White Paper Cybersquatting 2011

www.KeepAlert.com The Brand Monitoring Department of Systonic

White Paper

Cybersquatting 2011

International Corporate account manager: Director of the publication: Stéphanie Lacroix Jean-François Poussard Email: [email protected] Director Keep Alert Telephone: + 33 (0)5 57 26 44 52 Email: [email protected] Mobile: + 33(0)6 14 14 51 72 Telephone: + 33 (0)5 57 26 44 47 Twitter: @keepalert Mobile: + 33 (0)6 29 40 62 42 Twitter: @keepalert

Systonic (RCS B 34938634200092) 2-4 Avenue Eugène. Chevreul, 33600 Pessac, France Tel. +33 (0)5 57 26 44 44 – Fax : + 33 (0)5 24 84 32 25 Email: [email protected] Reproduction prohibited without permission www.KeepAlert.com The Brand Monitoring Department of Systonic

Summary About Keep Alert ...... 3 Systonic, Complementary IP expertise: Internet Protocol – Intellectual Property ...... 4 Keep Alert Cybersquatting White Paper ...... 5 Arbitration Decisions ...... 6 Spelling of disputed domain names ...... 8 Domain names that contain a trademark ...... 8 Domain names that are identical to a trademark ...... 11 Typosquatting ...... 11 Domain extensions used for cybersquatting ...... 13 Uses of disputed domain names ...... 14 Inactive domain names ...... 14 Parking pages...... 14 Online stores ...... 15 Phishing, PornSquatting… ...... 17 Cybersquatters and claimants ...... 19 Nationalities ...... 19 Claimants ...... 19 Respondents ...... 19 Companies that are active in the fight against cybersquatting ...... 19 WIPO ...... 19 NAF ...... 21 Comparison of Arbitration Centers ...... 23 Respondents ...... 23 Claimant representatives ...... 23 WIPO ...... 23 NAF ...... 24 Registrars ...... 25 Uses of domain names following dispute decisions ...... 27 Inactive domain names ...... 27 Domain names with parking pages ...... 27 Active domain names ...... 28 Cancelled domain names ...... 30

About Keep Alert

Keep Alert monitors brand and trademark usage online:  Domain Names (cybersquatting): newly registered domain names, abandoned domain names and (exclusive to Keep Alert) content change alerts covering all domain extensions. Results are automatically categorized by their content (advertising links, online store, pornography…)  Sponsored Links (Google Adwords)  Social Media: Facebook, Twitter, Wikipedia, YouTube...

All results are recorded with timestamped screen shots.

The Keep Alert domain name module covers all generic domains (.COM, .NET, .ORG...), countries (.FR, .DE, .CO.UK...) and SLDs (e.g. .COM.FR), covering some 750 domain extensions.

 Identify domains that are identical to your brand (e.g. iphone.de)  Identify domain names that contain your brand This report provides all domain names that contain the exact name of your brand (e.g. telephoneiphone-pascher.fr) It also identifies dotsquatting domains (e.g. www in front of the brand) as well as other popular prefixes and suffixes (e.g. buy, my, pays...)

 Identification of similar domain names:  This report identifies registrations that are typographically similar to the brand but are not strictly identical (e.g. fnak.org instead of fnac.org). This tool is particularly useful in identifying cases of typosquatting and covers the following variations:  Spelling errors  Typos covering international keyboards (Azerty, Qwerty, Qwertz)  Missing letters (e.g. louisvuittn.com)  Change on order of letters (e.g. eads.com / aeds.com)  Numbers instead of figures and vice versa (e.g. msix.com instead of M6.com)  Singular and plural variations  Homonyms (e.g. alkatel.info instead of alcatel.info)  Accents (e.g. allociné.com)  Synonyms (e.g. greatdeal.com instead of gooddeal.com)  Antonyms (e.g. baddeal.com instead of gooddeal.com)  Domain name hack that uses extension to complete brand name (e.g. lanco.me, Lore.al, kellog.gs)

If a report generates too many irrelevant results, then Keep Alert implements exclusion filters to refine results (e.g. FORD, excludes OXFORD).

There are also two optional filters that can be applied to results:  Creation of personalized filters Add up to 200 terms to your brand name. For example Mont Blanc can be associated with the term “pen”  Negative content Keep Alert also applies negative tags to domain names that have content that is critical of your brand.

Systonic, Complementary IP expertise: Internet Protocol – Intellectual Property

Created in 1989 Systonic is structured around 4 complementary departments:

SYSTONIC HOSTING - www.hebergement-systonic.fr High-end web hosting services for online professionals, IT companies, and SaaS developers. Cloud hosting, high-availability hosting solutions, and information system security. This is the principal activity of the business.

