Domain Dispute Digest - GigaLaw's - Second Quarter, 2021
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GigaLaw’s Domain Dispute Digest Second Quarter, 2021
Q2 2021 • 2
Domain Name Disputes
See Busiest Month on Record
As the second quarter of 2021 came to an end, WIPO – the
most active of the six UDRP service providers – reported that
“June 2021 has been the busiest filing month since WIPO
commenced this service over 20 years ago.”
The GigaLaw estimate on page 3 shows that domain name
disputes are on track for an eighth consecutive year of growth,
and possibly in a big way: If current trends continue, the number
of cases could rise as much as 19 percent, nearly doubling the
number of disputes per year since 2013.
Doug Isenberg And this trend is true for all of the UDRP providers, with varying
Attorney and increases across the board. Since the numbers on page 3 are
Founder of GigaLaw only a snapshot, here’s what they mean in context for each
provider's UDRP caseload in the quarter:
Doug@Giga.Law
WIPO: +15.8 percent
Forum: +1 percent
CAC: +36.7 percent
HKIAC: +105.3 percent
CIIDRC: +33.3 percent
(The Arab Center for Dispute Resolution (ACDR) did not publish
any decisions in Q2 and only published one in Q1.)
The ongoing COVID-19 pandemic is partly responsible for this
increase (as cybersquatters seek new opportunities to profit by
targeting trademark owners), but it also seems as if more brand
owners of all sizes are learning about and taking domain name
disputes more seriously than at any time in the past.
For some insights from the newest UDRP service provider, the
Canadian International Internet Dispute Resolution Centre
(CIIDRC), see my interview on page 9.
Q2 2021 • 3
Number of UDRP Decisions and Domain Names
3,500
+13.8% 3,000
2,500
UDRP decisions since last quarter
2,000
1,500
+24.7% 1,000
500
UDRP domain names since last quarter 0 1,618 3,080
Decisions Domain Names
WIPO Forum CAC HKIAC CIIDRC
913 UDRP Cases 494 UDRP Cases 164 UDRP Cases 39 UDRP Cases 8 UDRP Cases
WIPO Domain Name Cases by Year
5,000
4,500
4,000
3,500
3,000
2,500
2,000 Estimated
1,500
1,000
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At WIPO, the leading UDRP service provider, the number of domain name disputes continues
to surge, rising about 19% thus far in 2021 versus the same period of time in 2020. If the trend
continues, the number of disputes filed in 2021 will yet again set a record high. (Note: Data on
this graph includes all domain name dispute policies administered by WIPO, including cases
outside of the UDRP, such as ccTLD-specific policies.)Q2 2021 • 4
UDRP Outcome
Cancelled 0.31%
Denied 4.69% As always, the overwhelming
majority of trademark owners
continue to win their UDRP
disputes, with 95% of domain
names in the quarter resulting in
decisions to transfer.
Transferred 95.00%
Largest UDRP Cases
The largest UDRP Complainant Case No. No. of Domains
complaint of the quarter Clorox WIPO D2021-0781 367
was filed by Clorox, the
Gucci WIPO D2020-3211 204
manufacturer of cleaning
Lego WIPO D2020-3305 79
products. Like other recent
domain name disputes, Instagram WIPO D2021-1294 73
the cybersquatter in this Instagram WIPO D2021-1125 33
case took advantage of Dareos WIPO D2021-1089 30
the COVID-19 pandemic, Hackensack Meridian Health Forum 1941397 27
using the domain names
Country Mutual Insurance Forum 1944350 24
to advertise cleaning
Wolverine World Wide Forum 1942949 20
products from various
brands, including Clorox’s Google Forum 1941377 17
competitors.Q2 2021 • 5
Most Common gTLDs in UDRP Cases
Two new gTLDs – .com 1,864
.shop and .xyz –
.shop 412
captured an
unusually large .xyz 140
percentage of 118
.org
disputed domain
.net 93
names in the
quarter (with many .online 47
of the .shop
.store 43
domain names
appearing in the .club 36
Clorox case .top 24
discussed on
.info 20
page 4).
0 200 400 600 800 1,000 1,200 1,400 1,600 1,800 2,000
Most Common ccTLDs in UDRP Cases
Given its similarity to .com, the
.co (Colombia) 42
.co ccTLD remains a common
.cc (Cocos Islands) 17 target for cybersquatters.
Another popular ccTLD, .cc, saw
.me (Montenegro) 7
a spike in UDRP cases,
appearing 14 times more
.ro (Romania) 4
frequently in disputed domain
.tv (Tuvalu) 2 names than in the previous
quarter.
