Security firm sues Facebook to overturn UDRP loss of “good faith” typo domains

Security company Proofpoint has sued Facebook in order to keep hold of several typo domains that are deliberately intended to look like its Facebook and Instagram brands.

Proofpoint wants an Arizona court to declare that facbook-login.com, facbook-login.net, instagrarn.ai, instagrarn.net and instagrarn.org are not cases of cybersquatting because they were not registered in bad faith.

Proofpoint — a $7 billion company that certainly does not phish — uses the domains in anti-phishing employee training services, as it describes in its complaint:

Proofpoint uses intentionally domain names that look like typo-squatted versions of recognizable domain names, such as , and the other Domain Names at issue in these proceedings.

By using domain names similar to those of well-known companies, Proofpoint is able to execute a more effective training program because the workforce is more likely to learn to distinguish typo-squatted domains, which are commonly abused by bad actors to trick workers, from legitimate domain names.

Employees who click the bogus links are taken to harmless web pages describing how they were duped.

The court case comes shortly after Facebook prevailed in a UDRP case filed with WIPO.

In that case, the panelist decided that Proofpoint had no legitimate interest in the domains because they led to web sites that linked to Proofpoint’s web site, where commercial services are offered.

He therefore found that the names had been registered in bad faith, because visitors could assume that Facebook or Instagram in some way endorsed these services.

Proofpoint wants the court to reverse that decision and allow it to keep the names. Here’s the complaint (pdf).

It strikes me as at the very least bad form for Facebook to go after these domains, given that Proofpoint is tackling the Facebook phishing problem at source — user idiocy — rather than the reactive, interminable UDRP whack-a-mole Facebook seems to be engaging in.

Facebook, under Chinese court threat, transfers Instagram.com to its new registrar

It’s not quite cyberflight, but Facebook has transferred threatened domain name instagram.com to its newly acquired in-house registrar.
Whois records show that the domain, used for the popular photo-sharing social network, was moved from MarkMonitor to RegistrarSEC yesterday.
It emerged on Friday that Facebook had recently acquired RegistrarSEC.
So why the transfer?
It does not appear that the move is part of a wholesale transfer of domains — facebook.com, whatsapp.com, fb.com and all the other Facebook domains I checked are still with MarkMonitor.
Instead, I would speculate that it’s related to the lawsuit in China in which the family of a deceased cybersquatter are fighting for the return of the domain to their ownership.
Instagram acquired the name for $100,000 from the Guangdong-based Zhou family in January 2011, just a couple of months after Zhou Weiming, the now deceased patriarch, bought it from an American domainer.
According to a lawsuit (pdf) filed against the family in California by Instagram this January, Zhou’s widow and two daughters are suing the third daughter in a Chinese court for selling the domain without the proper authority.
They want the domain returned to them.
By transferring instagram.com to a registrar completely controlled by Facebook, the company has removed one huge risk factor from the Chinese lawsuit.
If MarkMonitor were to be served with a Chinese court order ordering the transfer of the domain to the Zhous, and it were to comply, the Instagram service used by millions could be held hostage by a group of known cybersquatters.
Now that the domain is at RegistrarSEC, Facebook gets the ability to refuse to comply with any such order.
This all begs the question of whether the deep-pocketed social network would go to the trouble of acquiring a registrar (with only 11 names to its accreditation) purely to provide a layer of insurance.
A fresh ICANN accreditation would be cheaper, but would take longer, and transferring to a different third-party registrar wouldn’t really solve the problem.
Instagram is predicted by one analyst to provide Facebook with $5.8 billion in annual revenue by the end of the decade.

Instagram paid Chinese cyberquatter $100,000 for instagram.com, Facebook lawsuit reveals