KEEP ALERT - www.keepalert.com A Systonic department that was created in 2009, in response to the challenges faced by trademark and copyright holders to their online identity. It is our ambition to become a worldwide actor in online brand monitoring and protection.

PRODOMAINES - www.prodomaines.com The domain name registrar department of Systonic.

SYSTONIC AGENCY - www.systonic.fr This original activity of the business with a portfolio of approximately 300 websites.

Turnover: 2.75 M€, headquarters in Bordeaux (France).

Keep Alert Cybersquatting White Paper

The Keep Alert white paper studies the different facets of cybersquatting in 2011. Cybersquatting (also known as domain squatting), according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else.. Keep Alert has studied a sample of 2500 decisions concerning 4500 domain name disputes in 2011 by the following organizations: WIPO (World Intellectual Property Organization), NAF (National Arbitration Forum), CAC (The Czech Arbitration Court, which covers .EU domains), Nominet Dispute Resolutions Service (DRS), which covers .UK disputes and ADNDRC (the Asian Domain Name Dispute Resolution Center).

The Cybersquatting 2011 white paper covers the following issues:  The arbitration centers that are the most favorable to trademark owners  The various forms of domain name abuse  The terms that are the most used in cybersquatting: online, buy, www, sucks  Typosquatting and its prevalence in cybersquatting  The content of disputed domain names

 Parking pages  Counterfeiting threats and consequences  The nationality of claimants and respondents  Companies and brands that are the most active in defending themselves against cybersquatting: Barclays, Lego, Google, Sanofi Aventis, and Victoria’s Secret…  The leading actors in cybersquatting disputes  The registrars that are the most popular with cybersquatters  What happens to domain names following dispute resolution  Trademark holders and the application of decisions in their favor

Jean-François Poussard, Director Keep Alert, led this study with the participation of:  Anthony Don, Keep Alert Technical Director  Stéphanie Lacroix, Keep Alert Export Manager  Nina Malby, Lawyer

Arbitration Decisions

The arbitration centers base their decisions on the principles of the UDRP (Uniform Domain Name Dispute Resolution Policy). These rules provide the legal framework for the arbitration of disputes between trademark holders, respondents and third parties for Generic Top Level, and Country Code Top Level Domains. In 1999, ICANN (Internet Corporation for Assigned Names and Numbers) adopted UDRP principles.

Arbitration decisions analyzed by Keep Alert are based on the principles of Paragraph 4 Section A of the UDRP:  Your domain name is identical or confusingly similar to a trademark or service mark in which the claimant has rights; and  You have no rights or legitimate interests in respect of the domain name; and  Your domain name has been registered and is being used in bad faith.

The decisions that were made by Arbitration Centers in 2011 were in favor of the plaintiff in 90% of cases, who also pay for the costs of the procedure. The respondent has no costs to bear; their only risk is the cancellation of the domain name or its transfer to the trademark owner.

Costs vary according to the arbitration center, the number of domain names that are disputed as well as the number of people on the arbitration panel. Below is a list of the principal arbitration centers and their dispute charges:  WIPO: $1,500 for up to 5 domain names, $2,000 for between 6 and 10 domain names  NAF: $1,300 for 1 or 2 domains judged by one person, $2,600 for a panel of three people.  CAC: $1,300 for up to 5 domain names for a single panelist, $3,100 for three panelists.  ADNDRC: $2,500 for up top 2 domain names, $7,000 for more than 10 domain names.  DRS: $1,200 for a binding decision, $320 for a summary decision.

In 2011, trademark owners requested the transfer domain name in 99% of cases rather than its cancellation.

WIPO dealt with a record number of complaints in 2011 (2 764) with favorable decisions for trademark owners in 88% of cases. NAF which supported the claims of trademark owners in 83% of cases in 2011 saw a fall of 4% in disputes in 2011 (2 082 decisions). The other arbitration centers have similar statistics: 88% for Nominet, 83% CAC and ADNDRC.

The high number in favorable judgments is explained in part by the absence of any defense on the part of respondents in 75% of cases studied. Respondents are more likely to defend their position in the case of WIPO disputes with a rate of 27% than they are in NAF disputes 22%. If claimants are nearly always represented by legal counsel in disputes, only 8% of respondents retain legal representation with the maximum in NAF disputes (12%).

Claimants lost arbitration decisions in the following cases:  The respondent was able to justify a legitimate use of a patronymic name (, D2011-1076)  The domain name was registered prior to the trademark (, D2011-0724).  The domain name is used by a non-commercial fan site (, FA1108001403808).

However, some notable arguments by respondents have been rejected by experts::  The fact that an available domain name was reserved during the first come, first served period: ex (D2011-1235).

 The respondent explained that the domain name was automatically registered by a software application: e.g. (FA1109001407282).

