Current events sometimes dictate what cybersquatting problems a trademark owner chooses to tackle, and the coronavirus pandemic is certainly no exception. In two decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP), panels awarded transfers of domain names that contain the “Purell” trademark to the owner of the popular (and suddenly scarce) hand sanitizer.
The cases involve the domain names <purell-sanitizer.com> and <purellquebec.com>. Interestingly, the decisions were published on two consecutive days in early May 2020. Although they are not the first UDRP cases brought by GOJO Industries, Inc. (owner of the Purell trademark registrations since 1992), they are two of only six UDRP disputes filed by the company in the past five years.
In the <purellquebec.com> case, the registrant of the domain name used it in connection with a website that, according to the decision, “appears to target panicked consumers by offering a hand sanitizer as an ‘ANTI-COVID-19 FORMULA’, when in fact no such product exists.” Instead, the website offered what GOJO believed to be counterfeit versions of its hand sanitizer products.
As both decisions note, GOJO is “a long-recognized manufacturer of hand-hygiene and skin-care products” that began operations in 1946 and introduced its Purell brand of hand sanitizers in 1991. GOJO said that the Purell trademark is “world-famous.”
As a recent CBS Sunday morning story noted, “It seems like Purell is everywhere these days, except at stores where they're struggling to keep up with demand.” The demand, of course, arose as a result of the COVID-19 disease caused by the novel coronavirus, which the World Health Organization (WHO) declared a pandemic on March 11, 2020.
As often happens, cybersquatters took advantage of the news, registering the <purell-sanitizer.com> and <purellquebec.com> domain names within days of the WHO’s pandemic declaration.
Neither UDRP dispute presented any challenging issues for the panels that decided them. In the <purell-sanitizer.com> decision, the panel wrote that the registrant’s use of the domain name to sell “what appeared to be PURELL branded sanitizers for exorbitant prices” was both “confusing and disruptive.” And in the <purellquebec.com> decision, the panel easily found that the registrant’s use of the domain name to offer an “ANTI-COVID-19 FORMULA” — which is “non-existent” — was in bad faith.
While these Purell decisions don’t offer any new lessons about the substantive elements of the UDRP’s three-part test, they are an important reminder that trademark owners must be vigilant in pursuing cybersquatters, even if they have not posed a significant threat in the past. Identifying and targeting newly registered domain names through the UDRP remains an essential tactic for all trademark owners to ensure that their brands — and their consumers — are protected on the Internet.
