The World Intellectual Property Organisation has published an
overview of trends in its 7,000 domain name dispute decisions since
1999. It is, in effect, a free on-line case book about
cybersquatting that can help parties to gauge their chances before
action.
All decisions under the Uniform Domain Name Dispute Resolution
Policy (
UDRP
) – the guidelines for deciding most .com,
.net and .org domain name disputes – have been available on-line
for the past six years. But this is the first time that
WIPO has
compiled comprehensive guidance on how its panellists have
interpreted the UDRP.
The research considers common and important substantive and
procedural questions that have been extracted from the cases
through February 2005.
For example, to convince a
WIPO
panellist that
someone is cybersquatting on your brand, you need to show that the
disputed domain name is identical or confusingly similar to your
trade mark. If someone registers a "sucks" site – e.g.
nikesucks.com – is that confusingly similar to Nike's trade
mark?
The answer is generally yes, according to the research. The
majority view is that: "A domain name consisting of a trade mark
and a negative term is confusingly similar to the complainant's
mark." A brief explanation follows: it may be, for example, that
the non-fluent English speakers would not recognise the negative
connotations of "sucks."
This does not mean that all "sucks" complaints will succeed.
Under the
UDRP
, a complainant must also show 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.
With an FAQ approach, the 26
questions include, for example, can a reseller have a right or a
legitimate interest in the disputed domain name?; and what is the
role of a disclaimer on the web page of a disputed domain name?
"By offering a concise overview of
UDRP
decision
trends, this new tool will further enhance the consistency and
reasoning of decisions taken under the
UDRP
and will
help parties to better assess their chances under the
UDRP
," said Francis Gurry,
WIPO
's Deputy
Director General, who oversees the work of
WIPO
's
Arbitration and Mediation Center.