Spelling of disputed domain names

Keep Alert has identified three main categories of disputed domain name spelling:  Domain names that contain the brand name associated with other terms  Domain names that are identical to the brand name  Domain names that are similar in spelling to the brand (typosquatting)

Domain names that contain a trademark

Domains that use trademarks with generic terms are the most popular form of cybersquatting. For all the decisions that were analyzed by Keep Alert, this type of abusive domain name registration represented 59% of all decisions.

Among the terms that are the most popular in conjunction with a trademark are the following ten expressions:

 online: 4.3% of decisions, e.g. (HK-1100413), (D00009403), (FA1107001398013).  buy: 3.3%, e.g. (FA1109001409613), (D00010146), (D2011-0203).  shop: 3.2%, e.g. (D00009426), (D00010321), (FA1106001395868).  sale: 2.4%, e.g. (D2011-0754), (FA1107001400900), (D00010572).  www (dotsquatting): 2.3%, e.g. (D2011-1697), (D2011-0070), (FA1106001395592).  store: 2%, e.g. (D2011-0132), (FA1107001399890), (D2011-1307).  outlet: 1.3%, e.g. (D00010017), (HK- 1100376) ; (FA1107001396864).  my: 1.8%, e.g. (HK-1100364), (D2011-0828), (FA1108001402076).  coupon: 1.7%, e.g. (FA1110001413164), (D2011-1533), (FA1110001413379).  card: 1.6%, e.g. (D2011-0505), (D2011-0431), (FA1107001399523).

Among the words associated with trademarks, Keep Alert also identified generic terms such as:  cheap: (D00010337), (D2011- 1074), (FA1107001396861).  world: (CN-1100505), (D2011-0099), (D2011-0164).  new: (FA1107001396777), (D2011- 0471), (FA1109001406720).  group: (ADR 5831), (FA1109001405989), (D2011-0356).

Keep Alert also identified the use of expressions in relation to the activity of the claimant:  bank: (D00009406), (D2011-0159), (D2011-0084).  insurance: (D00010023), (D2011- 1587), (D00010093).  shoes: (HK-1100378), (D2011-1753), (FA1107001400122).  credit: (D2011-0707), (FA1111001413634), (D2011-1227).  hotel: (FA1111001414789), (D2011-0378), (DCO2011-0011).

Adding a geographical term to a trademark is also increasingly popular, representing 8% of WIPO decisions:  continents: (D2011-0673), (D2011-1538), (D2011-1769).  countries: birkenstockturkiye.com> (D2011-1614), (D2011-0972), (D2011-1696).  cities: (D2011-1311), (D2011-1676), (D2011-0781).

Among the most popular geographical terms are:  usa: 1.2%, e.g. (DCO2011-0028), (FA1110001410180), (FA1109001407584).  china: 0.8%, e.g. (HK-1100400), (CN- 1100489), (FA1111001414728).  india: 0.4%, e.g. (FA1110001409943), (FA1108001404103), (D2011-1062).

Adding the equivalent of the country code to a trademark is also a common practice. UK the country code for the United Kingdom makes up 0.7% of disputed domain name decisions with trademarks associated with other terms, e.g. (D2011-1136), (D2011-0537) or (D00009189).

CN is the other TLD that is the most popular and has been used in the following disputed domain names (D2011-1779), (D2011-1493), (D2011- 0641).

Other countries have also been used in the same way such as Australia for .AU: (D2011-0112), the Bulgarian extension .BG (D2011-1055) or the Ukrainian .UA: (D2011-0473).

The use of the term “suck” with a trademark has given rise to the expression: “suck case” that is used by experts to qualify these disputes. There were some notable cases in 2011 such as (FA1107001398288), (D2011-0393) and (FA1109001407949) but the term “suck” is only 67th in the ranking of terms used in association with a trademark in disputes.

The average of 59% of disputes concerning domain names that use trademark with expressions is close to that of the following arbitration centers: ADNDRC (61 %), NAF (59 %) and WIPO (61 %). CAC is somewhat lower (52 %) and Nominet even lower still with only 30% of .CO.UK domain name disputes.

Domain names that are identical to a trademark

The registration of domain names that are identical to a trademark represent 25% of the disputes studied in this report. This percentage rises to 31% for ADNDRC disputes that has made decisions regarding the following disputed domain names (DHK-1100063), (DHK- 1100071) and (CN-1100486). Nominet also has above average identical domain name complaints (30%) with examples such as (D00009405), (D00010419) and (D00009187). NAF complaints are 17% with complaints for (FA1110001411046), (FA1107001400621) and (FA1111001415592).

Identical domain name complaints at WIPO represent 26% of decisions. In general these complaints are due to abusive domain registrations in country extensions that are generally overlooked by trademark owners: (DRO2011-0001), (DMX2011-0012), (DCC2011-0004).

