Donald Trump loses second UDRP case

Former US president Donald Trump has lost a second cybersquatting case related to his Mar-a-Lago resort, where he lives in Florida.

A three-person WIPO panel late last month ruled that DTTM Holdings, which has owned a trademark on the term Mar-a-Lago since 1997, had failed to show that the registrant of maralago.com, Michael Gargiulo, did not have a legitimate interest in the domain.

Gargiulo, an investor who bought the domain from a third party in 2021, had argued that “mar a lago” is a generic term, meaning “sea to lake” in Spanish and other languages. He also said it could mean the personal name “Mara Lago”.

DTTM failed to convince the WIPO panel otherwise. It ruled (pdf) that “the Complainant was unable to provide persuasive specific evidence to overcome the Respondent’s arguments”. It did not rule on whether the registration was made in bad faith.

It’s the second Mar-a-Lago case DTTM has lost recently. Late last year it lost a UDRP complaint against a company called Marq Quarius (from which Gargiulo acquired maralago.com) over the domain mar-a-lago.com.

The single panelist in the earlier case (pdf) ruled that while the registrant’s defense (that the three words in the domain corresponded to the names of dead pets) strained credulity, there was no evidence of bad-faith cybersquatting.

Trump uses maralagoclub.com for the club’s official web site.

.ai helps UDRP cases rise in 2023, WIPO says

The number of cybersquatting cases filed with the World Intellectual Property Organization increased 7% in 2023, WIPO said this week.

The total UDRP filings, 6,192, includes national ccTLD variations that WIPO handles but not UDRP filings with other providers.

WIPO said that 82% of cases resulted in the domain being transferred to the complainant, with the complaint being denied in just 3% of cases.

The organization does not publish data on Reverse Domain Name Hijacking findings, but RDNH.com, which tracks these things, shows 31 RDNH finding at WIPO in 2023.

.com accounted for 80% of complaints. WIPO said that the most complained-about ccTLDs were .co (Colombia), .cn (China), .mx (Mexico), .au (Australia) and .ai (Anguilla).

Perhaps unsurprisingly, given its rapid growth in registrations, Anguilla’s .ai saw a sharp uptick in UDRP filings last year, up from just four in 2022 to 43 in 2023, according to the WIPO web site.

Ukrainian domains slide as war becomes the new normal

Ukraine’s ccTLD is starting to see a decline in its total domains under management as emergency policies related to Russia’s full-scale invasion in February 2022 are relaxed.

According to local registry Hostmaster, .ua’s total was down 1.5% at the end of the first quarter at 612,778 domains, due to the fact that expiring domains that were frozen in 2022 have now started to drop.

Hostmaster said the effect will become more noticeable in coming quarters. Stats show a decline of about a thousand domains since the end of June.

When the war started, .ua had about 558,000 domains. It peaked at around 614,000 in early June.

Early in the conflict, Hostmaster had said that expired domains would be held in a redemption period status. Many registrants were assumed to have been drafted into the military or refugees.

Since then, the registry says a “significant number” of expired domains have been restored.

However, the policy was rolled back this June; expired domains now have the antebellum standard 30 days to be restored. Domains that were not renewed in 2022 still have a November deletion date, Hostmaster said.

Meanwhile, WIPO has recently restarted its UDRP services for Ukraine, having paused them in May 2022 in response to the war. Decisions that were paused in early 2022 have now been executed and published.

UDRPs up in 2022, firm says

The World Intellectual Property Organization saw an increase in cybersquatting disputes this year, according to WIPO data compiled by VPN maker AtlasVPN.

There were 5,616 UDRP complaints filed with WIPO, up almost 10% from 2021, the company said.

The report does not appear to include data from the several other UDRP providers, so may not reflect the state of the system as a whole.

WIPO has processed 61,284 UDRP cases since the system was founded over two decades ago, the company said.

You can’t appeal a UDRP appeal, ICANN Ombudsman says

ICANN’s independent Ombudsman has called an Indian vaccine maker’s second Request for Reconsideration over a failed UDRP case a “misuse” of the Org’s appeals process.

