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Walmart’s Vudu is a reverse domain name hijacker

by — Policy & Law 5 Comments

Vudo.com was registered well before the streaming video company existed.

A screenshot of Vudu.com showing Good Boys video

Vudu filed a cybersquatting complaint against Vudo.com. It was found guilty of reverse domain name hijacking.

Vudu, a streaming video subsidiary of retail giant Walmart, has been found to have attempted reverse domain name hijacking over the domain name Vudo.com.

The company filed a cybersquatting complaint against the domain name owner, even thought the owner registered the domain name well before Vudu was founded. A key requirement of the Uniform Domain Name Dispute Resolution Policy (UDRP) is that the Complainant’s trademark rights must predate the domain owner’s registration. After all, if he registered the domain before the Complainant had trademark rights, then it’s hard to prove that he registered the domain to target a non-existent brand.

In finding reverse domain name hijacking, a World Intellectual Property Organization panel wrote:

The Complainant entirely sidesteps the glaring deficiency in its case on the second and third elements of the Complaint. The Domain Name is a homophone of a dictionary word, and it was registered long before the Complainant or its trademark existed. The Complaint repeatedly emphasizes the registration of the Complainant’s domain name in 1995 to suggest that the Complainant has senior rights, without disclosing that this registration was by an unrelated party. The Complainant evidently acquired that domain name in 2007 and began using VUDU as a mark in September 2007, as it claimed in its applications to the United States Patent and Trademark Office. The Complaint insinuates that the Respondent’s change of registrar and IP addresses over time is somehow significant, but the Complainant does not explain how it is significant and offers no evidence or argument whatsoever that the Respondent is not, as claimed, the original and continuous registrant of the Domain Name. Even without glancing at the WIPO Overview 3.0, counsel for the Complainant should have recognized from the plain language of the Policy that at the time of registration the Respondent could not have been attacking a trademark that did not exist and was not in contemplation for years to come.

Vudu was represented by Drinker, Biddle & Reath, LLP. The domain owner was self-represented.

How this RDNH could have been prevented

by — Policy & Law 5 Comments

A simple question could have prevented this cybersquatting complaint.

Reverse domain name hijacking graphic

A National Arbitration Forum Panelist has found that a complaint brought by Gary Chupik, a Washington man, over the domain name EliteMindset.com was attempted reverse domain name hijacking.

The facts follow a common pattern: Complainant wants a domain and tries to buy it. Failing to get it for the price he wants, he registers a trademark for the name and then files a UDRP.

It’s called “Plan B” reverse domain name hijacking.

In this case, the Complainant states that he sought legal advice but he appears to have filed the case on his own. It was a weakly argued case that was essentially dead on arrival.

This case is an example of one that could be avoided if ICANN or UDRP providers implemented a simple change to the filing process. They could ask:

Do you claim trademark rights to this domain name that pre-date the domain owner’s registration of the domain name?

It could then explain the requirement to prove a UDRP.

This would have saved Chupik from wasting his time and money filing the case. It would have saved the Respondent from having to respond to the case. Everyone would have been better off. Except, I suppose, the forum.

ICA asks ICANN to block .Org private equity deal in damning letter

by — Policy & Law 29 Comments

Group calls out ICANN’s “terrible blunder”.

Logo for .org domain, featuring a blue circle with white letters spelling ORG

Internet Commerce Association is asking domain overseer ICANN to block the sale of the .Org registry to Ethos Capital.

It sent a damning letter (pdf) to ICANN today that states what many observers are thinking. In part:

Surely you can now appreciate the terrible blunder that you have made. Crucial policy decisions that have billion-dollar ramifications and which affect the stability of the Internet must be the subject of robust Board involvement and not left to ICANN staff.

If you were led to believe that removing price caps on .Org domain names was a sound approach because the registry would remain in the hands of a nonprofit foundation, you have clearly been misled. If you were led to believe that despite being the effective owner of the .org registry, you were somehow forced to let your service providers tell you how much they can charge, instead of the other way around, you have been led astray. If you have been told that .Org does not have market power within the nonprofit sector, you have been led astray. If you have been told that competition from other gTLDs will constrain .org prices, you have been led astray.

