Beware of heightened brand exposure

In the midst of the outbreak, there are a few fortunate companies that will see an increase in business. One prominent example is videoconferencing software Zoom. Popular with those working from home, Zoom has gained fame for its now widespread use.

Increased public awareness causes brands to become a bigger target for scammers and cybersquatters. Since the middle of March, daily registrations of domain names containing the word ‘Zoom’ have soared. ¹

This is no coincidence. We have seen similar patterns before: when Facebook announced its planned cryptocurrency, Libra, registrations of domain names containing the ‘Libra’ term similarly surged.

This is not to say that all of these ‘Zoom’ registrations will be harmful, particularly given the word itself is generic. However, we will inevitably find an increase in domain names that constitute a targeted attack against Zoom, given its rise in popularity.

Thankfully, domain name arbitration policies are prepared for such cases. Panels under the UDRP explicitly recognise the principle of ‘opportunistic bad faith’. We will likely see this principle applied in coronavirus-related UDRP cases.

Put simply, ‘opportunistic bad faith’ is found where the domain name was clearly registered to take commercial advantage of a recent and widely publicised event.

For example, take a company that excitedly announces a new brand, perhaps for a product or merger. Cybersquatters will jump at the chance to register domain names containing the new brand, particularly if trademarks have not been registered. Anything that heightens the public’s awareness of a brand will be a trigger for opportunistic bad faith registrations.

Panels will take into account that a domain name was registered pursuant to notable media exposure. For example, in the Fenty Beauty case, ² the Panel specifically alluded to the fact that "fentybeautybyrihanna.com" had been registered “correspond[ing] exactly to the Complainant's soon-to-be launched product line, [a] day after that product line was announced”.

Given the complainant’s new brand had been “extensively covered by the media”, there was clear evidence of opportunistic bad faith. This can apply even if the relevant trademarks were not registered at the time the domain name was created.

Of course, opportunistic bad faith does not outweigh other factors needed to be proven under the UDRP. Any possible rights or legitimate interests the respondent may have in its use of the domain name must be taken into account.

Nevertheless, brand owners can rest assured that their trademarks can be protected through arbitration policies, such as the UDRP, quickly and fairly. This is true even amidst the current crisis; service providers such as Forum and the World Intellectual Property Organisation continue to administer the UDRP in a timely and orderly manner.

It is paramount that brands have an active policy to fight against trademark misuse in the domain name system during the coronavirus outbreak. This includes a proactive strategy, such as domain name monitoring and defensive registrations. Be particularly vigilant of domain names that take advantage of current events to attack your brand’s integrity.

¹ https://domainnamewire.com/2020/03/31/zoom-domain-registrations-skyrocket/

² https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-1222