Registrar hit with second porn UDRP breach notice this year

A Chinese registrar group has been accused by ICANN of shirking its UDRP obligations for the second time this year.

ICANN has put Hong Kong-based DomainName Highway on notice that is in breach of its contract for failing to transfer the domain 1ockheedmartin.com to defense contractor Lockheed Martin.

The domain is a straightforward case of typosquatting, with the initial L replaced with a numeral 1. At time of writing, it still resolves to a page of pornographic thumbnail links, despite being lost in a UDRP case January 4.

Under UDRP rules, registrars have 10 days to transfer a UDRP-losing domain to the trademark owner, unless a lawsuit prevents it.

The circumstances are very similar to a breach notice ICANN issued against ThreadAgent.com over a case of BMW’s brand being cybersquatted with porn last month.

Both ThreadAgent and DomainName Highway appear to be part of the XZ.com, aka Xiamen DianMedia Network Technology Co, which is based in China but has about 20 accredited registrars based in Hong Kong.

DomainName Highway has about 30,000 gTLD domains under management.

UDRP respondent has name hidden on mental health grounds

An accused cybersquatter has had his or her name redacted from the UDRP record on mental health grounds in what appears to be an unprecedented decision.

The case of Securian Financial Group v [redacted] resulted in the transfer of securian.contact to the complainant, but the ADR Forum panelist did not make a determination on the merits.

Rather, the registrant had asked for the domain to be transferred free of charge and for their personal details to be kept out of the public record, telling the panelist:

I have a documented mental health history. I want to request ICANN and/or the complainant to at least redact my personal information from this case on medical grounds… I do not want to submit or reveal my medical documents to anyone, but if required by ICANN, I will do so.

The registrant said that the case had proved “mentally impactful” and that they did not want their name appearing in search results as it could affect their job and university applications.

The panelist found UDRP precedent of personal information being redacted in cases of identity theft and applied it to these apparently novel circumstances.

Because the respondent offered to freely give up the domain, the panelist did not decide on what would presumably have been a fairly cut-and-dried case.

Everything.sucks, in losing UDRPs, puts the lie to the .sucks business model

The World Intellectual Property Organization has delivered its first UDRP decision concerning a .sucks domain name, ruling that the name sanofi.sucks is in fact cybersquatting.

The three-person panel ruled that the domain was identical or confusingly similar to a trademark owned by Sanofi, a French pharmaceuticals manufacturer involved in producing vaccines for the COVID-19 virus.

That was despite the fact that the registrant, affiliated with the Everything.sucks project, argued that nobody would think a domain name ending in “.sucks” would be affiliated with the trademark owner.

That argument flies in the face of official .sucks registry marketing from Vox Populi Registry, which positions .sucks as a place for brand owners to consolidate and manage customer criticism, feedback and support.

The sanofi.sucks case is one of two UDRP losses in the last few weeks for Honey Salt, a Turks and Caicos-based company that is believed to account for over a third of all .sucks registrations.

Honey Salt has registered thousands of brand names in .sucks, linking them to a wiki site operated by Everything.sucks Inc that contains criticism of the brands concerned copied from third-party web sites such as TrustPilot and GlassDoor.

There’s evidence that Everthing.sucks and Honey Salt are affiliated or share common ownership with Vox Pop, but the registry has denied this.

In the Sanofi case, Honey Salt mounted a free speech defense, saying it was providing a platform for legitimate criticism of the company and that Sanofi was using the UDRP to silence such criticism.

Sanofi claimed that the domain had in fact been registered for commercial purposes and to unfairly suggest an official connection to the company.

But what’s interesting is how Honey Salt argues that the domain itself, regardless of the associated web site’s content, is not confusingly similar to the Sanofi mark. The WIPO panelsts wrote, with my added emphasis:

The Respondent maintains that the disputed domain name is not identical or confusingly similar to a trademark in which the Complainant has rights. According to it, the “.sucks” gTLD is not like other generic TLDs, and its pejorative nature renders the disputed domain name as a whole nonidentical and prevents confusion, and the inclusion of “.sucks” in the disputed domain name makes clear that the associated website is not affiliated with the Complainant, but instead contains criticism of it and of its business.

In other words, if you visit a .sucks domain, you automatically will assume that the site is not associated with the brand owner.

Honey Salt seems to have made an identical argument in the UDRP case of cargotec.sucks, which it also lost at the Czech Arbitration Forum last month. The panelists in that decision summarized the company’s defense like this:

The TLD at issue here, however, .sucks, is not like other generic top level domains. Its pejorative nature renders the domain name as a whole nonidentical and prevents confusion… The inclusion of “.sucks” makes abundantly clear that the website is not affiliated with Complainant and instead contain criticism of its business.

