For many brand owners, the ongoing pandemic caused by Covid-19 has had a detrimental impact on day-to-day business, with e-commerce being a saving grace. As a result of the change to the status quo, brand owners have had to be more vigilant about preventing counterfeits being sold online, be it on marketplaces, or social media. But what about domain names? Have any domain names been identified featuring Covid and how are the domain names being used? Have brand owners managed to successfully recover the domain names? This article aims to address these questions and provide brand owners with initial tips to address these issues.
Domain Names containing “Covid”
According to domain dispute archive records, such as www.dndisputes.com, there have been approximately eight cases filed via the World Intellectual Property Organisation’s (‘WIPO’) Uniform Domain Name Dispute Resolution Policy (‘UDRP’), which contained a brand owner’s trade mark, along with the word ‘Covid’ or ‘Corona’. Moreover, the domain intelligence company, DomainTools, reported over 57,000 Covid registrations between 1st – 22nd March 2020. Therefore, it is likely that more registrations will follow as the global pandemic continues.
By way of an example, a pharmaceutical company called Eli Lilly and Company (‘Complainant’), recently disputed the following domain names: <lillycivid19testing.com>, <lillycovad19testing.com>, <lillycovidtesting.com> and <wwwlillycovid19testing.com> in the UDRP case Eli Lilly and Company v. Super Privacy Service LTD c/o Dynadot / Shilei Case No. D2020-0886. The Complainant submitted that they were: ‘at the forefront of significant medical breakthroughs throughout the years’, hence why the opposing party (‘Respondent’) decided to register four domain names featuring the LILLY trade mark and various ‘Covid’ (or misspellings of Covid) in four domain names. Interestingly (albeit unsurprisingly), all four domain names did not direct to a website related to ‘Covid’, or even the brand ‘LILLY’. According to the Complainant (and accepted by the panellist in the case), all domain names resolved to PC and Windows software repair links, which the Complainant argued caused unsuspecting Internet users to download malware. Therefore, although the domain names did not contain any information (illegitimate or otherwise) about Covid within the website content, the fact that the domain names were registered and contained suspicious activity was enough for the panellist to find in favour of the Complainant and order the transfer of all four domain names.
In another case between Gilead Sciences, Inc. v. Main Contact. Case No. D2020-0776(also involving a pharmaceutical company), the domain, <coronagileadsciences.com> was held to be registered opportunistically but resolved to a blank page. The sole panellist, Harrie R. Samaras commented that:
‘If Respondent believed it was making a good faith or fair use of the Domain Name, it could have advanced supporting evidence and arguments here, but neither has been presented to the Panel. This points to an opportunistic registration seeking to take advantage of a global crisis (Emphasis added).’
Therefore, for many of these cases, the issue is not necessarily the content, but the mere registration of a domain name that uses the brand owner’s trade mark along with the term ‘Covid’, or in the latter case ‘Corona’.
What are the actions you can take?
These cases indicate that brand owners need to remain alert to possible abusive registrations. This is particularly the case for pharmaceutical brands, who to date, appear to be the main target for abusive domain registrations. Although it is difficult to prevent third parties from registering domain names without anticipating every possible registration (which would be a very laborious and expensive project), there are some ways to detect abusive domain names early and take appropriate action. Some examples include:
· Domain registration alerts – arranging a domain monitoring service for your brand and ‘Covid’ is one of the better ways of detecting abusive registrations from the date of registration; and
· Domain disputes – as seen in the above cases, domain dispute processes such as WIPO’s UDRP and the Uniform Rapid Suspension System have proven to be effective procedures for brand owners to recover domain names.
The above measures are non-exhaustive but go a long way in protecting brands through this challenging time.
If your brand has been affected by abusive Covid domain registrations, please contact Stobbs IP via firstname.lastname@example.org or call our office at +44 1223 435240.