WIPO Cybersquatting Cases Reach New Record in 2017
Three industries – banking and finance, fashion, and internet and IT – accounted for nearly one-third of all cybersquatting disputes handled by WIPO’s Arbitration and Mediation Center in 2017 as trademark owners filed an all-time high of 3,074 WIPO cases under the Uniform Domain Name Dispute Resolution Policy (UDRP).
Cybersquatting disputes relating to new generic Top-Level Domains (New gTLDs) accounted for more than 12% of WIPO’s 2017 caseload, which in total covered 6,370 domain names. Of all New gTLDs, registrations in .STORE, .SITE, and .ONLINE were the most-commonly disputed. With the addition in 2017 of .EU (European Union) and .SE (Sweden), 76 Country Code Top-Level Domain (ccTLD) registries have now designated WIPO’s dispute resolution service, and ccTLDs accounted for some 17% of WIPO filings in 2017.
WIPO Director General Francis Gurry said: “By abusing trademarks in the Domain Name System, cybersquatting undermines legitimate commerce and harms consumers. This is true especially where squatters use domain names to offer counterfeit goods or for phishing, as is seen in numerous WIPO cases. The availability of the highly effective UDRP procedure is an indispensable support for the credibility of commerce on the Internet and for protection against fraudulent practices.”
The U.S. remained the country where most WIPO UDRP cases originated, with 920 cases filed in 2017, followed by France (462), the U.K. (276), Germany (222), and Switzerland (143). (Annex 3PDF, Annex 3: Geographical Distribution of Parties in WIPO Domain Name Cases Top 25 (2017)). In total, parties from 112 countries were involved in case filings in 2017. In 2017, WIPO appointed 298 panelists based in 45 countries, and administered proceedings in 15 different languages.
The top sectors of complainant activity were banking and finance (12% of all cases), fashion (11%), internet and IT (9%), heavy industry and machinery (8%), and food, beverages and restaurants, biotechnology and pharmaceuticals, electronics, entertainment, and retail at 6% each.
In almost one-third of banking and finance-related decided cases filed in 2017, complainants asserted fraud, phishing or scam, the highest rate among all business sectors. In over one-third of fashion-related decided cases filed in 2017, complainants asserted counterfeiting, the second highest rate among all business sectors.
Philip Morris leads the list of filers – 91 cases – followed by Michelin, AB Electrolux, Andrey Ternovskiy (Chatroulette), Sanofi, Zions Bank, Carrefour, Virgin, Accor, and BASF and LEGO.
WIPO in 2017 launched an all-new edition of the WIPO Jurisprudential Overview. Covering over 100 topics, this essential WIPO case filing tool captures numerous developments in WIPO UDRP jurisprudence and the Domain Name System.
Since the WIPO Arbitration and Mediation Center administered the first UDRP case in 1999, total WIPO case filings passed the 39,000 mark in 2017, encompassing over 73,000 domain names.
Intellectual property disputes
In 2017, the WIPO Center received 52 mediation and arbitration cases and 84 good offices requests for different types of intellectual property (IP) disputes. In recent years patent-related disputes have been most common, followed by ICT, trademark, and copyright disputes. Europe remains the most frequent location of parties (51%), followed by North America, Asia, and Latin America. WIPO cases concerned such transactions as R&D agreements, distribution agreements, software agreements, film co-production agreements and non-disclosure agreements.
WIPO mediation was the most requested procedure, followed by expedited arbitration and arbitration. A growing share of these cases related to non-contractual disputes filed after the dispute had arisen, including proceedings that had been pending before national courts or before member state IP Offices.
In 2017, companies, including multinationals and SMEs, were the most frequent users of WIPO mediation and arbitration, followed by individuals, research institutions and universities, as well as copyright collecting societies. Nearly 60% of cases involve parties which also use WIPO’s PCT, Madrid or Hague Systems.
Building on similar cooperation previously established with other member states, the WIPO Center in 2017 commenced 12 new collaborations with national IP and Copyright Offices. Cooperation options include the establishment of Alternative Dispute Resolution (ADR) frameworks, the organization of training and promotion, and case administration.
The WIPO Center published the Guidance on WIPO FRAND ADR, Guidance on WIPO FRAND ADR to facilitate the submission of disputes concerning fair, reasonable and non-discriminatory (FRAND) terms for standard-essential patents (SEPs). WIPO’s World Intellectual Property Report 2017 noted that up to 35% of patents filed worldwide since 1990 relate to smartphones, with a relatively high share of smartphone patenting relating to SEPs. The Guidance on WIPO FRAND ADR covers elements for parties to consider in an ADR process, and includes tailored model submission agreements to refer a FRAND-related dispute to WIPO procedures as an alternative to court litigation.
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