Trademark owners filed a record 3,447 cases under the Uniform Domain Name Dispute Resolution Policy (UDRP) with WIPO’s Arbitration and Mediation Center in 2018 as businesses reacted to the proliferation of websites used for counterfeit sales, fraud, phishing, and other forms of online trademark abuse. (Annex 1 )
WIPO Director General Francis Gurry said: “Domain names involving fraud and phishing or counterfeit goods pose the most obvious threats, but all forms of cybersquatting affect consumers. WIPO’s UDRP caseload reflects the continuing need for vigilance on the part of trademark owners around the world.”
WIPO’s 2018 caseload covered 5,655 domain names in total. Disputes involving domain names registered in new generic Top-Level Domains (gTLDs) accounted for some 13% of the total, with disputes most commonly found in .ONLINE, .LIFE, and .APP (Annex 2 ). Representing 73% of the gTLD caseload, .COM demonstrated the continuing popularity of the legacy gTLDs.
WIPO UDRP cases in 2018 involved parties from 109 countries. The U.S., with 976 cases filed, remained the first-ranked filing country, followed by France (553), the U.K. (305), Germany (244), and Switzerland (193). (Annex 3 )
The top three sectors of complainant activity were banking and finance (12% of all cases), biotechnology and pharmaceuticals (11%), and Internet and IT (11%). (Annex 4 ) Annex 5 provides the list of top WIPO UDRP filers in 2018 .
Cases were decided by 318 panelists from 54 countries in 2018. The WIPO Center administered cases in 19 different languages.
WIPO also provides its domain name services for over 75 Country Code Top-Level Domains (ccTLDs). The domains. AI (Anguilla), .GE (Georgia), and .PY (Paraguay) were added in 2018. Disputes involving domain names registered in ccTLDs accounted for nearly 500 cases, almost 15% of WIPO’s 2018 caseload. WIPO significantly overhauled and expanded its posted party resources for ccTLD disputes.
Recently introduced provisions, such as the European Union’s General Data Protection Regulation(GDPR), are affecting the accessibility of registrant information in “WhoIs” domain name databases. In response to these developments, the WIPO Center in 2018 published informal guidance for trademark owners exploring UDRP filing and it remains involved in ICANN discussions on a WhoIs access solution.
Mediation and arbitration of intellectual property disputes
In 2018, the WIPO Center received 60 mediation, arbitration, and expert determination cases in different areas of intellectual property (IP), an increase of 15% over the previous year. The WIPO Center also handled 95 good-offices requests. (Annex 6 )
Patent-related disputes are the most common in WIPO’s caseload, followed by information and communications technology (ICT), trademark, and copyright disputes. WIPO cases include transactions such as R&D agreements, patent licensing agreements, trademark co-existence agreements, distribution agreements, software agreements, film co-production agreements, and consortium agreements. (Annex 7 )
Companies, including multinationals and small- and medium-sized enterprises (SMEs), were the most frequent users of WIPO mediation and arbitration, followed by individuals, research institutions and universities, as well as copyright collective management organizations. Europe remains the most frequent location of parties (53%), followed by North America, Asia, Latin America, and Africa. (Annex 7) Nearly 60% of cases involve parties that also use WIPO’s PCT, Madrid, or Hague Systems.
In 2018, the WIPO Center began collaborations with 15 additional national IP and Copyright Offices for the promotion of Alternative Dispute Resolution (ADR) options and their possible combination with these institutions’ existing services. The WIPO Center now engages with some 39 IP Offices (IPOs) around the world. (Annex 8 ) During the 2018 WIPO Assemblies, the WIPO Center presented a new edition of the WIPO Guide on ADR Options for IPOs and Courts.
Developments relating to WIPO mediation
In 2018, the WIPO Center made available a new Model Clause “WIPO Mediation followed, in the absence of a settlement, by court litigation.” It also published a new Guide to WIPO Mediation, freely available online. Drawn from the WIPO Center’s case experience, the Guide’s ‘hands-on’ approach leads readers through the steps of a mediation, while highlighting available resources to assist parties along the route.
The WIPO Center also launched the WIPO Mediation Pledge for IP and Technology Disputes. Without binding them, individuals, firms, and associations who join the Pledge assert their willingness to consider mediation in IP and technology disputes.
America’s Cup Arbitration Panel
The WIPO Center has made available to the America’s Cup Arbitration Panel (ACAP) its online case communication tool for managing disputes filed with ACAP in the upcoming 36th edition of the America’s Cup sailing race series. The racing parties now have a centralized and efficient platform for resolving legal issues among them.
WIPO Arbitration and Mediation Center
Based in Geneva, Switzerland, with an office in Singapore, the WIPO Arbitration and Mediation Center offers efficient Alternative Dispute Resolution options for resolving technology, entertainment and other disputes involving IP outside the courts.
The WIPO Center is also the global leader in the provision of domain name dispute resolution services under the WIPO-designed UDRP, handling cases from trademark owners from around the world.