Brands Leverage UDRP to Defend Domain Name Abuse in Light of Rise in Ecommerce – Intellectual Property

United States: Brands leverage UDRP to defend against domain name abuse in light of e-commerce boom

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Electronic commerce is booming. Online spending in the United States increased 32.4% between 2019 and 2020. According to Quantum Metric, 25% of holiday shoppers plan to make purchases from their mobile device this year.

It naturally follows that those who exploit brands for their own personal gain (illegally) also increase their online activity. Yesterday, the FBI released a liaison briefing report to educate private sector partners about criminal actors engaging in fraudulent schemes to steal goods from U.S. companies by exploiting shipping and logistics procedures.

Recently, and possibly due to the recent significant increase in e-commerce, we have seen an increase in “typosquatting” associated with identity theft and outright fraud. Typosquatting is the act of buying a domain name that is confusingly similar to another’s brand, often with a common or easily missed misspelling.

How do you know if your business, brand or brand has been victimized?

Usually businesses learn of this action after one of their customers reports that they have been contacted by someone using an email address that is confusing with the brand and / or company name with an offer. to sell the types of goods or services sold by the trademark owner. The scammer will often use the name and title of an employee of the company (C-level employee or sales manager) in the signature block and request full or partial prepayment before the goods are sent.

In other cases, the name and title of a purchasing employee, such as a “Procurement” or “Procurement” manager, or a technical position, such as an information systems manager, is used by the wrong actor. In these situations, computer equipment or other companies that regularly supply companies are contacted with orders placed on behalf of the company. For example, the target company might be contacted with an order requesting that 150 laptops be sent to the wrong actor, with the invoice to be sent to the owner of the imitated brand in the order illegally using the brand, employee, name of company and a typosquatted email or website address.

Often times, to increase the confusion, the wrong actor will point the misspelled domain to the real business website or direct the domain name to a website that mirrors and copies the real business website.

What are some typosquatting tricks commonly used by bad actors?

  1. Add “www” to the front of the brand, or “com” to the back (examples: wwwdomain.com Where domainecom.com)
  2. Submit a letter or add a letter (examples: ddomain.com or dmain.com)
  3. Exchange an “i” with a lowercase “L” (example: domaln.com)
  4. Adding a number, in particular instead of an “i” or an “L” (example: dom1n.com)
  5. Addition of a hyphen, especially in situations where the mark includes more than one word (example: brand-de-commerce.com)
  6. Use of “.net”, “.org”, “.cm” or “.co” instead of “.com”

To find a list of common misspellings for your brand or domain name, visit https://domaincheckplugin.com/typo.

Cybercriminals are hard to find.

Victim brand owners are generally at a disadvantage because they cannot locate or identify the wrong actor. Most often, domains are registered using widely available privacy services that protect the identity and contact details of domain name owners. In addition, registrars are not required to verify the name and contact details provided to them when purchasing a domain name, so that a malicious actor could register a domain name by. using the name and address of the company that has been abused.

If this happens, what can you do?

Trademark owners often look to the Uniform Domain Name Dispute Resolution Policy (UDRP) which applies to domain names registered using global extensions such as “.com” and “.net”. The UDRP process typically takes less than two months to reach a decision at first instance and costs significantly less than filing a lawsuit. In addition, since the UDRP system applies (via a contractual agreement) to anyone who registers a domain name, there is no difficulty in determining the correct jurisdiction to file a complaint. While the UDRP process cannot stop identity theft, it may require the registrar and registrant to transfer control of the domain name to the trademark owner, which from a standpoint practice, will often remove one of the key tools used in abusive actions.

If your business has not yet implemented a monitoring program for recent registrations of domain names similar to your brands, consider setting one up.

Brand owners have turned to the UDRP to defend against online abuse.

The number of UDRP filings with the two most widely used arbitration systems in the United States, the WIPO (World Intellectual Property Organization) and the Forum (formerly known as the National Arbitration Forum), has increased significantly over the past year. in recent years, reflecting the growth of e-commerce and online abuse.

2020 saw a 13.6% increase in the number of UDRP cases filed with WIPO and the Forum compared to 2019, and we are on track to record double-digit growth again this year.

At Armstrong Teasdale, we help many brand owners protect their brands both online and offline, and we sometimes see trends in bad actors and brand abuse. Our team can help you design a watch program and review watch notices to help you identify and deal with potentially abusive domain name registrations quickly and proactively. Please contact your usual AT lawyer or one of the authors listed below for additional information specific to your situation.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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