WIPO Domain name decisions with Nicholas Weston as panelist

The WIPO Arbitration and Mediation Center is internationally recognised as the leading institution in the resolution of internet domain name disputes, without the need for court litigation.

The World Intellectual Property Organization panel ordered the transfer to the Brahma Kumaris of domains —  and — involving three separate trade marks, including a two letter common law trade mark.

The disputed domain names were part of the same operation, in which the UK based cybersquatter registered Brahma Kumaris owned trademarks as domains and pointed them at its own websites filled with content scraped from Brahma Kumaris websites.

The complaint was consolidated against multiple domain names involving multiple registries and multiple trademarks to avoid payment of additional filing fees for separate complaints. The filing fee on a single panelist UDRP proceeding starts at USD $1,500 and escalates depending on the number of domain names. UDRP complaints involve marshalling arguments and evidence into a submission that must not exceed 5,000 words and evidence that must not exceed 50MB. The firm was successful in persuading the panel that the disputed domain names were under the common ownership and control of the respondents, and to allow the consolidation of the complaints in one filing.

A UDRP complaint requires a trade mark, in any jurisdiction, in which the complainant has rights, and incorporated in the domain name. The complaint relied on both registered and unregistered trade marks that the Panel agreed consumers would associate with the complainant, in which the complainant’s rights were being abused.

The complaint was also successful on the three (it is four, really) cumulative requirements for each of the disputed domain names, namely: (1) that the domain name in question is identical or confusingly similar to a trade mark to which the complainant has rights; (2) that the holder of the disputed domain name has no rights or legitimate interest in the domain name; and (3) that the disputed domain name was registered in bad faith and is being used in bad faith.

Some takeaways from the study’s findings:

  • Nearly 340,000 patent applications for AI-related inventions filed between 1950s – 2016 and over 1.6 million scientific papers published.
  • More than half of the identified AI-related patent applications filed since 2013.
  • Companies represent 26 out of the top 30 AI patent applicants, with universities or public research organizations accounting for the remaining four. (Chapter 4).
  • By the end of 2016, IBM had 8,290 inventions, followed by Microsoft (5,930), then Toshiba (5,223), Samsung (5,102) and NEC (4,406).
  • Chinese organizations account for 17 of the top 20 academic players in AI patenting.
  • ML represents one-third of all identified inventions with DL the fastest growing AI technique with a 175 percent average annual growth rate as compared against a 10 percent average annual rate for all technologies.
  • Computer vision is the most popular AI application, mentioned in 49 percent of all AI-related patents.
  • The transportation sector showed a 33 percent annual average growth rate and nearly 20% of all filings.
  • 15 percent of all identified patent documents between 2013-2016 were related to telecommunications.
  • Life and medical sciences had a 12 percent annual average growth rate between 2013-2016 and got a mention in around 11% of all filings.
  • AI for robotics grew 265 percent overall with 55 percent average annual growth between 2013 -2016 in patent applications for robotic control methods.

About WIPO

The World Intellectual Property Organization (WIPO), is the global forum for intellectual property policy, services, information and cooperation. A specialised agency of the United Nations, WIPO assists its 191 member states in developing a balanced international IP legal framework to meet society’s evolving needs. It provides business services for obtaining IP rights in multiple countries and resolving disputes. It delivers capacity-building programs to help developing countries benefit from using IP. And it provides free access to unique knowledge banks of IP information.

About Nicholas Weston IP Lawyers

We understand the digital economy and apply an approach that integrates digital with legal solutions. The integration of practical legal and digital solutions is applied to all cases and projects, whether for a portfolio or a unique case, giving us an ability to anticipate probable outcomes and guide you through the options, as we have for many others, hundreds of times previously.