12/03: CYBERSQUATTING REMAINS ON THE RISE WITH FURTHER RISK TO TRADEMARKS FROM NEW REGISTRATION PRACTICES
The number of cybersquatting disputes filed with the World Intellectual Property Organization (WIPO) in 2006 increased by 25% as compared to 2005. In a related development, the evolution of the domain name registration system is causing growing concern for trademark owners, in particular some of the effects of the use of computer software to automatically register expired domain names and their ‘parking’ on pay-per-click portal sites, the option to register names free-of-charge for a five-day ‘tasting’ period, the proliferation of new registrars, and the establishment of new generic Top Level Domains (gTLDs). The combined result of these developments is to create greater opportunities for the mass, often anonymous, registration of domain names without specific consideration of third-party intellectual property rights.
“While electronic commerce has flourished with the expansion of the Internet, recent developments in the domain name registration system have fostered practices which threaten the interests of trademark owners and cause consumer confusion. Practices such as ‘domain name tasting’ risk turning the domain name system into a mostly speculative market. Domain names used to be primarily specific identifiers of businesses and other Internet users, but many names nowadays are mere commodities for speculative gain,” noted Mr. Francis Gurry, WIPO Deputy Director General, who oversees WIPO’s dispute resolution work. “The rate at which domain names change hands and the difficulty to track such mass automated registrations challenge trademark owners in their pursuit of cybersquatters,” he said. “With domain names becoming moving targets for rights holders, due consideration should be given to concrete policy responses,” he added.
In 2006, a total of 1,823 (gTLDs and country code Top Level Domains (ccTLDs)) complaints alleging cybersquatting – the abusive registration as domain names of trademarks – were filed with WIPO’s Arbitration and Mediation Center (Center), representing the highest number of cybersquatting cases handled by WIPO since the year 2000.
Since commencement in December 1999 of the Uniform Domain Name Dispute Resolution Policy (UDRP) – a quick and cost effective dispute resolution procedure – through December 2006, 10,177 UDRP or UDRP-based cases (gTLD and ccTLD) have been filed with the Center, covering 18,760 separate domain names.
When .info Sunrise, .biz STOP, .name ERDRP and .mobi Sunrise and Premium Name cases are added to these UDRP figures, the total number of cases comes to 25,815 (Annex 1). Due to the temporary applicability of these policies, the non-UDRP cases are received on a one-off basis. All of the .info and .biz cases were completed in 2006; of the .mobi cases, five Sunrise cases have been completed and 74 Premium Name cases were completed in 2006.
A total of 9,389 (97% of total cases) UDRP cases received by the Center have so far been resolved. Of the gTLD cases resolved, decisions have been rendered in 7,328 cases with some 84% of those cases ending with the transfer of the domain name to the complainant and approximately 16% being denied. 2,061 cases have terminated on other grounds, primarily on the basis of settlement agreements between parties transferring the domain name to the complainant.
Another development in 2006 was the filing of the 10,000th WIPO UDRP complaint. An American party (Sam Ash Music Corporation) filed a complaint against an individual from China who had registered the domain name. The language of the proceeding was Chinese and a WIPO panel decision transferring the name was notified in early February of 2007. In addition, the 25,000th WIPO domain name case under all policies (UDRP and ‘Sunrise’) was filed on August 19, 2006. The WIPO panelist ordered the transfer of the domain name to the trademark owner, the Red Lion Hotels chain.
The WIPO dispute resolution procedure served a wide range of users, ranging from well-known brands, to smaller enterprises and organizations, as well as individuals. They covered categories including luxury items, famous persons, entertainment, hospitality, sports, gambling, and pharmaceuticals. In addition, charitable organizations and educational institutions were involved.
A number of disputes relating to newly merged or collaborating corporations were also filed. Such merger cases suggest that cybersquatters tend to follow newsworthy events. This is also evident from the spate of cases involving the Tamiflu trademark filed at the height of international concern about an avian flu pandemic in 2006 in relation to such domain names as, , and . The complainants were Swiss company F. Hoffmann-La Roche AG and its American subsidiary, the manufacturers of Tamiflu, an antiviral pharmaceutical preparation for the treatment and prevention of influenza. A total of 34 cases covering 64 domain names were filed with WIPO in 2006 which were related in some form to the Tamiflu trademark.
