In 2019, trademark owners filed a record 3,693 cases under the Uniform Domain Name Dispute Resolution Policy (UDRP) with WIPO’s Arbitration and Mediation Center (Center). This marks the highest number of cases in one year in the history of the UDRP, which also coincided with the 20th year of the UDRP being in effect. However, filings in 2020 are already on pace to exceed the record 2019 filings, with 1,653 cases filed through May 2020. Please find below a summary of some additional trends and developments from WIPO in recent months.
COVID-19 Related Filings
WIPO has reported a particular uptick in cases in the last several months, including over 50 cases involving domain names relating to the COVID-19 pandemic, notably in the biotech/pharma, Internet/IT, banking/finance, and events-related categories, including disputes concerning the following domain names:
Impact of GDPR and WHOIS Policy Changes
In addition to recent economic changes driving more UDRP usage in recent months, changes to the operation of the WHOIS system of domain name registration data has also likely played some role in the increase in UDRP filings in the last two years. More specifically, redactions of public WHOIS data since May 2018 as a result of GDPR compliance efforts have likely incentivized brand owners to file UDRP complaints more readily as traditional means of enforcement due diligence and registrant direct contact have been eliminated. Policy work within ICANN to develop a system for obtaining disclosure of non-public WHOIS data is ongoing, so it remains to be seen whether such a system will impact UDRP filings.
Updates to ccTLD Dispute Resolution Procedures
In recent weeks and months, WIPO has also instituted some beneficial changes to certain ccTLD dispute resolution procedures. In particular, as of August 1, 2019, the Center started providing domain name dispute resolution services for the .CN and .中国 (China) ccTLDs, pursuant to the China ccTLD Dispute Resolution Policy (.CN Policy), the China ccTLD Dispute Resolution Policy Rules (.CN Rules), and the WIPO Supplemental Rules for China ccTLD Dispute Resolution Policy and China ccTLD Dispute Resolution Policy Rules (WIPO Supplemental Rules). These ccTLD dispute resolution procedures are substantially similar to the UDRP, with the primary substantive differences being: (1) the need to only demonstrate rights in any “name” in which the complainant has civil rights or interests (not necessarily a trademark); (2) the need to only prove either registration or use of the disputed domain name in bad faith, whereas the UDRP requires the complainant to prove both elements; and (3) default language is Chinese and mutual jurisdiction for appeals is the courts of China or arbitration in China.
In addition, as of December 2019, the Center began handling disputes under a UDRP-like process for .COM.UA domain names (it had previously offered this process only for .UA domain names). Similarly to the .CN dispute process, the .UA/.COM.UA process is essentially the same as the UDRP, but requires proving only registration or use of the domain name in bad faith, the language of proceedings is English, Russian or Ukrainian (the default is the language of the registration agreement, as under the UDRP), and mutual jurisdiction for appeals is the courts of Ukraine.
Finally, effective June 1, 2020, WIPO is providing UDRP-like dispute resolution procedures for domain names in the .AC, .IO, and .SH ccTLDs. Cases filed under these procedures are to be filed in English as the default language, and it will be sufficient for the complainant to prove either the registration or the use of the domain name in bad faith.
Winterfeldt IP Group continues to operate remotely and seamlessly and our team is available to assist you with navigating any ongoing or new intellectual property protection and enforcement priorities. If you have any questions regarding this alert or wish to discuss these matters in more detail, please contact any of the following Winterfeldt IP Group team members:
Brian Winterfeldt, firstname.lastname@example.org, +1 202 903 4422
Griffin Barnett, email@example.com, +1 202 759 5836