Zydus Lifesciences lost its UDRP over the domain zydus.com earlier this year, with a finding of Reverse Domain Name Hijacking, then used the RfR process to try to get ICANN’s board of directors to overturn the WIPO decision.

The Board Accountability Mechanisms Committee dismissed the complaint because Reconsideration is designed for challenging ICANN’s actions and WIPO is not ICANN.

Zydus immediately filed a second RfR, calling WIPO “an extension of ICANN itself” and that BAMC’s inaction on the first RfR meant the case was now subject to the board’s jurisdiction.

In a rare intervention, Ombudsman Herb Waye poo-poos that notion, writing: “Decisions by the WIPO Panel in a domain name dispute are not sufficient basis for an RfR (hence the BAMC had no ‘jurisdiction’ other than the jurisdiction necessary to dismiss the Request).”

I feel that [the second RfR] has placed the BAMC in the awkward position of policing itself; hence perhaps, its hesitancy to summarily dismiss a Request concerning its own actions. A clear attempt by the requestor to appeal the decision in [the first RfR]. An unfortunate situation that, to me, amounts to misuse of this accountability mechanism.

He concluded that for the BAMC to consider the complaint would be a “waste of resources” and that it should be dismissed.

Zydus will still be able to appeal the UDRP in court, but that of course will be much more expensive.

RDNH loser files second appeal

A big drug company has appealed to ICANN for a second time over a Reverse Domain Name Hijacking ruling against it, claiming ICANN should be responsible for the decisions of the World Intellectual Property Organization.

India-based Zydus Lifesciences, which among other things makes Covid-19 vaccines, lost a UDRP complaint against the owner of zydus.com in June. To add insult to injury, WIPO made a RDNH finding against it.

Rather that go to court, Zydus filed a Request for Reconsideration with ICANN in July, but this was summarily dismissed because the Reconsideration mechanism only applies to the actions or inactions of the ICANN board or staff.

Now Zydus has filed a second RfR, in which its lawyers claim ICANN is responsible for WIPO’s UDRP decisions and failure to address the first RfR amounts to board inaction. The latest claim states:

when a dispute resolution service provider is accredited by ICANN to conduct mandatory administrative policy, as prescribed by the UDRP adopted by ICANN, such service providers are extension of ICANN itself

Zydus claims the WIPO panel erred by relying on what it claims were false and misleading statements by the zydus.com registrant. It wants the decision reversed and the three panelists forever barred.

I doubt the RfR will get anywhere. ICANN’s Board Accountability Mechanisms Committee is not about to make itself the de facto court of appeals for every UDRP party who thinks they got stiffed.

Vox Pop defends its favorite cybersquatter

The .sucks registry, Vox Populi has complained to ICANN about the fact that its biggest customer keeps losing cybersquatting cases.

In its submission to ICANN’s recently closed public comment period on UDRP reform, Vox Pop bemoans the fact that panels keep finding that Honey Salt, a shell company based in a tax haven, isn’t really engaging in non-commercial free speech.

Honey Salt was the registrant of thousands of .sucks domains, all matching famous trademarks, that redirected visitors to a wiki-style gripe site, populated with content scraped from third-parties, at Everything.sucks.

After a long series of lost UDRP cases, Honey Salt started allowing its domains to expire and zone files suggest only a couple hundred or so remain today.

Neither Honey Salt nor Everything.sucks responded to ICANN’s public comment period, which was seeking input on possible changes to UDRP.

But Vox Pop did on their behalf, complaining bitterly that “forum shopping and bias obstruct free speech” and citing mostly Honey Salt’s lost UDRP cases to evidence its arguments:

Despite 4(c)(iii) of the UDRP stating “noncommercial or fair use” is legitimate use of a domain name – numerous UDRP decisions contradict the Policy’s express recognition of fair use and free speech rights in favor of trademark owners. Several recent UDRP decisions have jeopardized free speech rights for all domain name registrants because of the lack of guidance from ICANN and/or a misapplication of free speech rights and/or bias as it relates to criticism sites.