Hoffmann-La Roche have also filed UDRP complaints based on other trademarked products, such as Valium. Other pharmaceutical companies that have filed WIPO cases in the past include Pharmacia & Upjohn (in relation to Rogaine), American Home Products, McNeil Consumer Brands (Tylenol), Pfizer (Viagra), Merck, Sanofi-Aventis (Ambien), CVS Pharmacy, Lilly ICOS, Valeant, and Bayer.
Since registration of domain names in non-Roman scripts such as Arabic, Chinese, Cyrillic or Korean (“internationalized” domain names) became available a few years ago, the Center has received a total of 60 cases involving such names, of which eight were received in 2006. With the spreading of Internet connections and online commerce, the proportion of domain name disputes of this type is expected to increase in coming years.
“While electronic commerce has flourished with the expansion of the Internet, recent developments in the domain name registration system have fostered practices which threaten the interests of trademark owners and cause consumer confusion. Practices such as ‘domain name tasting’ risk turning the domain name system into a mostly speculative market. Domain names used to be primarily specific identifiers of businesses and other Internet users, but many names nowadays are mere commodities for speculative gain,” noted Mr. Francis Gurry, WIPO Deputy Director General, who oversees WIPO’s dispute resolution work. “The rate at which domain names change hands and the difficulty to track such mass automated registrations challenge trademark owners in their pursuit of cybersquatters,” he said. “With domain names becoming moving targets for rights holders, due consideration should be given to concrete policy responses,” he added.
In 2006, a total of 1,823 (gTLDs and country code Top Level Domains (ccTLDs)) complaints alleging cybersquatting – the abusive registration as domain names of trademarks – were filed with WIPO’s Arbitration and Mediation Center (Center), representing the highest number of cybersquatting cases handled by WIPO since the year 2000.
Since commencement in December 1999 of the Uniform Domain Name Dispute Resolution Policy (UDRP) – a quick and cost effective dispute resolution procedure – through December 2006, 10,177 UDRP or UDRP-based cases (gTLD and ccTLD) have been filed with the Center, covering 18,760 separate domain names.
When .info Sunrise, .biz STOP, .name ERDRP and .mobi Sunrise and Premium Name cases are added to these UDRP figures, the total number of cases comes to 25,815 (Annex 1). Due to the temporary applicability of these policies, the non-UDRP cases are received on a one-off basis. All of the .info and .biz cases were completed in 2006; of the .mobi cases, five Sunrise cases have been completed and 74 Premium Name cases were completed in 2006.
A total of 9,389 (97% of total cases) UDRP cases received by the Center have so far been resolved. Of the gTLD cases resolved, decisions have been rendered in 7,328 cases with some 84% of those cases ending with the transfer of the domain name to the complainant and approximately 16% being denied. 2,061 cases have terminated on other grounds, primarily on the basis of settlement agreements between parties transferring the domain name to the complainant.
Another development in 2006 was the filing of the 10,000th WIPO UDRP complaint. An American party (Sam Ash Music Corporation) filed a complaint against an individual from China who had registered the domain name
The WIPO dispute resolution procedure served a wide range of users, ranging from well-known brands, to smaller enterprises and organizations, as well as individuals. They covered categories including luxury items, famous persons, entertainment, hospitality, sports, gambling, and pharmaceuticals. In addition, charitable organizations and educational institutions were involved.
A number of disputes relating to newly merged or collaborating corporations were also filed. Such merger cases suggest that cybersquatters tend to follow newsworthy events. This is also evident from the spate of cases involving the Tamiflu trademark filed at the height of international concern about an avian flu pandemic in 2006 in relation to such domain names as
Hoffmann-La Roche have also filed UDRP complaints based on other trademarked products, such as Valium. Other pharmaceutical companies that have filed WIPO cases in the past include Pharmacia & Upjohn (in relation to Rogaine), American Home Products, McNeil Consumer Brands (Tylenol), Pfizer (Viagra), Merck, Sanofi-Aventis (Ambien), CVS Pharmacy, Lilly ICOS, Valeant, and Bayer.
Since registration of domain names in non-Roman scripts such as Arabic, Chinese, Cyrillic or Korean (“internationalized” domain names) became available a few years ago, the Center has received a total of 60 cases involving such names, of which eight were received in 2006. With the spreading of Internet connections and online commerce, the proportion of domain name disputes of this type is expected to increase in coming years.
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