Typosquatting

The registration of a misspelt trademark represents 16% of disputes. Typosquatting covers the following type of domain name registrations:  Spelling or typing errors, e.g. (FA1108001404666), (FA1108001404667).  Added or missing letters, e.g. (FA1111001414431), (FA1108001402742), (D2011-1591).

 Change of order of letters, e.g. (DES2011-0053).  Singular and plural variations, e.g. (DES2011-0007), (D2011-0082).  Letters converted to numbers and vice versa, e.g. (D2011-0867), (FA1110001410958).

The prevalence of typosquatting varies between the different arbitration centers. 22% of NAF disputes concern typosquatting, e.g. : (FA1111001413956), (FA1106001395839), (FA1109001405770). 20% of Nominet decisions concern typosquatting: (D00010108), (D00009828), (D00010174).

WIPO has a lower proportion of disputes concerning typosquatting (13 %) even if disputed domain names also concern this practice: (D2011-1870), (D2011-1210) and (D2011-0247). ADNDRC has only has 2 cases of typosquatting among the 50 cases that were judged in English in 2011.

Domain extensions used for cybersquatting

.COM is the most commonly used domain extension and is also the most disputed in the arbitration centers. In 2011, .COM represented 77% of all WIPO disputes and 65% for NAF and ADNDRC disputes. This is a natural result of the prevalence of the .COM domain extensions with more than 100 million active domains as of January 2012 (c.f. http://www.prodomaines.com/classement-extensions-noms-domaine) representing 45% of all internet addresses.

The other generic extensions that are governed by UDRP procedures then follow. gTLD disputes represent 96% of NAF decisions. After .COM, the extensions that are the mot commonly disputed are .NET (10% of NAF, 6% of WIPO decisions), .ORG (4% of NAF and 3% of WIPO decisions) and .INFO (4% of NAF and 2% of WIPO decisions).

WIPO covers disputes relating to several dozen country extension including those of Spain (.ES, 1.7%) and the Netherlands (.NL, 1.6 %). Marketed extensions such as .CO (Colombian extension that is close to .COM) and .TV (Tuvalu, Television) are also in the top 8 WIPO disputes.

For NAF, the domain extension of the USA, .US has been the subject of 70 (3.4%) domain disputes.

The extension that has been the subject of the most ADNDRC decisions is .COM.HK and .HK (11 %).

The Nominet DRS procedure only deals with disputes regarding .CO.UK domains, while the CAC covers .EU for the European Union.

Uses of disputed domain names

Inactive domain names

91% of disputed domain name are active, and only 9% inactive.

Simply owning a domain name that corresponds to a trademark (passive holding) can be considered an act of bad faith. All the Arbitration centers studied have returned inactive domain names to trademark owners:  ADNDRC: 18%, e.g. (DHK-1100071), (HK- 1100367).  CAC: 5%, e.g. (ADR - 6067), (ADR - 5941)  NAF: 5,5%, e.g. (FA1107001397752), (FA1110001410771)  Nominet: 4%, e.g. : (D00010398), (D00009552).  OMPI : 8,5%, e.g. (D2011-0515), (D2011-1412)

Parking pages

Among the domains that are active, the main use is parking pages. More than 50% of active domain names offer sponsored links to third party sites that generate pay per click revenue for the domain owner. All of the arbitration centers that were studied dealt with parking pages, e.g. (CN-110506), (D2011-0447).

The world’s largest registrar, the American company Go Daddy, is present in 22% of the decisions analyzed and offers waiting pages for domain owners that offer advertising links. This type of page is counted as a parking page in the Keep Alert Cybersquatting 2011 White Paper.

Online stores

Among the sites that are active, domain names are increasingly used for online stores that sell counterfeit goods. Keep Alert has evaluated that these stores represent 6% of cybersquatting websites that are active. Fashion and retail represent 25% of claims made to WIPO.

Numerous disputes have been decided by arbitration centers with a significant increase in the number of counterfeit stores making an appearance, such as, (D2011- 1754), (D2011-1506), (D2011-2020), (FA1107001398633) or (D2011-1493).

The pharmaceutical industry is one of the more representative sectors for the arbitration centers, representing 8% of claimants in WIPO disputes. Pharmaceutical companies use domain disputes in

order to have online pharmacies closed down that are selling generic or counterfeit medications such as (D2011-0661) or (D2011- 1805).

Phishing, PornSquatting…

Active domain names that practice “phishing (the collection of personal data such as email addresses, logins and passwords, etc.) represent 1% of disputes, e.g. (D2011-0225) and (FA1111001413956).

Pornsquatting also represents 1% of domain name disputes with names such as (D2011-1208), (D2011-1495) or (D2011-1534).

Some active domain names redirect to other websites (4%) such as (DMX2011-0031), (D00009730), (D2011-0929), (ADR - 6116).