Honey Salt had consistently argued, UDRP decisions show, that Everything.sucks was non-commercial free speech and as such was not cybersquatting under UDRP precedent and WIPO guidance.

But panels repeatedly pointed out that Everything.sucks was in fact commercial.

At first, the site hosted banners linking directly to sales landers for the domains in question — basically asking the brand owners or others to fork out hundreds or thousands of dollars to claim their matching domains.

When panelists got wise to that, the site started instead publishing the transfer authorization codes for the domains in question, so literally anyone could initiate a transfer and take ownership of the name without even asking Honey Salt’s permission — if they were willing to pay the transfer fee.

Everything.sucks and Honey Salt would not have benefited financially from these transfer fees, which often were thousands of dollars, but Vox Pop, and sometimes its registrar sister company Rebel, which sells .sucks names at cost, would.

Everything.sucks has removed the AuthCodes, but in the most-recent .sucks UDRP case Eutelsat v Honey Salt, the panel called the AuthCode scheme “little more than a ruse to generate registration fees in the thousands of dollars range”.

Vox Pop is now complaining to ICANN, I’m guessing with a straight face, that transfer fees are ICANN-mandated and therefore registrants cannot be blamed if registrars charge for transfers:

The panelist, in an unfounded grasp, used the ICANN-mandated transfer fee, charged by the registrar as rationale to find commercial use by the registrant and hence bad faith by the registrant. Other UDRP panels have similarly disingenuously blamed registrants for ICANN-mandated transfer and renewal fees imposed by registrars; panelists argue that the ICANN-mandated transfer is bad faith even though the registrant has no say or participation.

It’s an incredibly ballsy complaint by Vox Pop, given that it is Vox Pop, as the registry, that sets the price for transfers and renewals in .sucks, and that it is Vox Pop, as the Eutelsat panel noted, that has flagged many trademarks as “premium”-tier names that costs thousands of dollars to transfer and renew.

Vox also argues that it is possible for trademark-owners to “forum shop” between the various UDRP providers, in the hope of finding a panel more favorable to intellectual property interests over free speech rights.

It’s certainly not the only ICANN commenter to make this point, but it’s a pretty thin argument in the case of Honey Salt and .sucks.

Vox argues that WIPO repeatedly favors IP rights over free speech rights, and the outcome of Honey Salt’s UDRP cases may indicate why it holds that view.

Of the 20-odd UDRP cases Honey Salt has defended, most were filed with WIPO and all those filed with WIPO resulted in a complainant win. Three were filed with the National Arbitration Forum and three were filed with the Czech Arbitration Court.

The only case Honey Salt won on the merits was Miraplex v Honey Salt, one of the first cases, filed with the Czech Arbitration Court. That panel bought the defense that Everything.sucks was non-commercial free speech.

But one of the panelists in that case later sat on another Czech Arbitration Court case, Cargotec v Honey Salt, which decided in favor of the complaint. The same guy ruling two different ways on almost identical facts does not suggest panelist bias.

While at least one UDRP panel has suggested Honey Salt is just a front for the .sucks registry, Vox Populi has previously denied any connection exists.

UDRP cases soar at WIPO in 2021

The World Intellectual Property Organization has released statistics for cybersquatting cases in 2021, showing one of the biggest growth spurts in UDRP’s 22-year history.

Trademark owners filed 5,128 UDRP complaints last year, WIPO said, a 22% increase on 2020.

There have been almost 56,000 cases since 1999, covering over 100,000 domains names, it said.

The number of annual cases has been growing every year since 2013, its numbers show.

WIPO took a punt that the increase last year might be related to the ongoing coronavirus pandemic, but didn’t really attempt to back up that claim, saying in a release:

The accelerating growth in cybersquatting cases filed with the WIPO Center can be largely attributed to trademark owners reinforcing their online presence to offer authentic content and trusted sales outlets, with a greater number of people spending more time online, especially during the COVID-19 pandemic.