Again, this is completely contrary to the stated goal of the .sucks registry.

Vox Pop has from the outset claimed that .sucks domains are a way for brands to aggregate customer feedback and criticism in one place, using a .sucks domain controlled by the brands themselves.

That purpose goes all the way back to its 2012 ICANN new gTLD application and continues to this day on its official web site and Twitter feed, which is primarily used to goad companies undergoing media controversies into registering and using their .sucks exact-match.

Hey, @WWE, everyone gets criticized, but not everyone has the stones to own it. You? I mean, you likely already control https://t.co/qHuEXjfVn5, why not use it? What do you think, @bleedingcool? https://t.co/Yv6b9OEaFp

— DotSucks (@dotsucks) January 24, 2021

Back in 2015, Vox Pop CEO John Berard told us:

A company would be smart to register its name because of the value that consumer criticism has in improving customer loyalty, delivering good customer service, understanding new product and service possibilities… They’re spending a lot more on marketing and customer service and research. This domain can another plank in that platform

Vox Pop even owns and uses voxpopuli.sucks and dotsucks.sucks, where it hosts a little-used forum welcoming criticism from people who say the company sucks.

But Honey Salt, its largest registrant by a significant margin, is now on-record stating that .sucks domains only imply ownership by third parties and could not possibly be confused with brand-owner ownership.

If the Many Worlds interpretation of quantum mechanics is correct, there exists a corner of the multiverse in which Honey Salt and Everything.sucks are just fronts for the entities that also control Vox Pop and its top registrar, Rebel.com. In that universe, it would be trippy indeed for the registry’s own affiliates to admit its entire stated business model is bullshit.

In our universe, that particular cat, which very probably has a goatee, is still firmly in the box, however.

Speculative forays into science fiction aside, Honey Salt’s record on UDRP is now three losses versus one win. It has six more cases pending at WIPO

ICANN to approve new UDRP provider

ICANN is set to approve a new UDRP provider at a board of directors meeting next week.
May 3, the board will approve the Canadian International Internet Dispute Resolution Centre as its sixth approved provider and the second based in North America.
The resolution to approve its now year-old application is on the consent agenda for next week’s meeting, meaning the decision to approve has basically already been made.
CIIDRC is a division of the British Columbia International Commercial Arbitration Centre, a non-profit set up by the BC government in the 1980s.
It’s been exclusively handling cybersquatting disputes over .ca domain names since 2002, under a deal with local registry CIRA.
The organization reckons it will be ready to start accepting complaints within a few months of approval, and could handle up to 200 cases per month.
It had a roster of 26 panelists in rotation at the time it applied to ICANN for UDRP approval, many of whom also provide their expertise to other UDRP providers such as WIPO and NAF.

Book review — “Domain Names: Strategies and Legal Aspects”

I’ve only ever read two books about the domain name industry.
The first one was Kieren McCarthy’s excellent Sex.com, the 2007 barely believable non-fictional tech-thriller that seemed to deliberately eschew inside-baseball policy talk in favor of a funny and rather gripping human narrative.
The second, Domain Names – Strategies and Legal Aspects, by Jeanette Soderlund Sause and Malin Edmar, is pretty much the diametrical opposite.
The book, published in its second edition in June, instead seems bent on explaining the complex intersection of domain names and intellectual property rights in as few words as it is able.
Coming in at a brisk 150 pages, it’s basically been engineered to funnel as much information into your brain as possible in as short a space of time as possible.
I blazed through my complimentary review copy during a three-hour train journey a couple months ago.
About half-way through, I realized I had done absolutely no background reading about the authors or publisher, and had no idea who the intended reader was.
The introduction, written for the 2014 first edition by a Swedish civil servant then on the GAC, gives the misleading impression that the book has something to say about multistakeholderism, DNS fragmentation, or new gTLD controversies.
It doesn’t. If the authors have any political opinions, you will not learn them from Domain Names.
What you will get is a competent reference work geared primarily towards IP lawyers and brand management folk who are newbies to the world of domain names.
The authors are both Swedish IP lawyers, though Soderland Sause is currently marketing VP for the .global gTLD registry.
The first half of their book deals with introducing and briefly explaining the high-level technical aspects of the DNS and the basic structure of the market, then discussing the difference between a trademark and a domain name.
An occasionally enlightening middle section of about 30 pages deals with strategies for selecting and obtaining domains, either as fresh registrations or from third parties such as cybersquatters, investors or competitors.
But the second half of the book — which deals with UDRP and related dispute resolution procedures — is evidently where the authors’, and presumably readers’, primary interest lies.
It goes into comparative depth on this topic, and I actually started to learn a few things during this section.
As a newcomer to the work, I cannot definitively say whether the new and updated content — which I infer covers developments in new gTLDs and such over the last four years — is worth the £120 upgrade for owners of the first edition.
It also seems to have gone to the printers before it was fully clear how ICANN was going to deal with GDPR; a third edition will likely be needed in a couple of years after the smoke clears.
I’d be lying if I said I had any fun reading Domain Names, but I don’t think I was supposed to.
I can see myself keeping it near my desk for occasional reference, which I think is what it’s mainly there for.
I can see IP lawyers or ICANN policy wonks also keeping copies by their desks, to be handed out to new employees as a primer on what they need to do to get their hands on the domains they want.
These juniors can then absorb the book over a weekend and keep it by their own desks for future reference, to be eventually passed on to the next n00b.
If that’s what it’s for, I think the authors have done a pretty good job of it.
Domain Names – Strategies and Legal Aspects, 2nd edition, by Jeanette Soderlund Sause and Malin Edmar, is published by Sweet & Maxwell.

