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SYS-CON MEDIA Authors: Jnan Dash, Kevin Jackson, Peter Silva, Greg Wind, Glenn Rossman

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.com Likely to Continue to Dominate Domain Disputes as New gTLDs Loom: Report

While the imminent arrival of more than a thousand new generic top-level domains (gTLDs) has stoked concerns that cybersquatting will skyrocket, a new report released today analyzing 2012 domain dispute trends indicates America’s big brands have their hands full dealing with existing domains like .com. Melbourne IT Digital Brand Services (DBS) Report, which analyzed domain dispute data from the World Intellectual Property Organization (WIPO), shows that .com was the domain most recovered from cybersquatters by brands, with more than 3,475 domain names − nearly triple the number of disputes in all other gTLDs combined. The first full year of operation for the .xxx domain yielded only 16 disputes filed with WIPO (see infographic).

“The domain industry and America’s big brands have been looking for evidence to shed light on the predictions that the arrival of potential new gTLDs such as .web, .home and .sucks will drive cybersquatting to new highs, and the first year of .xxx has been closely watched as an indicator,” said Melbourne IT DBS Executive Vice President, Martin Burke.

“Some will be quick to point out that 16 cases show the fears are just hype, but that ignores the fact that around 80,000 trademarks were registered in .xxx to protect brands before the gTLD even went live. What is more compelling is that .com accounts for 68% of WIPO domain disputes, and in our view that percentage is likely to remain high once the new gTLDs arrive, meaning the biggest problem for brands is actually one they are already having to deal with,” he said.

“However, we do agree with trademark holders that it is likely cybersquatting cases will occur at the second level of new gTLDs, so it is imperative that brands prepare now by considering which trademarks will need to be registered in ICANN’s Trademark Clearinghouse and by developing their domain registration strategy for both protecting and promoting their brands in the new domains.”

Available for download, other key WIPO data analyzed in the Melbourne IT DBS Report includes:

  • UDRP cases rose 4.3% year on year to 2,884, covering a record 5,082 domain names
  • 88% of complaints in 2012 were upheld, compared to the 85% average, indicating brands are getting better at choosing when and how to file effective UDRP actions
  • Among the brands that filed UDRP cases with WIPO in 2012 were Apple, Dyson, IKEA, IBM, Intel, LEGO, McDonald’s, Pfizer, Royal Bank of Scotland, and many others
  • Among the Top 10 countries for UDRP complainants, in 2012 compared to 2011:
    • Italy and Germany increased the number of cases filed by 70% and 63% respectively
    • USA saw complainant case filings decline 14%, for a total of 798 cases in 2012
    • Liechtenstein saw cases skyrocket 411%, from 18 to 92
  • Among the Top 10 countries for UDRP respondents, in 2012 compared to 2011:
    • USA remained the greatest source of squatters but saw no year-on-year change in volume
    • China’s domain dispute level grew 47%, making it a bigger hotspot for cybersquatting
    • UK saw an 8% uptick in squatters, with 192 UDRP cases filed
    • France, India, Canada, Australia, Spain, and Netherlands saw a decrease in cases

With more than 1,000 new gTLDs expected to be introduced to the Internet beginning this year, ICANN has designed the Trademark Clearinghouse (TMCH) as a single database of authenticated registered trademarks to help protect brands and their intellectual property rights. The TMCH will act as a central repository where submitted trademark information will be validated and checked by an ICANN-approved agent, currently managed by consulting firm Deloitte.

“With approved new domains due to start being delegated from mid-2013 at the rate of 20 per week, organizations now need to begin thinking about which of their trademarks are most at risk of abuse online and should be registered in the Trademark Clearinghouse. While the Trademark Clearinghouse won’t prevent cybersquatting in the new gTLDs, it is an important service that will streamline the registrations of domain names related to trademarks during the sunrise process of each new gTLD, and provide validated trademark information to support dispute resolution,” Mr Burke said.

Melbourne IT DBS operates the industry’s leading domain recovery and enforcement service with more than 800 UDRPs filed since 2005 and a UDRP success rate of 99%, well above the industry average. In 2012, Melbourne IT DBS recovered 725 disputed domain names on behalf of brands worldwide.

WIPO is the largest of the four ICANN-approved Uniform Domain Name Dispute Resolution (UDRP) providers and the only organization providing on-demand public access to UDRP statistics. With no single comprehensive data source on the cybersquatting problem, the WIPO data analyzed by Melbourne IT DBS provides representative insight into cybersquatting and recovery actions by brands.

For more information on Melbourne IT DBS’ industry-leading domain recovery and enforcement services, visit www.melbourneitdbs.com/udrp. Melbourne IT DBS is a global organization and has brand protection specialists located in North America, Europe and Asia-Pacific.

About Melbourne IT Digital Brand Services

Melbourne IT DBS helps organizations manage, protect and optimize online brands to maximize the value of online assets. The Company helps clients minimize risk and make smarter decisions in managing online presence. The Company’s 3,800 clients include some of the world’s most recognizable brands. Headquartered in Santa Clara, CA, Melbourne IT DBS maintains 15 offices in 10 countries, and is a division of the listed Melbourne IT Group (ASX: MLB). For more, visit www.melbourneitdbs.com

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