Facebook cybersquatter asks ICANN to overturn UDRP ruling

A registrant who lost a slam-dunk cybersquatting complaint to Facebook owner Meta has asked ICANN to overturn the ruling, accusing WIPO of of breaching the UDRP rules by not publishing its decision fast enough.

The registrant apparently registered meta-platforms-inc.com earlier this year out of “frustration”, and in a state of some distress, after her social media accounts were closed by Meta. Meta’s full name is Meta Platforms Inc.

The registrant then asked Meta, when contacted by its lawyers, for financial compensation in exchange for the domain, according to WIPO’s findings (pdf).

It’s pretty much a clear-cut case of cybersquatting under the UDRP, and Meta prevailed. The domain was transferred to its ownership.

But the registrant has now complained to ICANN, using its Request for Reconsideration accountability procedure, saying WIPO broke its rules and behaved “fraudulently”.

The RfR is somewhat confusingly written, but the main thrust appears to be based on a misunderstanding of the UDRP rules, which require panels to submit their rulings to WIPO within 14 days of the complaint being submitted.

The registrant takes this to mean that the decisions also need to be published online within 14 days, which doesn’t appear to be the case. She wants the decision overturned on this basis.

Regardless of the merits, the RfR has zero chance of success. UDRP losers have tried and failed to invoke the Reconsideration policy to have their decisions reversed in the past.

Most notably, in 2022 Indian Covid-19 vaccine maker Zydus Lifesciences got miffed about the Reverse Domain Name Hijacking ruling it was given and filed two RfRs with ICANN.

The first was dismissed because RfR is used to challenge ICANN’s decisions and WIPO is not ICANN. In the second case, the Ombuds made a rare intervention to confirm that ICANN has no responsibility for UDRP rulings.

ICA teams up with WIPO on UDRP reform

The Internet Commerce Association and WIPO are jointly chairing an off-the-books review of the UDRP, ahead of a likely ICANN review of the anti-cybersquatting policy next year.

WIPO said today that the review is being coordinated by Brian Beckham of WIPO and Zak Muscovitch of the ICA, and comprises another 16 participants, mostly UDRP lawyers, panelists, and WIPO itself.

ICANN is being represented by director Sarah Deutsch. Domainers are represented by Telepathy’s Nat Cohen. The brand owner representative is Mette Andersen of regular UDRP complainant Lego.

The team is also drawing on the expertise of a couple dozen experts, a who’s who drawn from all sectors of the industry from registrars to domainers to IP interests to the UDRP providers themselves.

The composition looks very much like what an ICANN policy working group on this topic would look like, but the talks are being held outside of the usual policy development process.

WIPO says: “The core aim of this project is to maintain the UDRP as an efficient and predictable out-of-court dispute resolution mechanism for clear trademark-based disputes.”

But the organization seems to be engaging in some expectation management aimed at those who believe UDRP needs to be gutted. WIPO said:

Any recommendations should be borne out by a demonstrated compelling need for a change, and must be considered against this background, as any perceived case-specific or anecdotal faults of the UDRP do not warrant a wholesale revision of this industry best practice.

The group is expected to produce a report early next year for public input, and share a final report with ICANN thereafter, when the GNSO community is expected to kick off its owner formal Policy Development Process looking at UDRP.

UDRP review has been on the back-burner for the last couple of years since an initial public comment period, mainly due to workload issues faced by ICANN staff and community volunteers.

The GNSO was expected to open its PDP preparations more or less now, but the GNSO Council is expected to vote this Thursday to delay the start of the project for another six months, due to delays implementing other rights protection mechanism reviews.

Given how long PDPs typically take, by my estimate you’re looking at at least three years before any changes to UDRP are approved.

Chinese registrars back in trouble after porn UDRP suspension

A collection of six registrars in the XZ.com stable are back on the ICANN naughty step, facing more Compliance action just a couple of years after a sister company was suspended over UDRP failures.

ICANN has published breach notices against DotMedia and five other registrars under common ownership, claiming that they are failing to send their registration data to the correct escrow provider.

Since last year, registrars have been obliged to escrow their data to DENIC, which replaced NCC Group as ICANN’s sole provider. Escrow is important as it helps make sure registrants keep their domains if a registrar goes out of business.

The six DotMedia registrars have failed to make this transition despite months of hand-holding from ICANN, according to the breach notices. Compliance has been on their case since at least April.

The registrars are among 20 that appear to be under common management, almost all based in Hong Kong and using xz.com as their primary storefront, and it’s not clear why only six accreditations have been found in breach.

The whole group appears to be on the skids in terms of registration volume. The main accreditation, US-registered MAFF Inc, once had around 600,000 gTLD names under management, but that’s down to around 60,000 in the latest registry reports. The others have a few thousand each, having suffered similar percentage declines.

Another member of the group, ThreadAgent.com, was actually suspended for months in 2022 after it failed to transfer two domains lost in cybersquatting complaints under the UDRP to BMW and Lockheed Martin.

The six registrars have until September 25 to come back in compliance or face further action.

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.

ChatGPT maker files UDRP on .com match

The registrant of chatgpt.com must have thought he’d hit the motherlode when he picked up the domain last December, almost a month after it launched and days after the wildly popular AI chatbot had already received rave reviews from the global press.

What he got instead was a UDRP complaint with WIPO, which ChatGPT maker OpenAI filed last week.

While you’d expect it to be an open-and-shut case, it appears OpenAI was almost as slow with its trademark applications as it was with its domain registration strategy.

The company uses a subdomain of openai.com for the chat service. It launched November 30 last year and received high praise in outlets including the New York Times over the following week.

The .com registrant picked up the previously unregistered name on December 13, but it was not until December 27 that OpenAI applied for a US trademark on the brand.

It wasn’t even the first to apply for a trademark. A company called BrandCentral applied for the mark on December 15, in various “merch” categories unrelated to AI or software, but has since withdrawn the application.

Fortunately for OpenAI, WIPO allows complainants to assert common law trademark rights if the brand is sufficiently famous, and ChatGPT had well over a million users by the time the domain in question was registered.

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.