The number of domains hit by UDRP that include strings such as “covid” or “corona” or “vaccine” are pretty small, amounting to just a few dozen domains across all providers, searches show.

The growth does not necessarily mean the total number of UDRP cases has increased by a commensurate amount — some of it might be accounted for by WIPO winning market share from the five other ICANN-approved UDRP providers.

It also does not indicate an increase in cybersquatting. WIPO did not release stats on the number of cases that resulted in a domain name being transferred to the complaining trademark owner.

If you guessed Facebook’s “Meta” rebrand, you’re probably still a cybersquatter

Guessing that Facebook was about to rebrand its corporate parent “Meta” and registering some domain names before the name was officially announced does not mean you’re not a cybersquatter.

Donuts this week reported that its top-trending keyword across its portfolio of hundreds of TLDs was “meta” in October. The word was a new entry on its monthly league table.

We’re almost certainly going to see the same thing when Verisign next reports its monthly .com keyword trends.

The sudden interest in the term comes due to Facebook’s October 28 announcement that it was calling its company Meta as part of a new focus on “metaverse” initiatives.

The announcement was heavily trailed following an October 19 scoop in The Verge, with lots of speculation about what the name change could be.

Many guessed correctly, no doubt leading to the surge in related domain name registrations.

Unfortunately for these registrants, Facebook is one of the most aggressive enforcers of its trademark out there, and it’s pretty much guaranteed that Meta-related UDRP cases will start to appear before long.

While Facebook’s “Meta” trademark was only applied for in the US on October 28, the same date as the branding announcement, the company is still on pretty safe ground, according to UDRP precedent, regardless of whether the domain was registered before Facebook officially announced the switch.

WIPO guidelines dating back to 2005 make it clear that panelist can find that a domain was registered in bad faith. The latest version of the guidelines, from 2017, read:

in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.

Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.

Precedent for this cited by WIPO dates back to 2002.

So, if you’re somebody who registered a “meta” name after October 19, the lawyers have had your number for the better part of two decades, and Facebook has a pretty good case against you. If your name contains strings such as “login” or similar, Facebook’s case for bad faith is even stronger.

Of course, “meta” is a dictionary word, and “metaverse” is a term Facebook stole from science fiction author Neal Stephenson, so there are likely thousands of non-infringing domains, dating back decades, containing the string.

That doesn’t mean Facebook won’t sic the lawyers on them anyway, but at least they’ll have a defense.

.sucks registry probably “connected” to mass cybersquatter, panel rules

Vox Populi, the .sucks registry, is probably affiliated with and financially benefiting from a mass cybersquatter, a panel of domain experts has said.

In the UDRP case of Euromaster v Honey Salt, a three-person panel handed the complainant the domain euromaster.sucks, ruling that it was a case of cybersquatting.

It’s one of 21 .sucks UDRP complaints filed against Honey Salt, a Turks & Caicos company operating under unknown ownership believed to own hundreds or thousands of brand-match .sucks domains.

It’s lost 17 of the 19 so-far decided cases. It also won one case on a technicality and another early case on the merits after mounting a free-speech defense that subsequent panels have not bought.

What’s new about this one is that the WIPO panel — Lawrence Nodine, Douglas Isenberg and Stephanie Hartung — is the first to follow the money and openly infer a connection between Honey Salt and Vox Pop.

The panel said that it “infer[s] that the Respondent [Honey Salt] and Registry [Vox Pop] are connected”, and that Vox is probably trying to make money by charging trademark owners premium fees for their own brands.

Vox Pop has previously denied such a connection, when I first made the same inference last October.

Regular readers will recall that Honey Salt has registered hundreds of .sucks domains and pointed them to a wiki-style web site called Everything.sucks, ostensibly run by a third-party, US-based non-profit.

Rather than containing original “gripe” content, which could easily enable it to win a free-speech UDRP defense, Everything.sucks simply populates its site with poor-quality, context-free content scraped by bots from social media and third-party web sites such as TrustPilot and GlassDoor.

