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New Top-Level Domain Names Push WIPO Cybersquatting Cases to Record High

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 (L-r): Francis Gurry, WIPO director general and Erik Wilbers, director of WIPO Arbitration and Mediation Center, present the Organization’s 2016 arbitration and mediation activities at a press conference at the United Nations Office in Geneva (photo: WIPO).
(L-r): Francis Gurry, WIPO director general and Erik Wilbers, director of WIPO Arbitration and Mediation Center, present the Organization’s 2016 arbitration and mediation activities at a press conference at the United Nations Office in Geneva (photo: WIPO).

Trademark owners filed all-time record 3,036 cases under the Uniform Domain Name Dispute Resolution Policy (UDRP) with World Intellectual Property Organisation (WIPO) in 2016, an increase of 10% over the previous year, with over 1,200 new generic Top-Level Domains (gTLDs) now operational, it said on Friday.

Cybersquatting disputes relating to new gTLDs rose to 16% of WIPO’s 2016 caseload, which covered a total of 5,374 domain names.  Among these, .XYZ, .TOP and .CLUB were the most common new gTLDs in dispute. (Annex 1 PDF, Annex 1: Top 50 gTLDs (Ranking) in WIPO Cases (2016))  Over 340 new gTLDs came online in 2016, such as .GAMES, .SHOP, and .STREAM.

Speaking on the development, Francis Gurry, WIPO director general said:  “The continuing growth in cybersquatting cases worldwide shows the need for continued vigilance by trademark owners and consumers alike.  This is even more important as a considerable number of these disputes involve incidents of online counterfeiting.  In such cases, WIPO assists in restoring these domain names to trademark owners, thereby curbing consumer deception.”

Who filed the most domain name cases in 2016?  PDF, Who filed the most domain name cases in 2016?

Country code Top-Level Domains (ccTLDs) accounted for some 14% of WIPO filings, with 74 national domain registries designating this WIPO dispute resolution service.

WIPO UDRP cases in 2016 involved parties from 109 countries.  Among the countries where filings originated, the U.S. remained first with 895 cases filed, followed by France (466), Germany (273), the U.K. (237) and Switzerland (180). (Annex 2 PDF, Annex 2: Geographical Distribution of Parties in WIPO Domain Name Cases

Top 25 (2016)) Among the top five filing countries, France (+38%) saw the highest growth in cases filed.

The top sectors of complainant activity were 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%).

Areas of WIPO Domain Name Complainant Activity (2016))  Philip Morris leads the list of filers – 67 cases – followed by AB Electrolux (51) and Hugo Boss, LEGO, and Michelin (42 each). (Annex 4 PDF, Annex 4: Top 10 WIPO Domain Name Case Filing Parties (2016)).  In 2016 WIPO appointed 305 panelists from 47 countries, and administered proceedings in 15 different languages.

Since the WIPO Arbitration and Mediation Center administered the first UDRP case in 1999, total WIPO case filings passed the 36,000 mark in 2016, encompassing over 66,000 domain names. (Annex 5 PDF, Annex 5: Total Number of WIPO Domain Name Cases and Domain Names by Year)

Intellectual Property Disputes
Patent-related disputes (34%) were most common among the 60 mediation and arbitration cases received by the WIPO Center for different types of intellectual property disputes in 2016.

ICT (20.5%), Copyright (13.6%), and Trademark (13.6%) disputes followed, as well as others arising from distribution and franchising agreements, industrial design, and art and cultural heritage.  WIPO mediation was the most requested procedure, followed by arbitration, and expedited arbitration.

These IP ADR (Alternative Dispute Resolution) cases filed in 2016 concerned parties from 19 countries, including Australia, Belgium, Brazil, Canada, China, Denmark, France, Germany, Greece, Ireland, Italy, Japan, the Netherlands, Singapore, South Korea, Spain, Switzerland, the U.K. and the U.S.

A number of cases involved multiple parties on one or both sides of the dispute.  Companies, including multinationals and SMEs, were the most frequent users, followed by individuals and municipalities, as well as a research institution, a non-profit organization, a copyright collecting rights society and an independent charity.

Respondents with experience in IP disputes named the WIPO Center as their second-most used institution close behind the ICC International Court of Arbitration in a survey on the use of arbitration for Technology, Media and Telecom disputes by the School of International Arbitration, Queen Mary University of London.  Where respondents expressed a preference for an institution in these dispute areas, the WIPO Center ranked first.

 

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