One would have had to have lived on another planet for the past year and a half – which would probably have been a better option than life on Earth – to not realize that the world was being held in the grip of a pandemic. What started as a small news item about a new Chinese flu variant quickly began to dominate news broadcasts all around the world. In a very short period of time, the Covid-19 virus successfully conquered the world and, in an attempt to stop it from spreading any further and limit the number of victims, far-reaching measures were taken by governments. Public life fell silent and people spent entire days at home. While these measures were effective in slowing the spread of the virus, they also created an online problem. With a greater number of people at home, many worked remotely online for work or used the online platform to socially e-meet with friends. This online shift created the ideal environment for cyber squatters and other online criminals to make their move.
The increase of infringements in the online environment during the Covid-19 pandemic is, among others, evidenced by the rise of UDRP decisions issued by WIPO panels. While the whole world was impatiently waiting for a vaccine to protect people against the Covid-19 virus offline, adequate measures to protect indirect victims of the virus online were already installed before the virus emerged and the UDRP was one of them. This Alternative Dispute Resolution system, which is called the ‘Uniform Dispute Resolution Policy’ in full, allows for trademark owners to claim domain names which are identical or confusingly similar to their trademarks, but which are registered by third parties. Since the principle of first come, first served 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 (e.g. ‘.co’) and most generic Top-Level Domains (e.g. ‘.com’), including all new generic Top-Level Domains (e.g. ‘.group’), fall within the scope of the UDRP which means that domain names having such Top-Level Domains can be claimed before WIPO.
According to the UDRP conditions, 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 said domain name has no rights or legitimate interests in the domain name and registered/used the domain name in bad faith. Domain name registrations by cyber squatters, or other online criminals, mainly fall within the scope of these conditions and, therefore, it is not surprising that WIPO has registered an increase in UDRP cases during the year 2020. The organization handled 11% more cases in 2020 r than in 2019 which was the last pre-Covid-19 year.
The types of cases being brought before WIPO during the Covid-19 pandemic are the classic cybersquatting cases where domain names are identical to a trademark, or closely resembling a trademark, and are used for phishing purposes either via fake email addresses or by setting up a fake website as part of a whole fraud scheme. However, since the start of the pandemic, tens of thousands of domain names containing terms linked with the Covid-19 pandemic have also been registered. While not all of them have been the subject of a UDRP case, they did provide WIPO with a new type of case in which it had to apply the UDRP conditions.
While some of these Covid-19 related domain names were used for legitimate purposes, such as disseminating facts and information about the virus, most of them targeted trademark owners. This led to domain names like sanoficovid19vaccine.com and labcorpcovid.com which targeted the trademarks of companies within the healthcare sector but it did not stop there as the trademark of companies outside that sector were also being targeted. Examples in this regard are facebookcovid19.com and myverizonwirelesscovid19.com domain names. The fraudulent use of these domain names varied from selling counterfeit (pharmaceutical) products – which is extremely dangerous during a pandemic – to the installment of malware on the computer of internet users. Fortunately, the UDRP is an adequate system to fight such fraudulent domain name registrations 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. Not surprisingly and due to the negative impact of this pandemic on them, they are vulnerable and looking for some positive information amongst the overwhelming amount of bad news reports. The fact that cyber squatters are taking advantage of such vulnerability to exploit a fraudulent domain name is reprehensible according to WIPO and clearly contributes to the bad faith character of the registration of such domain name.
Unfortunately, the Covid-19 pandemic has led to an increase of online fraud which resulted in not only victims in real life, but also online, respectively. Luckily enough, the vaccine for the online victims was already existing in the form of the UDRP system. This system proved to be an efficient and quick solution for any trademark owner facing a domain name combining its trademark with Covid-19 related terms used for fraudulent purposes. Let’s hope that the vaccines to protect the offline victims of the Covid-19 virus approach that 100% success rate as well!
Jens De Maere – Intellectual Property Attorney