UDRP cases at WIPO hit record high
Trademark owners filed a record number of cybersquatting complaints at the World Intellectual Property Organization (WIPO) in 2012, according to an industry report.
Brand protection company Melbourne IT DBS said WIPO received 2,884 Uniform Domain-Name Dispute-Resolution Policy (UDRP) filings, an increase of 4.3 percent from last year. The cases covered 5,082 domain names, representing a 6.3 percent jump from 2011.
The data show that apart from a slight dip in 2009, the number of cases filed at WIPO, which is the leading UDRP provider, has increased steadily since 2000, when the UDRP began operating.
In 2012, complainants won 88 percent of disputes, up one percent from 2011, compared with an average 85 percent success rate since 2000.
Brands targeted 500 Chinese respondents, an increase of 50 percent from 2011. The US again accounted for the highest number of respondents, 785, one case fewer than last year. IP owners in the US were the most prolific complainants, filing 798 cases, a drop from 929 in 2011. The remaining top 10 countries were all European, including the UK, France and Denmark.
While Melbourne IT DBS analysed cases filed at WIPO (which are made publicly available) throughout 2012, the company’s data do not derive from an official WIPO report. WIPO is expected to publish its own report in the next two months.
The report admits that while using WIPO’s statistics does not wholly reflect the level of cybersquatting – because there are other UDRP providers such as the National Arbitration Forum (NAF) – the data are the most reliable source.
But critics often say that such data cannot be used to argue that cybersquatting is rising, as WIPO has been increasing its market share over the NAF in the past few years; the domain name system itself has been growing; and some brands pay off registrants with a price that is less than a UDRP dispute (typically $1,500).
Martin Burke, executive vice president at Melbourne IT DBS, said the report reminded brands that they should be preparing their enforcement strategies for the new generic top-level domain (gTLD) programme, set to launch this later year.
“We agree with trademark holders that it is likely cybersquatting cases will occur at the second level of new gTLDs, so it is imperative brands prepare now by considering which trademarks will need to be registered in ICANN’s Trademark Clearinghouse and developing their domain registration strategy for both protecting and promoting their brands in the new domains.”
David Taylor, partner at Hogan Lovells in Paris, said: “With the new gTLD programme, we are definitely on the verge of an increase in UDRP filings. Whether the number of cases doubles or triples, we don’t know, but there will be a jump.”
Taylor said the increase in UDRP filings may be due to an increased awareness about domain names – especially the new gTLD programme – with brands subsequently turning their attention towards the UDRP.
He added: “The UDRP is a solid system for dealing with clear-cut cases of bad faith registrations – there is nothing cheaper or better in these circumstances.”
The report is available here.