ICM reveals tough .xxx cybersquatting rules

ICM Registry has finally taken the wraps off its rapid domain name takedown service, which promises to make life difficult for cybersquatters in the .xxx top-level domain.
The Rapid Evaluation Service, as it is known, is basically a souped-up version of the familiar UDRP that tilts the overall balance in favor of legit trademark holders.
It’s designed for companies or individuals who don’t want to be associated with .xxx domain names, and has the remedies to match.
Using RES, brand owners will be able to get a domain temporarily suspended in less than a week, and later have it switched off for good.
That’s right, if a name is lost under RES it goes into registry-reserved status. The complainant does not get control of the domain, and they don’t have to pay recurring renewal fees.
But it will not be cheap. The National Arbitration Forum is the only organization authorized to handle RES work, and it’s charging $1,300 per domain, with no discounts for multiple-domain cases.
RES does not replace UDRP, but it is based on it.
Like UDRP, its three pillars are the domain’s confusing similarity with the complainant’s trademark, the rights and legitimate interests of the registrant, and the question of bad faith registration.
While much of the RES has been copied straight from the UDRP, there are key differences.
ICM has codified some of the good case law that has emerged from the last decade of UDRP and eschewed some of the bad, arguably making RES less open to interpretation.
Notably, unless you’re filing to protect a personal name — celebrities, porn stars or just the average Jo(e) — RES is for nationally registered, in-use trademarks only. Other marks don’t seem to count.
Typos are explicitly included in the definition of confusing similarity (no microsfot.xxx), as are brand+keyword domains (microsoftporn.xxx).
Phonetic similarity also makes an appearance, which seems like it could open a great big can of worms.
The bad faith component of RES is very similar to UDRP, but with the addition of a typosquatting ban and the removal of the requirement to show the registration was made for “commercial gain”.
As far as registrants are concerned, there are some additional protections you won’t find in UDRP, notably this text, which seems to specifically make many generic terms immune:

(iii) the domain name in the .XXX TLD has a primary meaning apart from its secondary meaning as a trademark or service mark associated with the complainant, and is being used in connection with its primary meaning in association with which the complainant has not acquired distinctiveness in the adult-entertainment industry.

Technically, and very hypothetically, I interpret this to mean that if you registered apple.xxx (which you won’t) and used it to publish videos of men recreating that scene from American Pie, you probably couldn’t lose the domain to an RES complaint.
I expect this is largely of concern to companies that have registered trademarks that correspond to dictionary words. They may have to use UDRP as usual.
RES has previously been billed as a 48-hour solution, but in reality cases could take anywhere between three and five days before a Preliminary Decision is handed down.
After a complaint is filed, there’s a one-business-day turnaround for an administrative check, then another two business days for the panelist to decide what to do.
If a respondent has lost three or more RES cases in a year, the panelist will be entitled to presumptively consider them an “abusive registrant” for a preliminary decision.
Preliminary decisions can stop a domain resolving immediately, if the panelist thinks the complainant is likely to win and that there’s no “substantial likelihood of harm” to the registrant.
Registrants then have 10 days to respond before a final decision is made. If they default, maybe because they’re on vacation, they have up to three months to appeal.
In short, we’re looking at the bastard son of UDRP here.
I suspect the trademark lobby is going to quietly love it. If that’s the case, it might help the domain industry look a bit more respectable.
If you’re more likely to be a respondent than a complainant, you’d be well-advised to familiarize yourself with RES (and ICM’s other policies) before investing in gray-area .xxx domains.
The huge glaring problem with the policy as far as I’m concerned is that neither ICM or NAF is going to publish any of its decisions in full, only aggregated statistics.
This is ostensibly to protect the identities of the complainants, but it’s also going to cover up (probably inevitable) sloppy decision-making, which won’t be good for confidence in the .xxx TLD.
But if somebody cybersquats your mom, you’ll probably be glad of it.