The World Intellectual Property Office (WIPO)  has released its 2016 Uniform Dispute Resolution Proceedings (UDRP) statistics.  http://www.wipo.int/pressroom/en/articles/2017/article_0003.html. The overall number of new cases increased by 10 percent over the previous year. WIPO indicates that this surge of new cases relates to the new generic Top-Level Domains (gTLDs) that have come online during the year.

Trademark owners filed 3,036 disputes involving a total of 5,374 domain names. It appears that .XYZ (321 domain names disputed), .TOP (153 domain names disputed) were the most common of the new GTLDs to be involved. That number still pales in comparison to the number of domain names disputed in the .COM (3135 domain names disputed), .NET (272 domain names disputed) and .ORG (129 domain names disputed).

The United States accounted for 895 cases being instituted with a corresponding 680 cases where a US entity was the Respondent. France came in second, with 466 cases being brought by a French entity. China took the honors of being the second most likely source of Respondents to actions, with 473 cases.

So, what does this mean? It appears that the original gTLD’s, in particular .COM is still the most contested (and sought after) domain address. That doesn’t appear to be going away anytime soon. It also means that with the increase of the new gTLD’s, trademark owners should consider monitoring their trademarks in the .XYZ and .TOP gTLDs in addition to the .COM gTLD. While it would be great to watch trademarks in all of the new domains, it can be financially prohibitive. Choose your battles, win the big wars.

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Photo of Frances M. Jagla Frances M. Jagla

Fran Jagla represents a range of companies, from Fortune 100 to startup, in trademark issues primarily in regulated industries. World Trademark Review 1000 describes her as a “powerhouse – especially in the pharmaceutical trademarks domain – and an utter delight to work with.”

Fran’s extensive experience in U.S. and international trademark matters includes:

  • Name development,
  • Clearance,
  • Filing,
  • Registration,
  • Regulatory issues,
  • Maintenance,
  • Enforcement of trademarks and copyrights, and
  • Acquisition, divestiture and licensing of intellectual property assets.

She regularly counsels clients in trademark-related acquisitions, divestitures, licensing, internet domain name matters, and regulatory issues in health care and other highly regulated industries, from pharmaceuticals and medical devices to wine and spirits to cannabis and beyond.

Fran’s extensive experience both inhouse and in law firms makes her uniquely qualified to develop the practical, business centric solutions for your issues.  From the “bet the company” projects to the “how do I do this,” Fran provides you with practical business solutions.

She is listed as a top individual in the trademark practice by World Trademark Review 1000, which described her as “skilled, proactive and resourceful,” and commented that Fran’s “celebrated non-contentious skills are put to good use on trademark, labeling and domain name assignments for pharmaceutical manufacturers such as Incyte and Upsher-Smith Laboratories.”