Cybersquatters and claimants

Nationalities

Claimants

The USA is at the top of the list of the nationalities of claimants at both NAF and WIPO (33.6 %). For WIPO disputes, the USA is followed by France (10.9%) and the United Kingdom (8.8%). The UK naturally leads the table of claimants using the Nominet DES procedure for .CO.UK disputes (60%), followed by the USA (13%), followed by Denmark and France representing 5.6% each. For the CAC arbitration center the nationality of claimants is more equally spread: Germany 19%, Italy 12%, USA 12%, Netherlands 9%, and France 7%…

WIPO disputes have the widest variety of nationalities represented: After the top 3 of USA, UK and France the tope ten is made up Denmark (7.4%), Germany (5.4%), Switzerland (5.1%), Netherlands (4.4%), Italy (3.3%), Sweden (2.9%), and Spain (2.8%).

Respondents

The USA is also at the top of the list for cybersquatting respondents. They represent 44.5% of NAF disputes and 28.4% of WIPO disputes. China, which is not among the top ten claimants, is in second position in terms of cybersquatting respondents. China represents 33% of ADNDRC respondents, 12% of WIPO respondents and 10% of NAF respondents.

The United Kingdom is in third position for cybersquatting respondents at WIPO (6.4%), fourth at NAF (3.2%) and naturally first position for Nominet disputes (63.5%). Two nationalities that are absent from the top ten claimants are overrepresented in terms of respondents. Australia is in fourth position at WIPO (6.2%) and third for NAF disputes (6.2%). Canada is in fifth position for NAF disputes (3%) and eighth for WIPO disputes (2.5%).

Companies that are active in the fight against cybersquatting

WIPO

It will come as no surprise to specialists that the most active claimant in domain disputes is the Danish toy manufacturer Lego. They pile up decisions much like their famous building blocks that on their own make up more than 5% of WIPO UDRP decisions. According to our estimations Lego spent at least $200,000 on domain disputes at WIPO in 2011. Lego aline explains why Denmark is in fourth position in the claimant nationality rank.

The American insurer, Allstate Insurance, is the second most active claimant for WIPO domain disputes.

Keep Alert classifies the Swiss laboratories F. Hoffmann - La Roche as the third most active claimant, which regularly defends its rights to it best-known trademarks Valium and Xenical. The health care sector is very well represented in our ranking. The UK company, Roche Products Limited is the sixth most active claimant (for the trademark Accutane), the French pharmaceutical company Sanofi-Aventis is seventh and the German Merck Sharp & Dohme Corp, is sixth.

The Swedish domestic appliances firm AB Electrolux is in fourth position.

In the world of finance, the UK bank Barclays Bank PLC is in fifth position, Italy’s largest bank Banque Italienne Intesa Sanpaolo is in ninth position and the American financial services firm Comerica Incorporated is twelfth.

The American fitness program BeachBody is in eighth position due to disputes concerning the title of its well known fitness program: P90x.

In the world of beauty products the American Revlon (10th) is ahead of France’s L’Oreal (22nd). Swarovski is also in joint tenth position.

For the online gaming industry, the Austrian Bwin (13th) is ahead of Ireland’s Pocket Kings (20th), which defends its trademark Full Tilt.

Among IT companies, Google is in thirteenth position ahead of Apple (22nd), which is in joint position with the American InfoSpace which regularly defends the name of their metacrawler WebCrawler and the Korean Samsung.

In the fashion department Keep Alert has identified the Italian coat manufacturer Moncler in thirteenth position, the UK fashion label Karen Millen (16th), the French luxury brand Hermès (18th), Italian Luxottica (21st) and their Ray-Ban brand, is just above the French shoe manufacturer Feiyue and England’s FitFlop both in twenty second position.

Other major players in the top 30 are the American hotel group La Quinta (18th), France’s Leclerc (22nd) alongside America’s Public Storage and Shaw Industries.

% WIPO Rank Company Nationality decisions 1 LEGO Juris DK 5.15 2 Allstate Insurance Company US 2.41 3 F. Hoffmann-La Roche AG CH 1.57 4 AB Electrolux SE 1.57 5 Barclays Bank PLC UK 1.50 6 Roche Products Limited UK 1.11 7 Sanofi-Aventis FR 1.04 8 Beachbody US 0.85 9 Intesa Sanpaolo S.p.A IT 0.85 10 Revlon Consumer Products Corporation US 0.78 Swarovski LI 0.78 12 Comerica Incorporated US 0.72 13 Bwin Services AG AT 0.65 Google Inc US 0.65 Moncler S.r.l. IT 0.65 16 Karen Millen Fashions Limited UK 0.59 Merck Sharp & Dohme Corp DE 0.59 18 Hermes International FR 0.52 La Quinta Worldwide US 0.52 20 Pocket Kings Limited IE 0.52 21 Luxottica Group S.p.A IT 0.46 22 Apple Inc US 0.39 A.C.D. E. Leclerc FR 0.39 Feiyue FR 0.39 FitFlop Limited UK 0.39 InfoSpace, Inc US 0.39 L’Oreal FR 0.39 Public Storage US 0.39 Samsung Electronics Co KR 0.39 Shaw Industries Group US 0.39

NAF

Keep Alert reviewed the companies that have engaged at least five UDRP procedures. The leading companies are almost exclusively American firms, with the notable exception of the Swiss pharmaceutical giant Novartis (13th).

