(Updated April 20, 2020, as noted below.) The first decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) involving a domain name that contains the word “coronavirus,” filed by Google, not surprisingly resulted in an order transferring the domain name to Google — but not for the typical reasons.
The dispute was over the domain name <googlecoronavirus.com>, which apparently was registered on March 14, 2020, just three days after the World Health Organization declared the coronavirus a pandemic. Google filed a UDRP complaint against the registrant of the domain name, Ben Ghosh of Massachusetts, almost immediately, on March 17, 2020.
The UDRP proceeding for <googlecoronavirus.com> is one of the first two domain name disputes involving the word “coronavirus.” The other case was also brought by Google, over a similar domain name, <coronavirusgoogle.com>. (See update below.)
Consent to Transfer
While almost all UDRP decisions include a detailed analysis of the domain name dispute policy’s three-part test, the decision in the <googlecoronavirus.com> case avoided the typical outcome because the registrant of the domain name agreed to transfer it to Google after the UDRP complaint was filed.
The panel wrote:
In a circumstance such as this, where Respondent has not contested the transfer of the Domain Name, but instead agrees to transfer the Domain Name to Complainant, the Panel is authorized to forego the traditional UDRP analysis. This Panel, in recognition of the common request of the parties, in the interests of judicial expedience, and in the absence of any aggravating circumstances, has so decided to forego the traditional UDRP analysis and to order an immediate transfer of the <googlecoronavirus.com> domain name.
This decision allowed for a quick resolution to the dispute, effectively ending the case only 17 days after the UDRP complaint was filed. (Ordinarily, a UDRP decision is issued about two months after a complaint is filed.) However, as in all UDRP decisions awarding transfer of the disputed domain name to the trademark owner, <googlecoronavirus.com> presumably won’t be transferred to Google until the expiration of the UDRP’s mandatory waiting period of 10 business following the decision.
Interestingly, not all UDRP disputes in which a domain name registrant consents to transfer are decided in the same manner as the <googlecoronavirus.com> case. As WIPO’s UDRP Overview states:
In some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights.
Here, none of these scenarios appears to have been present, so the panel’s decision to issue an order consistent with the registrant’s consent seems appropriate.
Update, April 20, 2020: Another UDRP panel has reached a similar conclusion with respect to the second coronavirus-related dispute, for <coronavirusgoogle.com>. In that case, the respondent also consented to a transfer, which the panel granted without discussing the merits of the case.
Future ‘Coronavirus’ Disputes
Given the truncated UDRP decision, it’s unclear what the registrant of <googlecoronavirus.com> had in mind when he created it. As of this writing, the web page associated with the domain name still includes a a looping video of President Trump at a microphone surrounded by members of the White House coronavirus task force.
There are certainly some appropriate uses of the word “coronavirus” in a domain name. For example, ICANN’s Registrar Stakeholder Group issued a statement that “many COVID-related domain registrations are made for valid and justifiable reasons” and that the group has “seen hundreds of domain names belonging to individuals, businesses, and organizations that are disseminating important information and organizing their communities.”
Hopefully, though, this decision will make clear to cybersquatters that there may be no defensible reason to register and use a domain name that contains the word “coronavirus” plus a well-known trademark.
