WIPO Continues Efforts to Curb Cybersquatting

Geneva, February 18, 2005
Press Updates UPD/2005/239

Geneva, February 18, 2005

WIPO CONTINUES EFFORTS TO CURB CYBERSQUATTING

The World Intellectual Property Organization (WIPO) continued its efforts to combat the abusive registration of trademarks as domain names, or cybersquatting, in 2004, when it received 1,179 cases, or a 6.6% increase, over the number received the previous year. WIPO's Arbitration and Mediation Center has handled a total of over 7,000 disputes, involving parties from 124 countries and covering over 12,500 domain names since the Uniform Domain Name Dispute Resolution Policy (UDRP) – a quick and cost effective dispute resolution procedure – went into effect in December 1999.

Mr. Francis Gurry, Deputy Director General of WIPO who oversees the work of the Center, noted that “the UDRP has been highly successful in creating a deterrent effect as well as in providing trademark owners with an effective international remedy against cybersquatting.” He added “that said, the fact that the Center continues to receive three new cases per day underlines the need for continued vigilance by intellectual property owners to protect their rights from cybersquatters.” Mr. Gurry also stressed that there was still bad faith associated with the practice of cybersquatting as over 80% of the WIPO expert decisions have gone in favor of the trademark holder, be it a large multinational corporation or a small or medium-sized business.

The UDRP's popularity stems from its cost-effectiveness, the predictability of the process and swift enforcement of the results. Frequent users of the UDRP include the entertainment industry, pharmaceutical companies, IT firms and a significant number of small-to-medium-sized businesses who favor the UDRP over traditional litigation considering it to be a far quicker and cheaper way of protecting their trademark rights against cybersquatting. Many UDRP decisions involve high-value brands that fall prey to cybersquatters; cases handled by the WIPO Center have involved most of the 100 largest international brands by value. Many well-known individuals, including Madonna, Julia Roberts, Eminem, Pamela Anderson, JK Rowling, Michael Crichton and Ronaldinho have also used the Center's services.

The Center's online facilities and its ability to handle cases in different languages have allowed parties from all parts of the world to protect their rights under the UDRP. While most cases are filed by parties based in the United States of America or Europe, cases have also been filed by parties from Argentina, Brazil, China, Costa Rica, Ecuador, Egypt, Guatemala, Jamaica, Jordan, Mexico, Saudi Arabia, Senegal, South Africa, Thailand, Vanuatu and Venezuela.

Disputes are decided by independent panelists drawn from the Center's list of 400 trademark specialists from over 50 countries. The domain name in question is frozen (suspended) during the proceedings. After carefully reviewing each case, panelists submit their decisions within a period of about 14 days. If a panelist's decision to transfer a domain name is not challenged in court within a period of ten days, the registrar is legally bound to implement the panelist's order.

The UDRP, which was proposed by WIPO and has become accepted as an international standard for resolving domain name disputes, is designed specifically to discourage and resolve the abusive registration of trademarks as domain names. Under the UDRP, a complainant must demonstrate that the disputed domain is identical or confusingly similar to its trademark, that the respondent does not have a right or legitimate interest in the domain name and that the respondent registered and used the domain name in bad faith.

A Few Facts

• An average of 3.4 UDRP and UDRP-based cases were filed per calendar day in 2004, bringing the total number of cases received in 2004 to 1,179 – an increase of 79 cases (or 6.6%) as compared to 2003.
  
  
• Of the total of 7,010 UDRP and UDRP-based cases the Center has received, 6,783 (96.76%) have been resolved. In the 5,414 decisions they have rendered, WIPO panels have found for the complainant in 4,512 (83.3%) cases. The remainder of the resolved cases were settled by the parties.
  
  
• WIPO's UDRP and UDRP-based cases filed since 1999 have by now covered over 12,500 separate domain names.
  
  
• In addition to famous brands (recent WIPO cases include the domain names <weathernetwork.com>, <yahoojobs.com>, <aventisdirect.com>, <3mworldwide.com>, and <bmw1.com>), celebrities continue to be targeted by cybersquatters. Often decisions favoring celebrities were based on common law rights in their names rather than on a registered trademark. In 2004, the Center received cases relating to movies, authors and books (JK Rowling, the Fast and the Furious), pop stars (Eminem, Pat Benetar, and Lloyd Banks), television shows (Fat Actress), and movie personalities (Spike Lee, Robert Downey Jr.). Sports figures (Freddy Adu and Ronaldhino) and sporting events (Orange Bowl) were also the target of cybersquatters.
  
  
• Most disputes concern international domains, with .com representing over 80% of names involved. However, in 2004 the Center also dealt with 70 cases involving country code top-level domains (ccTLDs), a 37 percent increase over the previous year. Examples have included the domain names <unimelb.com.au>, <ebay.ie>, and <hotmail.com.ph>. The Center now provides services for disputes in 43 ccTLDs, including .au (Australia), .mx (Mexico) and .nl (Netherlands). New additions in 2004 include .ch (Switzerland), .fr (France) and .ir (Iran), to which the Center also rendered advice and assistance in the drafting of their dispute resolution policies.
  
  
• The Center's services are multinational and multilingual. So far, parties to WIPO UDRP disputes have come from 124 different countries. The Center has managed proceedings in 12 languages, namely, Chinese, Dutch, English, French, German, Italian, Japanese, Korean, Norwegian, Portuguese, Russian and Spanish. Domain names themselves may also be presented in different scripts, such as Chinese, Cyrillic or Korean. The Center has handled 50 such "multilingual name" disputes so far, with further growth expected as the Internet becomes increasingly multilingual.
  
  
• All domain name decisions handled by the Center are fully indexed and published on the Center's web site (https://www.wipo.int/amc/en/domains/search/index.html). The legal index developed by the Center is unique in the world and rates among the most-viewed WIPO web pages.
  
  
• In addition to its domain name activities, the WIPO Center is increasingly called upon to provide arbitration and mediation services for all types of intellectual property disputes, such as disputes involving patent, trademark or copyright licensing. For this purpose, the WIPO Arbitration and Mediation Center makes available model arbitration and mediation clauses that can be downloaded from its web site at https://www.wipo.int/amc/en/arbitration/contract-clauses/index.html.
  
  
• The WIPO Center also organizes training programs and conferences in the area of intellectual property arbitration and mediation. The next such event is a WIPO Conference on Dispute Resolution in International Science and Technology Collaboration, which will take place in Geneva on April 25 and 26, 2005. Program information and registration is at https://www.wipo.int/amc/en/events/conferences/2005/index.html.

For further information about all the activities of the Center, please visit the Center's web site at https://www.wipo.int/amc/ or contact the Media Relations and Public Affairs Section at WIPO:

tel: + 41 22 338 8161 or 9547;
e-mail: publicinf@wipo.int.