The famous lingerie company Victoria’s Secret represents almost 5% of decisions (e.g. (FA1106001394270) or (FA1106001395835) by NAF and.

The car rental specialist Enterprise Holdings is number two for the number of disputes brought to NAF for its flagship brands National Car Rental, Alamo Rent A Car and WeCar. Google is in the third position ahead of Microsoft (4th) and AOL (13th).

Alticor is in fifth position, and the furniture company Ashley Furniture is in sixth place alongside the investment firm Vanguard.

Insurance and banking is represented by Metropolitan Life Insurance, in sixth position alongside State Farm Mutual Automobile Insurance, ahead of Regions Asset Company (12th) or Wells Fargo (13thj).

Other active companies include 3M Company (10th), Bath & Body (11th) and the brewer Anheuser – Busch in twelfth position due to numerous disputes concerning the Budweiser trademark.

% of NAF Rank Company Nationality decisions 1 Victoria’s Secret Stores Brand Management, Inc US 4.8 2 Enterprise Holdings, Inc. US 3.5 3 Google Inc US 3.0 4 Microsoft Corporation US 2.4 5 Alticor Inc US 1.6 6 Ashley Furniture Industries, Inc. US 1.4 Metropolitan Life Insurance Company US 1.4 State Farm Mutual Automobile Insurance US Company 1.4 Vanguard Trademark Holdings USA LLC US 1.4 10 3M Company US 1.3 11 Bath & Body Works Brand Management, Inc. US 1.1 12 Anheuser - Busch, Incorporated US 1.0 Regions Asset Company US 1.0 13 AOL Inc. US 0.8 Novartis AG CH 0.8 Wells Fargo & Company US 0.8

Comparison of Arbitration Centers

ADNDRC and CAC decisions are not numerous enough to produce a claimant ranking table.

Among the DRS decisions made by Nominet for .CO.UK domains, Keep Alert has identified two companies that are also active at WIPO: the UK’s Barclay’s Bank is the most active claimant in the DRS procedure as well as being the fifth most active for WIPO disputes. The British fashion label Karen Millen, is the fourth most active firm for Nominet disputes and is also sixth for WIPO procedures.

There are very few international companies that that use both NAF and OMPI. Only Google is listed in the two Keep Alert rankings, in third position for NAF and thirteenth for WIPO procedures.

Respondents

As opposed to claimants, there is no single cybersquatter that is sufficiently active to be identified in procedures with numerous trademarks. However, Keep Alert has identified the regular presence of domain owners that hide behind confidential whois records, without being able to identify the actual respondents. Confidential whois records represent 13% of NAF and WIPO cases and 2% of Nominet procedures.

Claimant representatives

WIPO

Keep Alert has studied the legal representatives of claimants that are involved in at least 1% of UDRP decisions concerning WIPO disputes.

The Registrar Melbourne IT, with its Digital Brand Services division based in Sweden is in pole position. This position is explained as the firm counts Lego among its clients, the most active trademark owner in domain name disputes, as well as the Swedish company AB Electrolux (4th).

The American law firm Mintz Levin is in second position mainly due to the representation of Allstate Insurance (3rd). The French IP Consultancy firm Dreyfus & Associés is in third position with a numerous French clients including Accor, Areva, Auchan, L’Oreal, Michelin and Vivendi.

The US law firm Kilpatrick Townsend & Stockton LLP, is on fourth position with judgments on behalf of Apple, Ikea, Pearson Education, Pepsi and Volvo. They are in joint position with France’s Meyer & Partenaires (Air France, CIC, Hermès) and the UK law firm Pinsent Masons LLP (Barclays, 5ième).

The US law firm Fross Zelnick is in seventh position with disputes on behalf of clients including Deloitte, Estée Lauder, FlitFlop, Four Seasons, Hotels Meridien, Starwood.

Ninth position is also occupied by a US law firm Lathrop & Gage with numerous procedures engaged on behalf of Roche Products (6th). Tenth place is jointly help by the Philadelphia firm Cozen O'Connor (Beachbody) and the Parisian Selarl Marchais De Candé (Debenhams, QuikSilver, Sanofi Aventis).

