology and pharmaceuticals (7%) and retail (7%).

One problem WIPO’s statistics do not, of course, highlight is the prevalence of cybersquatting in the numerous country code extensions that 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), a rights protection mechanism specifically designed for new gTLDs that has also been adopted by certain ccTLDs, such as .PW ( for Palau).  Many trade mark owners have now opted to file URS complaints instead of UDRPs (even though the only remedy available under the URS is 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, although WIPO is the leading domain name dispute resolution provider, it 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 Forum (formerly known as “NAF”) (Minneapolis, US), the Czech Arbitration Court (Prague) and the Arab Center for Dispute Resolution (ACDR) (Jordan).

Over 36,000 cases have been filed thus far with WIPO 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.  As such, brand owners across the globe would be well advised to define a suitable strategy to protect their brands online.

WIPO’s press release is available here.


First published on Anchovy News: Anchovy® is our a comprehensive and centralised online brand protection service for global domain name strategy, including new gTLDs together with portfolio management and global enforcement using a unique and exclusive online platform developed in-house.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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