In an interesting turn of events, Apple was awarded the iPods.com domain name – for free.

How did this happen you ask? Well the World Intellectual Property Organization (WIPO) ordered MP3Gold.com to transfer the domain over to Apple, on the grounds of trademark infringement. One perplexing question during all of this was… why did Apple wait nine years after the launch of the iPod to go after the iPods.com domain name.

Seeing how they just filed the official complaint with the WIPO at the end of May, this was a very quick victory for Apple. Will we see Apple start taking advantage of the Uniform Domain Name Dispute Resolution Policy (UDRP) more often? Or, will they return to their old ways… throw money at the problem until it goes away.

Exactly 2,329 complaints were filed in 2008 under the Uniform Domain Name Dispute Resolution Policy (UDRP).  This represented an increase of eight percent over 2007′s levels and the continuation of a years-long trend.  (MarkMonitor offered an even scarier take last week.)

 WIPO Domain Name Cases

As for the future, ICANN’s getting ready to introduce new generic top level domains, and Francis Gurry, WIPO’s Director General, stated, "The creation of an unknowable and potentially vast number of new gTLDs raises significant issues for rights holders, as well as Internet users generally.  Cybersquatting remains a serious issue for trademark holders. . . .  [T]he sale and broad expansion of new top level domains in the open market, if not properly managed, will provide abundant opportunities for cybersquatters to seize old ground in new domains."

Companies may do well to register domain names defensively, then, even if they’re quite happy with their existing networks of sites.  Better to pay a small amount of money now than go through a huge hassle later.

Here’s one bit of good news, though: when it does come to a fight, the squatters usually lose.  A full 85 percent of WIPO panel decisions favored the complainants in UDRP or UDRP-related cases.

Richard and Gillian Saville-Smith, of Edinburgh, paid $140 to buy the domain name Narnia.mobi from the Internet registration company Fasthosts in 2006 so their son could use it as an email address.

The C.S. Lewis Company, owner of the author’s estate requested they return the domain name but the family refused. The family then received a 128-page legal complaint filed with the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.

"We’d been saving it as a surprise for our little boy’s birthday, to coincide with the release of the Narnia film," Mrs. Saville-Smith told Reuters referring to the British release of "The Chronicles of Narnia: Prince Caspian."

"Our whole family are great admirers of C.S. Lewis and he must be turning in his grave about all this," added Mrs. Saville-Smith, who is an award-winning Scottish poet.

The family must respond to WIPO by June 23 and the group will make a ruling within a month.

Mr. Saville- Smith said he has never made any money from the domain name and has no interest in using it to generate a profit.

"We don’t have the money to hire intellectual property lawyers, so we’re saying ‘help’. One thing for sure is that our response won’t be 128 pages long, it will be more like 10 pages — we’re looking at quality rather than quantity."

No matter which way WIPO rules the decision can be appealed by either party.

The U.N. agency based in Geneva, received 2,156 complaints alleging abusive registration trademarks on the Internet representing an 18 percent increase over 2006 and a 48 percent increase over 2005.

"These increases confirm that ‘cybersquatting’ remains a significant issue for rights holders," said Mr. Francis Gurry, WIPO Deputy Director General, who oversees WIPO’s dispute resolution work, noting that a number of developments in the DNS are also cause for concern from the perspective of intellectual property holders, as well as Internet users generally.

The majority of complaints came from pharmaceuticals, banking, and Internet, retail and entertainment industries.  Pharmaceutical makers remained the top filers due to "numerous permutations of protected names registered for web sites offering or linking to online sales of medications and drugs," WIPO said.

WIPO parties settled a quarter of all cases without a panel decision. Of the remainder, 85 percent of the panel decisions ordered the transfer of the domain names in question to the complainant and 15 percent of the complaints were denied, leaving the names in the possession of the registration holder.

Most of the complaints came from the U.S., France and Britain, while respondents were mainly in China, Britain and the U.S.
 

 Rupert Murdoch (Photo Credit: BusinessWeek)

WDS registered foxbusinessnetwork.com on the same day Rupert Murdoch announced a new business channel.  This seems suspicious, but it took the Fox corporation a while to register any trademarks, giving WDS an undeniable lead in one area.

Also, it looks like WDS – along with its CEO, Derek Hodges – has some prior claims to the name.  The WIPO ruling states, "Although the evidence is slender, Respondent has provided some proof (the Hodges and Clough declarations and the 2006 website printout) that Mr. Hodges was known by the nickname ‘the British Fox’ and that his company . . . operated an active and bona fide business that used the term ‘Fox Business Network’ in its promotion for several years before this dispute arose."

Other aspects of the Fox News Network’s complaint lacked solid evidence to back them up.  WIPO found the collision of registration and announcement dates "suspicious (and not adequately explained be [sic] Respondent)," but could only conclude that WDS’s action represented a sort of defensive gesture.

A future lawsuit or sale may still keep the matter from being completely closed.