2018 was a record-setting year for the World Intellectual Property Organization (“WIPO”) as the number of Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) filings hit a new high.  WIPO expects the trend of growing WIPO cases filed to continue as brands attempt to comply with the European Union’s General Data Protection Regulation (“GDPR”). 

According to the WIPO, a new record high of 3,447 complaints were filed with the WIPO in 2018, marking a 12% increase from 2017.  Interestingly, the number of contested domain names, however, was down 11% from 2017.

Factors Affecting WIPO Cases Filed

WIPO believes there are several factors responsible for the jump in number of domain/WIPO cases filed for arbitration.  WIPO believes that the chief reason to be the dismantling of WHOIS.  WHOIS was a free service provided by Internet Corporation for Assigned Names and Numbers (“ICANN”) that allowed the public to search Internet registrar directories to find out the contact, ownership, and technical information connected to a registered domain. 

Despite many objections to the removal of WHOIS, the rollout of the European Union’s GDPR in May of 2018 basically brought down WHOIS because of its more stringent privacy requirements.  Even though WIPO had asked for a year to figure out how to reconfigure WHOIS in a way that could meet the conditions of the GDPR, the European Union declined to give WIPO such time and, as a result, ICANN’s WHOIS went dark. 

As such, WIPO believes that some of the WIPO cases filed in 2018 may simply have been “fishing” suits intended to find out who owned the contested domains.  Whereas WHOIS used to be the standard for finding out owner information regarding domains, many experts believe that filing complaints with WIPO may now take WHOIS’s place in that regard.

2018 WIPO Case Top Filers

In looking at 2018’s statistics, WIPO notes that Philip Morris was the top filer of UDRP complaints with 129 WIPO cases filed, the United States remained first in terms of cases filed (976), and that the banking and finance sector topped all other industries, accounting for 12% of all cases.  And despite the rollout of generic top-level domains (“gTLDs”), .com cases still made up the majority of WIPO cases filed, accounting for almost 73% of the complaints filed last year, while gTLDs only accounted for 13%. 

Rethinking WIPO Case Strategy Going Forward

In the end, WIPO expects that 2019 will continue to see an increase in the number of complaints filed as more and more brands try to comply with the GDPR.  Moreover, because there has been no overarching replacement of WHOIS, WIPO expects that its void will also contribute to increased complaints and WIPO cases filed in 2019.  Lastly, as other countries also begin to pass more stringent privacy regulations, WIPO expects that the public’s lack of access to domain registration information will be reflected in continued increase of “fishing” cases filed.  As such, legal counsel may want to consider working with clients on adjusting intellectual property enforcement budgets as trademark/domain name enforcement may become increasingly difficult as privacy regulations become more prevalent.

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Klemchuk LLP is a litigation, intellectual property, transactional, and international business law firm dedicated to protecting innovation. The firm provides tailored legal solutions to industries including software, technology, retail, real estate, consumer goods, ecommerce, telecommunications, restaurant, energy, media, and professional services. The firm focuses on serving mid-market companies seeking long-term, value-added relationships with a law firm. Learn more about experiencing law practiced differently and our local counsel practice.

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