Originally, each page carried a banner linking to a secondary market page at Uniregistry or Sedo where the domains could be purchased, often at cost price.

That quickly disappeared when the first UDRP cases started rolling in, and earlier this year Everything.sucks said on each page that it refused to sell its domains to anyone, instead offering a free transfer.

It even published the pre-authorized transfer codes on each page, meaning literally anyone could seize control of the domain in question without asking permission from or negotiating with Honey Salt in advance.

The problem with that is that transfers are not free. Some domains are flagged as premium — including lots of brand-matches — and have transfer fees in the thousands of dollars. Even the cheapest still carry the base registry fee.

Many registrars steer well clear of this model, disallowing any .sucks transfers.

One registrar that reliably does allow .sucks transfers is Rebel, which is sister company to Vox Pop under the Momentous group of companies. It offers .sucks domains at the registry wholesale fee, which is $200 for an non-premium.

It’s been painfully obvious since the outset that the only parties that stand to make a profit on the Everything.sucks business model are the registry and its affiliated companies — it simply doesn’t make sense that Honey Salt would invest hundreds of thousands of dollars in trademark-infringing domains, simply to hand them over at cost.

But the Euromaster panel is the first to infer the connection, or at least the first to publicly infer the connection.

Euromaster had filed a supplemental document in its complaint pointing out that the “free” transfer of euromaster.sucks would in fact cost a “premium” fee of $2418.79. The registrar quoting that fee is not revealed.

The WIPO panel asked Honey Salt for an explanation and it sounds like it got a bunch of procedural waffle in response.

This led to the following discussion, to which I’ve added some emphasis:

The Panel also finds that Respondent [Honey Salt] has failed to show that it has no financial interest in the Disputed Domain Name. Complainant’s Supplemental submissions demonstrate that Complainant’s chosen registrar quoted a fee of USD 2418.79 to transfer the Disputed Domain Name. Complainant’s report is consistent with M and M Direct Limited v. Pat Honey Salt, Honey Salt Limited, WIPO Case No. D2020-2545, where a different panel conducted an independent investigation and reported that the domain name at issue in that case was not offered “free” as promised, but instead that registrars classified the domain names at issue as “premium” and quoted transfer fees of USD 3,198 and USD 4,270 respectively.

This directly contradicts any claim to be offering a free and noncommercial service, and given that any registration would result in a fee being paid to the Registry by a registrar, leads the Panel to infer that the Respondent [Honey Salt] and Registry [Vox Pop] are connected.

Given the prior decision in M and M Direct, and the evidence that Complainant’s Supplemental submissions, the Panel afforded Respondent an opportunity to submit additional argument and evidence to explain the inconsistency. Respondent made no effort to do so, but instead only opposed consideration of Complainant’s supplemental evidence and repeated its previous contentions. The Panel rejects the objections to Complainant’s Supplemental submission, and emphasizes that Respondent was given an opportunity fully to respond.

The Panel finds that Complainant’s evidence raises substantial questions about the credibility of Respondent’s assertion that it has no financial interest in the Disputed Domain Name and whether Respondent’s offer to transfer the Disputed Domain might, directly or indirectly, financially benefit Respondent. Accordingly, the Panel finds that Respondent has not carried its burden to show that its use is noncommercial

In other words, the panel suspects that Vox Pop is in on Honey Salt’s bulk-cybersquatting game.

The closest any other UDRP panel has come to making this link was in a recent case filed by multiple, unrelated trademark owners, where the panel, while denying the complaint on procedural grounds, suggested that aggrieved trademark owners instead invoke ICANN’s Trademark Post Delegation Dispute Resolution Procedure.

The Trademark PDDRP is a mechanism — so far unused and untested — that allows trademark owners to allege registry complicity in cybersquatting schemes. Think of it like UDRP for cybersquatting registries.

Frankly, I’m amazed it hasn’t been used yet.