According to an article in The Guardian, the number of UDRP decisions overthe rotecast 12 months is the highest figure since 2007.
Since July 2012, the World Intellectual Property Organization (WIPO) has decided nearly 3,000 cases of domain disputes. So far this year, the body has ruled on almost 2,000 cases and is on pace to surpass last year’s mark of 2,764, with one of the busiest decision-making periods of the year still to come.
The Guardian attributes this rise, at least in part, to the increasing importance of e-commerce, as a number of high-profile fashion houses have looked to WIPO to seize domain names this year. Armani, Burberry, and Dior are just a few of the brands that have filed multiple complaints with the organization this year in attempts to combat trademark infringement and the sale of counterfeit goods.
British Vogue reports that Gucci, for example, has already submitted six UDRP complaints this year, earning victories that resulted in the transfer of over 100 different domain names. Most of the contested domains employ similar combinations of the trademarked name and words like “cheap,” “sale,” and “shop” to try to maximize hits from Internet users looking for specific brands.
Most of the brands in question will not use the domains in question to sell goods or services themselves. They typically are seeking to prevent cybersquatters from using their trademarks for personal gain. As cases like the National Arbitration Forum’s (NAF), recent decision on the domain MyFakeOakleySunglasses.com show, however, only specific cases fall within the guidelines of a UDRP complaint. NAF ruled that, despite the inclusion of the Oakley mark and the obvious bad-faith use of the domain name, the inclusion of the word “fake” prevented the mark from being “confusingly similar” to users and qualified this as a case of copyright infringement, not domain dispute. Brands looking to win domains through UDRP complaints should consider WIPO and NAF their allies against cybersquatters, but they should also make sure they are correctly using the UDRP tool when they do so.
The current figures show that brands are becoming increasingly active in protecting their trademarks online, a trend that should only continue through the rest of the year. However, while there are some big opportunities to reclaim valuable names, it is unsustainable and unnecessary to pursue all opportunities. Brands should prioritize reclaim according to the value of the domain.
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