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Domain disputes rise, but could rocket under ICANN plan says WIPO

The World Intellectual Property Organisation (WIPO) ruled on more domain name disputes last year than ever before but has warned that disputes will rocket if a plan to allow the creation of infinite numbers of domains goes ahead.18 Mar 2009

WIPO's dispute resolution policy (UDRP) is an alternative to court action for people who want to regain control of domain names. It is often used by companies to regain control of domain names held by cybersquatters.

WIPO panels dealt with 2,329 cases in 2007, 8% up on the previous year's total.

Currently only a handful of terms, such as .com or .org, are allowed to be generic top level domains (gTLDs) on the internet. ICANN (Internet Corporation for Assigned Names and Numbers) has proposed allowing the registration of any term as a TLD.

WIPO director general Francis Gurry said that new domains will give cybersquatters countless new opportunities to gain control of domain names to which they have no right.

"Cybersquatting remains a serious issue for trademark holders," he said. "The sale and broad expansion of new top level domains in the open market, if not properly managed, will provide abundant opportunities for cybersquatters to seize old ground in new domains."

"The creation of an unknowable and potentially vast number of new gTLDs raises significant issues for rights holders, as well as Internet users generally,” said Gurry. “If ICANN’s considerations lead it to proceed with the broad introduction of new gTLDs, trademark owners as well as consumers will expect a careful framework to be put into place to address top level operators permitting or undertaking abusive registration practices. "Failure to implement such safeguards carries the risk of stakeholders in the Domain Name System becoming involved in protracted court litigation.”

Rise of cybersquatting cases (source: WIPO)

John Mackenzie is a litigation specialist with Pinsent Masons, the law firm behind OUT-LAW.COM. He agreed with Gurry that new domains could mean more disputes.

"The creation of limitless domains could be a major and costly headache for brand owners. They will not only have to take costly action when they find out about domain names but they will have to spend time and money monitoring an increasing number of domains and some will pay out to defensively register names so that fraudsters can't get them," he said.

WIPO said that 85% of its decisions were in favour of the company looking to gain control of a domain name, while 15% were in favour of the person who already had it. It said that 30% of cases were resolved before a decision was needed.

The US was responsible for 44% of the cases, while the UK was the third heaviest user of the service with 8% of cases. Just under 80% of cases concerned the .com domain.