The Trademark Clearinghouse was created to enable trademark holders to protect their brand(s) within the new gTLD space.
More than 700 new domain name extensions have launched so far and many more extensions will launch over the next few years. The Trademark Clearinghouse (TMCH) was built as a single global repository for authenticated registered trademarks—to help protect brand owners and their IP rights as they relate to domain names. The TMCH offers registered trademark holders a solution—to help safeguard their rights and simplify participation during the multiple pre-registration (Sunrise) launch periods for each New gTLD.
As we are all aware, the world is battling a deadly outbreak of a novel coronavirus, COVID-19. The virus is dominating our lives, and it may do for some time yet.
Despite the harm caused by COVID-19, many have found it to be a chance to show the best of humanity. Stories of generosity and charity abound across the world.
On the other hand, we have the scammers who take any opportunity to deceive for their own gain. Domain names, as the ‘indicators of origin’ for the internet, are used as vehicles to deliver fraud to unwary, and often vulnerable, online users.
There is an enticing commercial opportunity to cash-in on a trend, movement, or even a crisis. Just as the word ‘Brexit’ dominated news headlines, there were those who tried making a quick buck: from Brexit-related merchandise to Brexit-related scams.
We often see a rush of trademark registrations when a trending word or phrase appears. The same is true for domain names – unsurprising given the internet is now the medium most used to transmit and take advantage of worldwide trends.
There is evidence of an increase in terms such as ‘coronavirus’ and ‘COVID-19’ being used in domain names, often combined with a trusted brand name or trademark. Many such domain names aim to deceive the public. The use of established brands in domain names, termed ‘cybersquatting’, is the Trojan horse which enables fearmongering, financial fraud and counterfeits to thrive online.
Fortunately, there are ways for brand owners to combat what we refer to as ‘opportunistic cybersquatting’.
It is vital to be aware of the ways in which misleading domain names can be used to hurt brands and businesses.
Take, for example, the typical ‘CEO’ phishing attack: this is where scammers use a deceptive domain name to fake the email address of a company’s CEO, or other Board member, to scam the company’s employees. This scam can be very potent in the current chaotic business climate; unusual requests for account details or financial transactions may seem more legitimate.
Thankfully, registrars and financial authorities are taking action to stem the flow of fraud1. Proactive brand owners are also starting to enforce their rights against infringing domain names. This can be done through domain name arbitration, such as the Uniform Domain Name Dispute Resolution Policy (‘UDRP’), which results in malicious domain names being transferred to the rightful owner.
The first ‘coronavirus’ UDRP case was filed on March 19th, regarding "coronavirusgoogle.com". Google have already recovered "googlecoronavirus.com" through the UDRP, after the owner consented to the transfer of the domain name. In addition to these two Google cases, fellow tech giant Facebook are involved in a dispute over "facebookcovid19.com".
Both Google and Facebook have seen the potential threat behind these domain names. Both companies are involved in a constant herculean struggle against campaigns of misinformation, which present a real danger to the public2. This epidemic has, perhaps inevitably, brought to shore a fresh wave of misleading articles, malicious conspiracy theories and misplaced advice about treatments for COVID-19.
Pharmaceutical companies in particular must be wary of cybersquatting threats. Fraudsters take advantage of hype about drugs that are rumoured to treat COVID-19. Counterfeits of these drugs can be sold online, using trademarked names for the drugs in the domain name to attract internet traffic and imply endorsement.
We may already have an example of the above. There are three ongoing UDRP cases involving the “KALETRA” drug. In one case, the disputed domain names resolve to a website advertising the drug for sale, within the context of treating coronavirus. “KALETRA” has been subject to scientific study regarding its capability to combat the virus, but no clear benefit in taking the drug was found3 We eagerly await the full facts of this case to emerge.
It is clear that tackling trademark misuse in domain names, in the current climate, is not just about guarding against brand tarnishing or dilution – it is a fight for public safety. As global lockdowns keep people indoors, their internet exposure will only increase. It is crucial that this digital medium stays secure, instead of being used for deception and fraud.
Thankfully, speedy arbitration mechanisms, such as the UDRP, are already equipped to deal with opportunistic cybersquatting, as will be demonstrated in Part II.
2 See https://www.bloomberg.com/news/articles/2020-03-10/dr-google-scrubs-coronavirus-misinformation-on-search-youtube and https://www.campaignlive.co.uk/article/coronavirus-misinformation-slipping-facebooks-ad-review-system/1679843