21st March 2019 - ADMIN

The World Intellectual Property Organisation (WIPO) has released its annual report in relation to cybersquatting cases it heard under the Uniform Domain Name Dispute Resolution Policy (UDRP).

WIPO reports that trade mark owners filed a record of 3,447 cases under the UDRP with WIPO’s Arbitration and Mediation Center in 2018. According to WIPO, this is a clear indication that businesses are reacting to the abuse of trade marks in the domain name system.

WIPO Director General Francis Gurry states: “Domain names involving fraud and phishing or counterfeit goods pose the most obvious threats, but all forms of cybersquatting affect consumers. WIPO’s UDRP caseload reflects the continuing need for vigilance on the part of trade mark owners around the world”.

The 3,447 cases in 2018 represent a 12% increase on the 3074 cases filed in 2017. This continues an upward trend from previous years. The most frequently disputed domain was the .com representing 73% while 13% represented new generic top-level domains (gTLDs).

Total Number of Cases per Year

Source: Total Number of Cases per Year
WIPO, 20 March 2019 at https://bit.ly/2ULoFtf

Top Sectors of Complaints

The most complaints came from the United States with 976 cases filed, followed by France with 553 cases, the United Kingdom with 305, Germany with 244 and Switzerland with 192.

The industries most represented were banking and finance (12%), biotechnology and pharmaceuticals (11%) and Internet and IT (11%).

Areas of WIPO Domain Name Complaint Activity (2018)

Source: Areas of WIPO Domain Name Complaint Activity (2018)
WIPO, 20 March 2019 at https://bit.ly/2OgaPNe

European Union General Data Protection Regulation (GDPR)

Every domain name on the Internet is recorded in a database called WHOIS which is managed by the Internet Corporation for Assigned Names and Numbers (ICANN). This is a very valuable search tool to investigate the registrant of a website and other personal details for parties seeking to resolve domain name disputes.

Since the GDPR came into effect in May 2018, ICANN requires domain name registries to remove those details so that nearly all contact details have been masked to protect the personal data of those registrations.

Whereas previously those contact details were freely accessible to the public, this makes it far more complicated for brand owners seeking to enforce their rights to identify the registrant of a domain name.

The GDPR impacts domain name disputes including under the UDRP because a rights owner will find it difficult to identify the registrant of a particular domain name or the registrant’s contact information.

In response to these developments, WIPO has published an information guide for trade mark owners considering a UDRP filing at https://www.wipo.int/amc/en/domains/gdpr/. As noted in the guide, the issue is one of balancing privacy and personal data against the legitimate interest of addressing legal disputes.

WIPO Arbitration and Mediation Center

Based in Geneva, Switzerland, the WIPO Arbitration and Mediation Centre functions as an alternative dispute resolution mechanism for parties seeking to resolve their intellectual property and technology disputes.

Take-away points

• Business is showing increased resolve to file cybersquatting complaints in response to the abuse of trade marks in the Domain Name System.
• The most proactive country is the United States with industry taking the lead in the sectors of banking and finance, biotechnology and pharmaceuticals and Internet and IT.
• The GDPR has made it more difficult to unmask the identify of domain name registrants.
• There will be a continuing issue to balance the privacy rights of individuals against the legitimate interests of intellectual property rights holders.

 

Jaclyn-Mae Floro, BCompSc

Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.au.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.