In twelfth position the French law firm Inlex Ip Expertise (Leclerc, TF1, Visa) rank equally with Italy’s Perani Pozzi Tavella (Intesa Sanpaolo) and he UK’s Hogan Lovells (Deutsche Telekom, Ebay, Skype).

Seventh place is held by F. Hoffmann-La Roche AG: notably the only company that has regular procedures and has chosen to have internal representation rather than contracting specialized external services.

% of WIPO Rank Company Nationality decisions 1 Melbourne IT Digital Brand Services SE 7.0 2 Mintz Levin Cohn Ferris Glovsky and Popeo US 2.5 3 Dreyfus & associés FR 2.0 4 Kilpatrick Townsend & Stockton US 1.6 MEYER & Partenaires FR 1.6 Pinsent Masons LLP UK 1.6 7 Fross Zelnick Lehrman & Zissu US 1.3 F. Hoffmann-La Roche AG CH 1.3 9 Lathrop & Gage LLP US 1.2 10 Cozen O'Connor US 1.1 Selarl Marchais De Candé FR 1.1 12 Inlex IP Expertise FR 1.0 Perani Pozzi Tavella IT 1.0 Hogan Lovells UK 1.0

NAF

Keep Alert has studied the representatives of claimants representing at least 1% of NAF UDRP. There are only law firms based in the US. Sequel Technology & IP Law, PLLC leads the pack with clients such as Victoria’s Secret and Bath & Body and represents more than 5% of NAF decisions. Greenberg Traurig, LLP is in second position thanks to clients such as Anheuser – Busch, Diners Club International and Vans. Cooley LLP, represents Facebook, Google and LinkedIn and holds third position jointly with Fulbright & Jaworski LLP, which represented both 3M Company and Homer TLC in 2011.

Richard Law Group is in fifth position with more than 2% of UDRP decisions and clients such as Fossil, Hewlett-Packard and Microsoft. In 6th position, Barnes & Thornburg LLP (Wells Fargo) is in equal position with McDermott Will & Emery LLP (DogFish, Wyse Technology). Renee Reuter (Vanguard) is in eighth position.

Melbourne IT Digital Brand Services is the only company that is on the top ten for both arbitration centers (WIPO: 1st and NAF: 9th) through its US branch that represents Metropolitan Life Insurance as well as a dispute regarding the domain name (FA1108001403833). Five firms share tenth position: Faegre & Benson LLP (Target Brands), Finnegan (OneWest Bank), Kostner, Koslo & Brovold LLC (Ashley Furniture), Steptoe & Johnson LLP (Regions) and Warner Norcross & Judd LLP (Alticor). Fifteenth place is jointly held by Arent Fox LLP (AOL), Buchanan Ingersoll & Rooney PC (Chevron) and Pirkey Barber LLP (Dell).

% of NAF Rank Company Nationality decisions 1 Sequel Technology & IP Law, PLLC US 5.3 2 Greenberg Traurig, LLP US 4.1 3 Cooley LLP US 2.7 Fulbright & Jaworski LLP US 2.7 5 Richard Law Group, Inc. US 2.4 6 Barnes & Thornburg LLP US 1.6 McDermott Will & Emery LLP US 1.6 8 Renee Reuter US 1.4 9 Melbourne IT Digital Brand Services US 1.3 10 Faegre & Benson LLP US 1.1 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP US 1.1 Kostner, Koslo & Brovold LLC US 1.1 Steptoe & Johnson LLP US 1.1 Warner Norcross & Judd LLP US 1.1 15 Arent Fox LLP US 1.0 Buchanan Ingersoll & Rooney PC US 1.0 Pirkey Barber LLP US 1.0 Registrars

The registrars of disputed domain names are not recorded in CAC and Nominet dispute decisions.

The registrar that is the most commonly party to UDRP disputes is logically Go Daddy, the largest domain registrar in the world (c.f. http://www.webhosting.info/registrars/top-registrars/global/). The US registrar is the preferred choice of cybersquatters with 22% of all decisions.

Another US registrar (eNom, also world number 2 registrar) holds second position for domain disputes with 6% of cases. Third position is held by Directi Internet Solutions, an Indian registrar that is also the eight largest registrar in the world through its “ResellerClub” business unit. The number 3 registrar, Canada’s Tucows is fourth in the Keep Alert rankings. The American Moniker (10th in the world) is in fifth position for disputes followed by Australia’s Faboulous (17th registrar in the world). In seventh position is the Australian Melbourne IT (6th largest registrar), taken by 2% of cybersquatters. The US company Network Solutions (4th largest registrar in the world) is in eighth position for disputes. Panama’s Power Brand Center, which manages barely 0.04% of generic domain names is surprisingly involved in 2% of decisions. The registrar 1&1, which is part of the German group United Domains is in tenth position.

In eleventh position is Bahamas registered Internet.bs Corp, which manages 0.1% of world domain names but is used by 17 times more cybersquatters (1.76 %, 11th position).

