The World Intellectual Property Organization (WIPO) updated its status for handling domain name dispute cases in light of the coronavirus pandemic, announcing: “As part of its overall response to this global crisis, WIPO remains committed to providing its full domain name dispute resolution services.” Its current caseload of coronavirus-related disputes show that it is serious.
Previously, WIPO had said that “a degree of flexibility and discretion” might be necessary for parties in proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP) and other domain dispute policies — but, cases seem to be moving forward as normal.
During the pandemic, I have had regular interaction with WIPO’s UDRP services, as counsel for complainants (trademark owners), as counsel for a respondent (domain name registrant), and as a panelist. In each of these roles, I’ve seen WIPO operate just as well as it always has.
Along with its most recent update, WIPO noted that a “significant numbers of cases continue to be filed with WIPO, notably in the biotech/pharma, Internet/IT, banking/finance, and events-related categories.”
Indeed, an increasing caseload of coronavirus-related domain name disputes at WIPO and elsewhere shows that the UDRP is more important now than ever.
WIPO Cases
While it’s unclear what the long-term impact, if any, of the coronavirus will have on UDRP proceedings, WIPO notes that it is handling a number of disputes related to the pandemic, including those involving the domain names <coronagileadsciences.com>, <dettolhandsanitizer.com>, <facebookcovid19.com>, <gileadcopay.co>, <hmrc‑refund‑covid‑19.com>, <tokyo2021.cn>, <tokyo2021.org>, <sanofivaccine.com> and <wwwlillycovid19testing.com>.
In one of the WIPO cases, for <coronagileadsciences.com>, the UDRP panel wrote that “the term ‘corona’, which is an abbreviation for the coronavirus COVID-19, affirms the risk of confusion due to [Gilead Sciences’s] work with the antiviral drug remdesivir, which is currently being studied as a treatment for COVID-19.”
In another of the WIPO cases, for <facebookcovid19.com>, Facebook said that “it is actively providing its users who search for information on COVID-19 with links to credible sources of information, including to the WHO and the Centers for Disease Control and Prevention.”
The UDRP panel concluded “that there is a strong likelihood that many members of the public may perceive the disputed domain name as an official source for information related to the current COVID-19 pandemic,” adding that “there is a risk the disputed domain name could be used in connection with a website or for email to impersonate [Facebook] in an effort to disseminate misinformation, placing the public at risk.”
And, a pair of similar WIPO cases decided on the same date — for <plaquenilclub.com> and <plaquenil.club> — were brought by Sanofi, the owner of the hydroxychloroquine drug, which has been sold under the trademark “Plaquenil” for more than 30 years and has recently been discussed (controversially) as a potential treatment for COVID-19. In both cases, the UDRP panels ordered the domain names transferred to Sanofi.
Other UDRP Providers
As for how the other UDRP service providers are operating during the pandemic:
The Forum previously provided an update on its services (which appear to be operating as normal).
The British Columbia International Commercial Arbitration Centre (BCICAC), which provides UDRP services through its Canadian International Internet Dispute Resolution Centre (CIIDRC), has said that because “disagreements and disputes still occur” during a pandemic, “help is still available.” (CIIDRC remains a minor provider of UDRP disputes given its recent ICANN accreditation.)
The remaining UDRP providers — the Czech Arbitration Court, the Asian Domain Name Dispute Resolution Centre, and the Arab Center for Dispute Resolution — apparently have not made any public announcements about their status.
Conclusion
As the WIPO cases (and others at the Forum, as I noted in recent blog posts) make clear, cybersquatters continue to find ways to exploit trademarks and consumers — and, fortunately, the UDRP remains an effective way to deal with domain name disputes, even during a pandemic.