Section 7.5 of the registry agreement between Public Interest Registry and ICANN states:

Except as set forth in this Section 7.5, neither party may assign any of its rights and obligations under this Agreement without the prior written approval of the other party, which approval will not be unreasonably withheld.

The question now is: would it be reasonable for ICANN to withold approval of the transfer of the .org registry agreement?

ICANN has a history of wimping out in fights. But given the blowback it is getting and will get for many years from this deal, it might be one of those times it steps up.

The letter concludes:

If your miscalculation of awarding a perpetual, no-bid agreement – lacking any price caps whatsoever – was premised on the registry remaining in the hands of an organization serving the public interest, the pending sale to a private equity firm should cause you to reconsider your approach. Fortunately the purported sale of the .Org registry affords you an opportunity to withhold approval, terminate the Registry Agreement in respect of any consummated transaction, and put the contract out for competitive bid.

Where is the ICANN Board when it comes to safeguarding the interests of nonprofit registrants?

Qatar tourism council wins VisitQatar.com in cybersquatting dispute

by — Policy & Law 23 Comments

It was a very complicated case.

Picture of Doha, Qatar skyline

Qatar National Tourism Council has won a UDRP it filed against the domain name VisitQatar.com.

It’s a mind-numbing case. The discussion of the first prong of UDRP, whether or not the domain is identical or confusingly similar to a mark in which the Complainant has rights, clocks in at a whopping 4,842 words!

The owner of the domain is in Azerbaijan. He created a simple travel booking website on VisitQatar.com. He also obtained a U.S. trademark for “Visit Qatar”.

Despite this, the three-person panel determined that the Respondent registered the domain to target the Complainant and all of his activities were just a ruse. It questioned his credibility and wrote:

Taking all of this as a whole, the Panel reaches the conclusion the Respondent registered the Disputed Domain Name with a view to selling it at a substantial profit to the body responsible for promoting tourism in Qatar and which was already active under the “visitqatar” term on social media. He then proceeded cautiously and set about putting in place measures to legitimize the Disputed Domain Name and defend any UDRP proceeding. These included linking the Disputed Domain Name to a working (but rudimentary) travel related website and seeking a US trademark registration…

The three-person panel found in favor of the tourism agency.

If the UDRP was designed to handle clear cases of cybersquatting, this case was anything but.

It’s a rare loss for domain attorney John Berryhill, who represented the Respondent.

The interesting connection between the .Org deal and ICANN

by — Policy & Law 38 Comments

Former ICANN CEO Fadi Chehadé appears to have a connection to the latest big deal in the domain name industry.

Graphic showing connections, with three lines connecting to four dots

Former CEO of ICANN appears to have a connection to the firm that just bought the .Org registry.

This morning, Internet Society announced it is selling Public Interest Registry, the non-profit that runs the .org domain name, to Ethos Capital.

Ethos Capital isn’t exactly a household name. In fact, it appears to have been set up in recent months. It just acquired its domain name EthosCapital.com at the end of last month.

The founder of Ethos Capital is Erik Brooks. He left ABRY Partners this year after spending two decades at the investment firm.

Does the name Abry ring a bell? That’s because it’s the company that bought new top level domain name company Donuts last year.

That deal involved Abry Senior Advisor Fadi Chehadé. Chehadé is the former CEO of ICANN, the group that oversees the domain name industry.

Now we have a twenty year veteran of Abry, who worked on the Donuts deal and was (or still is) a member of Donuts’ board, leaving this year to form a new entity that buys a registry, much like how Abry bought Donuts.

And the CEO of Public Interest Registry is Jon Nevett, one of the founders of Donuts.

Things get even connected.

On May 7 this year, Fadi Chehadé appears to have registered EthosCapital.org. He is listed as the owner in Whois. That was just before a Delaware company by the name Ethos Capital, LLC was formed.

I wonder why Abry didn’t invest in PIR? Was Ethos set up as a special entity to invest in PIR, and why? What is Chehadé’s connection?

The other person listed on Ethos Capital’s website is Nora Abusitta- Ouri. She worked for Chehadi at ICANN as SVP, Development and Public Responsibility Programs.

I’ve reached out to Ethos Capital, Chehadé, and Abry Partners about this and will update this story if I hear back.