Introduction
Domain name disputes
Covid-19 cybersquatting cases
Comment


Introduction

Governments around the world have taken lockdown measures in an attempt to prevent the spread of the covid-19 pandemic. While these measures have been effective in slowing down the virus, they have also created a problem online. With a greater number of people at home, many have been working remotely and using online platforms to meet socially with friends. This online shift has created the ideal environment for cybersquatters and other online criminals to make their moves.

The rise of online infringement during the covid-19 pandemic is evidenced by the increase in uniform dispute resolution policy (UDRP) decisions issued by World Intellectual Property Organization (WIPO) panels. Adequate measures to prevent online infringement were in place before the virus emerged and the UDRP was one of them. This alternative dispute resolution system enables trademark owners to claim domain names that are identical or confusingly similar to their trademarks, but that are registered by third parties.

Domain name disputes

Since the "first come, first served" principle applies to domain names, any third party can register a domain name without having to show any (trademark) rights in that domain name. It is only after the registration of a domain name that a trademark owner can claim a domain name under certain conditions. These conditions vary according to the top-level domain of the domain name at stake since the applicable alternative dispute resolution system depends on the top-level domain concerned. Some country code top-level domains (eg, ".co") and most generic top-level domains (eg, ".com"), including all new generic top-level domains (eg, ".group"), fall within the scope of the UDRP, which means that domain names that have such top-level domains can be claimed before the WIPO.

According to the conditions of the UDRP, it is not only necessary for a trademark owner to prove that a domain name is identical or confusingly similar to its trademark, but also that the registrant of the domain name has no rights or legitimate interests in the domain name and that it registered and used the domain name in bad faith. Domain name registrations by cybersquatters, or other online criminals, mainly fall within the scope of these conditions and, therefore, it is not surprising that the WIPO registered an increase in UDRP cases during 2020. The organisation handled 11% more cases in 2020 than in 2019.

Covid-19 cybersquatting cases

The types of cases brought before the WIPO during the covid-19 pandemic were primarily classic cybersquatting cases in which the domain names were identical to a trademark or closely resembled a trademark, and were used for phishing purposes either via fake email addresses or through a fake website as part of a wider fraud scheme. However, since the start of the pandemic, tens of thousands of domain names containing terms linked with covid-19 have been registered. While not all of these have been the subject of a UDRP case, they provided the WIPO with a new type of case in which it had to apply UDRP conditions.

While some of these covid-19-related domain names were used for legitimate purposes, such as to disseminate facts and information about the virus, most targeted trademark owners. This led to domain names such as "sanoficovid19vaccine.com" and "labcorpcovid.com", which targeted the trademarks of companies within the healthcare sector. Companies outside the healthcare sector were also targeted, resulting in domain names such as "facebookcovid19.com" and "myverizonwirelesscovid19.com". The fraudulent use of these domain names varied from selling counterfeit (pharmaceutical) products – which is extremely dangerous during a pandemic – to the instalment of malware on the user's computer.

Comment

Fortunately, the UDRP is an adequate system to fight such fraudulent domain name registrations. This is proven by the fact that nearly every UDRP decision involving covid-19 domain names resulted in a WIPO panel decision to have the domain name transferred to the trademark owner. Moreover, in some of these decisions, the panel even qualified the negative social effects of the pandemic on internet users as an aggravating circumstance of bad faith – due to this negative impact, users are unsurprisingly vulnerable and looking for positive information among the overwhelming amount of bad news reports. The fact that cybersquatters are taking advantage of such vulnerability to exploit a fraudulent domain name is reprehensible, according to the WIPO, and clearly contributes to the bad-faith character of the registration of such domain names.

For further information on this topic please contact Jens De Maere at GEVERS by telephone (+32 2 715 3711) or email ([email protected]). The GEVERS website can be accessed at www.gevers.eu.