WIPO publishes case book of domain name decisions

March 2005

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 online 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 online 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."