% of Rank Registrar Nationality decisions 1 GoDaddy.com US 22.69 2 eNom US 5.98 3 Directi Internet Solutions IN 3.85 4 Tucows Inc. CA 3.64 5 Moniker Online Services US 3.28 6 Fabulous.com AU 2.91 7 Melbourne IT AU 2.17 8 Network Solutions, LLC. US 1.97 9 Power Brand Center, Inc. PA 1.88 10 1 & 1 Internet AG. DE 1.84

Uses of domain names following UDRP decisions

In April 2012, Keep Alert carried out a study of the use of domain names following UDRP decisions made in 2011.

Inactive domain names

Domain names that have been transferred to trademark owners are generally inaccessible. 45% of NAF domains are inactive, such as (FA1111001414789), (FA1110001413146) and (FA1111001413915)/

None of the domain names that have been recovered by Google (3rd most active company for NAF disputes) direct to an active page. (FA1110001410958), (FA1110001410958) or (FA1111001415180).

Asia’s ADNDRC also has a rate of 45% of transferred domain names that are inactive, e.g. (HK-1100378) or (CN-1100467). Guess, who have recovered four domain names through ADNDRC has activated none of them: (HK 1100334).

CAC has recorded 40% of transferred domain names as being inactive (e.g. (ADR - 5811). Herbalife has recovered 7 domain names, none of which are active (e.g. (ADR - 5881). The three domain names that were recovered through CAC by Casinos Partouche are not active either, e.g. (ADR - 5819).

This figure is somewhat less for WIPO decisions: 34.5% of pages are inaccessible such as (D2011-0171) or (D2011-0116). AB Electrolux, the second most active WIPO claimant does not use most of the domain names that it recovers, such as (D2011-0317), (D2011-1311) or (D2011-1618).

Nominet has the lowest number of inactive pages with only 25 %, although there are cases such as (D00009464), (D00010023) or (D00009579).

Domain names with parking pages

As surprising as it may seem, trademark owners that have paid to recover disputed domain names do not always renew them or do not update information correctly. The result of this is that a domain name that has been recovered by the claimant is still used in negative ways, such as parking pages.

13% of domain names that were recovered through Nominet DRS procedures have parking pages, e.g. (DRS09331). All of the domain names that have been recovered by Skechers have parking pages, e.g. (D00009900) !

For domain names recovered though ADNDRC, the number of parking pages increases to 17%, e.g. (CN-1100500) or (HK-1100363).

WIPO and NAF have the same parking page rate of 7%. The recently closed counterfeit store (D2011-1493) now has sponsored ads that direct to competitors. Domain name disputes judged by WIPO such as (D2011-1665) or (DCO2011-0013) also have pay per click ads. It is the same result for NAF disputes for (FA1106001396337), (FA1107001399456) and (FA1111001415253).

Active domain names

Redirecting recovered domain names to the legitimate website is the logical and appropriate course of action for a trademark owner. Apple redirects all recovered domain names to apple.com. Jimmy Choo has the same policy. The domain name (FA1111001415592) directs to the official Skype website. The domain (D00010174) redirects to the brand’s official website: webuyanycar.com.

Nutella also redirects the recovered (D00009187) to the official .

Many trademark owners do not take the trouble to redirect recovered domain names to their official sites and leave the pages on the registrar’s waiting page. The seven domain names that were recovered by Alibaba are all landing pages of its registrar.

Victoria’s Secret, the most active NAF claimant in 2011 promotes its registrar with previously recovered domain names, such as (FA1109001409298) or (FA1109001407499).

Lego, who was the most active WIPO claimant in 2011 does not redirect any of the domain names that it recovers to its official site, the majority of which are registrar waiting pages. Among names recovered, some were abandoned by Lego and have already been recovered by third parties and set up as parking pages: (DAU2011-0015), (DAU2011-0015). Lego could start new procedures for these domain names again and also request technical changes to the domain (D2011-1693) that continues to counterfeit the brand five months after the decision.

Lamborghini has the same problem with the domain name (D2011-1269), which still directs to the previous owner, a Lamborghini dealer in the US.

The example of (D2011-1787) is remarkable, the domain name is owned by the British telecommunications company and still contains pornographic content!

The French hotel group Accor has chosen to abandon certain domain names that were recovered in domain dispute procedures, such as , or (D2011-1773) that are now available.

Cancelled domain names

Accor could have requested the cancellation of the domain names, but does this run the risk of seeing the domain names reappear when they become available again?

Sanofi Aventis which successfully had eight domain names cancelled will now need to commence six procedures to recover domains that have been registered again and some of which have online pharmacies, e.g. (D2011-0694).

Puma had (DES2011-0019) cancelled, but now the domain has been recovered and hosts an animal encyclopedia.