.pw (Palau) 1
0 5 10 15 20 25 30 35 40 45Q2 2021 • 6
Most Active Trademark Owners (UDRP Cases)
Boehringer Ingelheim Pharmaceutical 34
Philip Morris Tobacco 25
Boursorama Banking 24
Fenix Entertainment 23
Sodexo Food service, faciilties management 21
Google LLC Internet services 21
Intesa Sanpaolo Banking 20
Morgan Stanley Financial services 20
Instagram Social media 19
Dell Computers 16
IBM Technology 16
0 5 10 15 20 25 30 35 40
Most Active Trademark Owners (Domain Names in UDRP)
Clorox Cleaning products
Gucci Fashion brands
Instagram Social media 129
Lego Toys 88
Google Internet services 69
Boehringer Ingelheim Pharmaceutical 51
Dareos Online gaming, casinos 35
Wolverine World Wide Footwear 33
Philip Morris Tobacco 32
Boursorama Banking 32
Fenix Entertainment 32
0 20 40 60 80 100 120Q2 2021 • 7
Number of URS Decisions and Domain Names
45
-19.4% 40
35
30
URS decisions since last quarter
25
20
15
+17.1% 10
5
URS domain names since last quarter 0 25 41
Decisions Domain Names
URS or The URS is less expensive than the UDRP, but it does not
apply to .com, and it only allows a trademark owner to
UDRP? temporarily suspend (not transfer) a disputed domain name.
Returned 0 URS Outcome
While the URS, like the UDRP, has always
resulted in a high number of decisions in
favor of trademark owners, 100% of all
URS decisions in the quarter resulted in
suspensions. However, the number of
URS cases actually fell, indicating the
ongoing unattractive nature of the URS
process, although one unusually large
URS case, filed by Zulily (which operates
a shopping site) for 10 domain names
helped result in an increase in the total
Suspended 41 number of domain names in URS cases
this quarter.Q2 2021 • 8
Most Active Trademark Owners (URS Cases)
Given the small number of URS
Zulily Shopping
cases, this list shows all trademark
E.Leclerc Shopping owners that pursued more than
one domain name through the
BNP Paribas Banking URS process during the quarter.
Ferring Pharmaceutical
Global Name
Law firm (DLA Piper)
Services
Philip Morris Tobacco
0 1 2 3 4 5 6 7 8 9 10
Top gTLDs in URS Cases
10 In addition to those gTLDs shown to
the left, each of the following appeared
in one URS case in the quarter:
.club .website
.site .vip
5
.link .org
.today .work
.solutions .scot
.store .cloud
.icu .cam
0 10 6 3 3 2 2 .fun
.shop .top .ltd .online .xyz .sucksQ2 2021 • 9 Spotlight: Inside the CIIDRC In a new video interview available on YouTube, Doug Isenberg of GigaLaw interviews two guests from the Canadian International Internet Dispute Resolution Centre (CIIDRC): Barry Penner, Managing Director of the Vancouver International Arbitration Centre, of which CIIDRC is a division; and Ina Ergasheva, CIIDRC's assistant director. CIIDRC is the newest of the six UDRP service providers, although it has been offering domain name dispute services under the .ca (Canada) top-level domain for a number of years. In the video, Doug talks with Barry and Ina about how CIIDRC became a UDRP service provider, the resources it offers to complainants and respondents, and filing trends. They also discuss how the pandemic has affected its operations and domain name disputes in general. “Our goal is to have a streamlined process, to keep it straightforward and simple and clean, in order to help distinguish ourselves and make us a service provider that people would want to use,” Barry tells Doug in the interview. To watch the interview, visit the GigaLaw YouTube channel at www.youtube.com/GigaLaw or go directly to www.youtu.be/CgjBUQzICQw
Q2 2021 • 10 About Domain Name Disputes and GigaLaw This report focuses primarily on the Uniform Domain Name Dispute Resolution Policy (UDRP), the ICANN policy that provides trademark owners with an inexpensive and quick legal process to combat cybersquatting. It applies to .com and all of the global or generic top-level domains (gTLDs), as well as about 40 country- code top-level domains (ccTLDs). This report also includes data on the Uniform Rapid Suspension System (URS), a more limited policy that primarily addresses only disputes in the new gTLDs (.aaa to .zuerich) created in recent years. Doug Isenberg (right), founder of GigaLaw and one of the world’s most active domain name attorneys, frequently represents trademark owners under the UDRP, the URS and ccTLD-specific policies. He filed the largest UDRP complaint ever, for more than 1,500 domain names, in 2009. He also serves as a domain name panelist for five of the six UDRP service providers, including the World Intellectual Property Organization (WIPO) and the Forum. The World Trademark Review has said that Doug is “a whiz on all things to do with Internet law and domain names.” For more information, visit www.Giga.Law or email Doug@Giga.Law This issue of GigaLaw’s Domain Dispute Digest includes UDRP data from WIPO, the Forum, CAC, ADNDRC’s Hong Kong office (HKIAC), and CIIDRC; and URS data from the Forum and MFSD. Analyzed data is from April 1-June 30, 2021, unless otherwise noted. This report is for general informational purposes only, provides only a summary of specific issues, and is not intended to be and should not be relied upon as legal advice regarding any specific situation. This report is not intended to create, and does not constitute, an attorney-client relationship. Readers should consult with legal counsel to determine how laws, policies or decisions and other topics discussed in this report apply to the readers’ specific circumstances. This report may be considered attorney advertising under court rules of certain jurisdictions. Copyright © 2021 The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC.
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