The Covid-19 pandemic has undoubtedly had a huge impact on just about every aspect of our lives – transforming kitchens across the land into home offices and giving patent attorneys a crash course in the joys and challenges of home-schooling. One year on since the first UK lockdown and the ‘new normal’ no longer feels very ‘new’.
An impact of the crisis which may not have been immediately foreseen at the start of the pandemic, however, is the increase in the number of trade mark owners seeking to enforce their rights via domain name dispute proceedings.
On 2 March 2021, the World Intellectual Property Office (‘WIPO’) published its 2020 Madrid System data, which tracks various things including the number of International Patent Applications filed via WIPO, the number of International Trade Mark Applications filed under the Madrid system and the number of International Design Applications filed under the Hague system. In the report, it was noted that in 2020 4,204 cases were filed with WIPO’s Arbitration and Mediation Center under the Uniform Domain Name Dispute Resolution Policy (‘UDRP’). This is the highest number of filings since WIPO adopted the UDPR just over 20 years ago.
WIPO, which remains the most widely used ICANN-accredited domain name dispute resolution service provider, attributes the uptake in right-holders lodging complaints in 2020 to “the greater number of people spending more time online during the Covid-19 pandemic”. In the report it is claimed that trade mark owners are turning to WIPO’s domain name dispute service “not only to reinforce their online presence, but also to offer authentic content and trusted sales outlets to internet users across varied business areas”.
Unfortunately, it does appear that some parties have sought to exploit the changed circumstances brought about by Covid-19 and the widespread anxiety of consumers across the world. It was reported last year that scam websites had appeared selling face masks and even fake cures. The risk of reputational damage to well-known trade marks if they were to be associated with such scam websites is evident.
We have recently represented clients in a number of successful complaints conducted via WIPO’s domain name dispute service and have found that the proceedings are conducted very efficiently and the representatives are always communicative and helpful.
If you have any questions regarding the options available for challenging a domain name registration or any other online activities of a third party, do get in touch with us here at R&G and we will be happy to help.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.