“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.
Though the geographical spread of named parties to WIPO UDRP cases (gTLD and ccTLD) reached 137 countries at the end of December 2006, the most frequently named party country both for complainants and for respondents continued to be the United States of America (USA). The most frequently named complainant countries in gTLD cases after the USA were France, United Kingdom, Germany, Spain, Switzerland, Italy, Canada, Australia, and Netherlands. The most named respondent countries after the USA were the UK, China, Republic of Korea, Canada, Spain, France, Australia, Italy, and Russia. A full overview of all countries involved is available at http://www.wipo.int/amc/en/domains/statistics/cumulative/countries.html.
The number of ccTLD registries which have designated WIPO to provide domain name dispute resolution services is 47. The full list of these countries is available at http://www.wipo.int/amc/en/domains/cctld. A new addition in 2006 was the .es (Spain) domain. Under the applicable regulations, established in consultation with the WIPO Center, a claimant must prove to a WIPO-appointed Spanish panelist that the registration or use of a .es name constitutes an infringement of intellectual property rights protected in Spain.
The new ‘sponsored’ gTLD <.mobi> was launched in May 2006 by the registry, Mobile Top Level Domain Ltd. (mTLD), as a domain “dedicated to delivering the Internet to mobile devices.” As with all gTLDs, the UDRP applies to .mobi. In addition, two separate domain-specific procedures were created and administered by the WIPO Center at the request of and in collaboration with the registry.
On October 10, 2006, WIPO received the first UDRP complaint involving a name in the .mobi gTLD. The parties, both from the UK, disputed the name screwfix.mobi.
The combined effect of developments such as: the use of ‘Whois’ privacy services for registrations; the growth in the number of professional domain name dealers and the volume of their activity; 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 for free for a five-day ‘tasting’ period; the growth in the number of accredited registrars; and the establishment of new gTLDs, is to create greater opportunities for mass registration of domain names. Such registrations are often anonymously undertaken on a serial basis without particular attention to third-party intellectual property rights. Traditionally, cybersquatting involved the registration of domain names by individuals seeking to sell the ‘squatted’domain name. Nowadays, ‘domainers’ derive income from the large-scale automated registration of domain names. They acquire domain name portfolios, buy and sell domain names, and park domain names, claiming a significant share of the well over 100 million domain names that are now registered.
The UDRP, which was proposed by WIPO in 1999 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 name 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.
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