Facebook has sued a Chinese cybersquatter for trying to renege on a five-year-old deal that saw it buy the domain instagram.com for $100,000.
The lawsuit, filed in California last week, claims that a family of known cybersquatters, based in Guangdong, is trying to have the purchase invalidated by a Chinese court.
The company, which acquired Instagram for $1 billion in 2012, wants the court to rule that the domain deal was legal, preventing the cybersquatters retaking control of the domain.
Photo-sharing app Instagram launched in October 2010 using the domain instagr.am.
At that time, instagram.com was owned by a US-based domain investor, but it was bought by Zhou Weiming about a month later.
Zhou, Facebook says, was the now-dead father of three of the people it is suing, and the husband of the fourth.
When Zhou purchased the domain, Instagram had become wildly popular, well on the way to hitting the million-user mark in December 2010.
Instagram had applied for the US trademark on its name in September 2010, less than a month before its launch.
The company made the decision to pay $100,000 for the domain in January 2011.
The Whois information for instagram.com changed from Zhou Weiming to Zhou Murong, apparently his daughter, around about the same time, though the registrant email address did not change.
The purchase was processed by Sedo, according to a copy of the deal filed as evidence (pdf).
Now, Murong’s mother and sisters are suing her and Instagram in China, claiming she did not have the authority to sell the domain, according to Facebook’s complaint.
Facebook claims the Chinese suit is a “sham” and that the whole Zhou family is acting in concert.
The company wants the California court to declare that the sale was valid, and that registrar MarkMonitor should not be forced to transfer the domain back to the Zhous.
Facebook in 2014 won a 22-domain UDRP case against Murong Zhou, related to typos of its Instagram trademark.
Read the full California complaint as a PDF here.

Are new gTLD registries ripping off brands with unfair sunrise fees?

Forget .sucks — several less controversial new gTLD registries have come under fire from the likes of Google, Facebook and Adobe for charging sunrise fees as high as $17,000 for domains matching famous trademarks.
According to figures supplied to DI by ICANN’s Business Constituency, the domain instagram.love carries a $17,610 “Premium Name Fee” during the current sunrise period.
Instagram is of course the photo sharing service belonging to Facebook, and to the best of my knowledge not a dictionary word.
The domain facebook.love has a $8,930 fee, these figures show, while google.love costs $6,610, both in addition to sunrise fees of $350 and annual fees of $60.
The regular sunrise fee for .love comes in at $265 at some registrars.
The new gTLDs .design, .video, .wang, .wein, .rich and .top also seem to carry very high fees for brands such as Facebook, according to the BC’s numbers.
Google recently filed a public comment with ICANN which warned:

some registry operators are taking advantage of rights owners during Sunrise by charging exorbitant and extortionate Sunrise registration fees. Although such pricing policies are not strictly within the ICANN compliance mandate, they contravene the spirit of the RPMs [rights protection mechanisms], damage ICANN’s reputation, harm consumers in contravention of ICANN’s mandate to promote the public interest, and create disincentives for rights owners to take advantage of the Sunrise period

Similar comments were sent by the Intellectual Property Constituency, BC, and others.
The issue of registries charging super-high “premium” fees for trademarked names has been on the radar of the BC and the IPC since at least 2013.
It seems that in at least some cases, trademark owners are being hit with the higher fees because their marks are dictionary words that the registry has identified as premium due to their regular meaning.
For example, adobe.design is on the list of names provided by the BC, carrying a $1,175 registration fee.
But Andrew Merriam, director of business development at .design registry Top Level Design, denied that the software company is being targeted. Instead, he said “adobe” refers to the material used in architecture — its dictionary meaning.
He said: “Stucco.design, concrete.design, wood.design, granite.design (and many other materials and building styles) are all on the premium list, at varying prices. In fact, adobe.design is priced on the lower end of all these materials.”
Merriam said the registry’s premium fee for adobe.design is actually $250 and speculated that $1,175 could be the price quoted by Adobe’s brand protection registrar post-markup. It was $349 at Go Daddy, he said.
In other cases, trademarks may have found their way on to premium lists due to a lack of manual vetting by the registry, rather than nefarious targeting.
In the case of instagram.love, Evatt Merchant of .love registry Merchant Law Group told DI that Facebook can buy the name for the normal sunrise fee if it wants.
He told DI that trademark owners should contact the registry if they believe their marks have been wrongly given premium prices. He said:

While it is possible that some brand terms that are frequently googled have ended up on the premium list, valued based on their Google search frequency, there is a simple solution. During the sunrise period, brands seeking non-dictionary trademarked domain names can contact the registry so that a review of individual sunrise pricing can occur. As has already occurred, such requests will often result in the .LOVE TLD voluntarily offering to reduce their sunrise application cost to the base sunrise price and that would certainly be the case for Instagram.

ICANN’s does not regulate pricing in new gTLDs, but nevertheless the IPC and BC and their members have asked ICANN to include premium pricing of trademarked names in its upcoming review of rights protection mechanisms.