WIPO Expresses Trademark Concerns On New gTLDs And UDRP Changes… Again

Sounding like a broken record, WIPO has published an update on their activities as an international resource for time- and cost-efficient alternatives to court litigation of intellectual property disputes, acting both as a provider of legal and organisational expertise and as an administrator of cases. In the report WIPO expresses concerns to the introduction of new gTLDs and a revision to dispute resolution under the UDRP with trademark issues at the heart of their concerns.

Included in the report is an update on the domain name-related activities of WIPO covering their administration of domain name disputes under different policies and various related aspects of the Domain Name System (DNS), as well as selected policy developments, in particular rights protection mechanisms (RPMs) for the introduction of new generic top-level domains (gTLDs), the emergence of internationalized domain names (IDNs) as gTLDs, the contentious issue of revision by ICANN of the Uniform Domain Name Dispute Resolution Policy (UDRP), and the status of the recommendations made by the Member States of WIPO in the context of the Second WIPO Internet Domain Name Process.

WIPO expresses concerns regarding proposed revisions to the Uniform Domain Name Dispute Resolution Policy (UDRP) and the introduction of new gTLDs.

Concerns regarding the introduction of new gTLDs are based around Rights Protection Mechanisms such as trademark abuse and the methods of dealing with these problems – a Trademark Clearinghouse and a Uniform Rapid Suspension System, viewing the latter as becoming “an overburdened procedure” with “many issues [remaining] to be addressed.”

In the report WIPO note that “accommodating the dynamic development of the DNS, the UDRP has been offering an effective alternative to court litigation for trademark owners, domain name registrants, and registration authorities. Nevertheless, efforts appear underway at ICANN which risk destabilising this well-respected enforcement tool.”

However many of the issues raised by WIPO, and by American advertising bodies in recent weeks, have been addressed by ICANN. Not that WIPO and the American advertising bodies care to admit as much.

In the report WIPO also notes they have administered more than 21,000 UDRP and UDRP-based cases. WIPO UDRP proceedings have so far involved parties from 163 countries. These disputes have come from over 112 countries in 2010 and 163 countries in total. WIPO also provides dispute resolution procedures for existing gTLDs and 65 ccTLDs. Demand for this WIPO service continued in 2010 with trademark holders filing 2,696 complaints, an increase of 28 per cent over the 2009 level.

The concerns regarding UDRP relate to domainers and the volume of their registration activity. The report expresses concerns regarding “the use of computer software to automatically register (sometimes expired) domain names and their ‘parking’ of often competing advertisements on pay-per-click portal sites. In addition to their value as commercial identifiers, domain names have increasingly taken on aspects of commodities for speculative gain.”

“Whereas traditional domain name abuse involved the registration of domain names by individuals seeking to turn a profit on the ‘squatted’ names, nowadays a growing number of ‘domainers’ are deriving income from the large-scale automated registration of domain names corresponding not only to dictionary terms but also to third-party identifiers.”

To download the full WIPO report in full, go to www.wipo.int/edocs/mdocs/govbody/en/wo_ga_40/wo_ga_40_9.pdf