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Bybit.com tries to reverse domain name hijack bybt.com

by — Policy & Law 0 Comments

Cryptocurrency exchange filed cybersquatting case in bad faith.

Image with an orange background and black slanted graphics and the words "reverse domain name hijacking"

A World Intellectual Property Organization panelist has found that Bybit Fintech Limited tried to reverse domain name hijack bybt.com.

Bybit uses Bybit.com for its cryptocurrency exchange. Bybt.com is a site and app for cryptocurrency futures and information. (It has rebranded to coinglass.com.)

Among Bybit’s arguments was that “The Respondent intentionally included promotional banners for Bybit and redirects Internet users to the Complainant’s official website.”

Well, it turns out that a Bybit employee reached out to Bybt and asked it to show the banner. Bybit also inquired about acquiring the company. It disclosed neither of these to the panelist.

Panelist Matthew Kennedy found this was reverse domain name hijacking, in part because of false statements regarding the banner:

In fact, the record shows that the Complainant approached the Respondent and requested that he display banner advertising on his website. The Complainant not only authorized and consented for the Respondent to redirect to the Complainant’s official website, but it provided its logo and a hyperlink to enable the Respondent to do so.

Further, the Panel notes that the Complainant filed the Complaint one month after proposing to invest in the Respondent’s business and days before the Respondent gave its final answer declining the offer. The record indicates that the Complainant resorted to the Policy as “Plan B” in case it failed to gain control over the disputed domain name in the marketplace or to increase its bargaining leverage. Either is a highly improper purpose for a complaint under the Policy and constitutes a further basis to find Reverse Domain Name Hijacking.

There is one part of the UDRP that is a bit disconcerting. The Complainant provided evidence showing the domain name was listed for sale on a registrar’s website for HKD 19,470.40 (about $2,500) as recently as September 24, 2021. The Respondent says it had nothing to do with this sales offer:

The Respondent has never sold the disputed domain name; it was offered for sale on another website without any involvement of the Respondent. In any case, the asking price of HKD 19,470 was far below the value of a domain name with millions of users.

Kennedy wrote:

The Panel rejects as improbable the Respondent’s submission that he had no involvement in authorizing that offering for sale.

I wouldn’t call it improbable. I’d call it very possible. Domain marketplaces are littered with stale listings. In this case, a search for bybt.com at GoDaddy pulls up a listing with a “minimum offer”, not an asking price, of $2,500. This could very well be an old listing from before bybt.com acquired the domain in the first place. It’s possible that the Respondent listed it for sale, but it’s entirely possible it didn’t. So I think Kennedy is wrong to call it improbable.

Norton Rose Fulbright represented the Complainant. No representative is listed for the Respondent.

Simple Plan band tries to reverse domain name hijack

by — Policy & Law 0 Comments

Panel cites 8 false statements it says Simple Plan Inc made in UDRP.

Cover of Simple Plan album shows five band members on a black background

Simple Plan Inc’s plan to get SimplePlan.com back wasn’t so simple.

The Canadian music group Simple Plan’s management company has been found to have engaged in reverse domain name hijacking in its attempt to get the domain SimplePlan.com back after it expired.

At the outset, you can sympathize with Simple Plan’s situation. It registered the domain name through a company that was apparently a Tucows reseller. That reseller’s website went dark when it was time to renew the domain. It expired and was auctioned through GoDaddy Auctions.

But Simple Plan decided to blame the person who won the domain at the auction, claiming his plan was to “fraudulently hijack” the domain from the band and then ask for a lot of money to transfer it back.

The three-person National Arbitration Forum panel cited at least 8 false statements Simple Plan Inc. made in the case.

Michel Rog says he acquired the domain name for his travel business. He’s not a domain investor. Shortly after acquiring the domain, he forwarded it to his travel site tryp.com.

Just days after acquiring the domain, Simple Plan hired GoDaddy to inquire about buying the domain. The band offered $5,000. Rog responded, “The name is not actually for sale unless someone is willing to offer at least $35,000. So if they can make an offer for that amount then I would be willing to part with the name.”

Yet Simple Plan argued that GoDaddy was working on behalf of Rog, and that he was demanding $35,000 plus GoDaddy’s 20% commission.

One of the more amusing lines in the UDRP is in Simple Plan’s second additional submission (it apparently submitted three):

Clearly, in bad faith, Respondent is thumbing his nose at the Forum and Complainant in a wholly undisciplined and venal manner consistent with his attempt to profit from his cybersquatting.

That’s a bold statement from someone who filed a reverse domain name hijacking case!

The panel cited these false statements in the filing, which contributed to its finding of reverse domain name hijacking:

“Respondent who, acting anonymously through GoDaddy, is now demanding $35,000.00, plus 20% commission to GoDaddy, to transfer it back to Complainant.”

“The domain name is also being offered for sale back to Complainant on GoDaddy for $35,000 plus 20 percent commission!”

“Acting anonymously through GoDaddy, the Respondent is demanding 35,000.00 (USD) to sell the domain name Complainant owned for 20 years back to Complainant.”

“Respondent’s bad faith is also demonstrated by its affirmative acts of taking away and letting lapse Complainant’s domain name and then demanding 35,000 (USD) plus 20% interest to get it back.”

“Under the facts and circumstances of this case, Respondent’s intent is, and outrageous actions are, to unfairly and fraudulently hijack Complainant’s simpleplan.com domain name and sell it back to Complainant at a highly inflated cost.”

“Respondent communicated its demands through its agent, GoDaddy, the broker and registrar. Since GoDaddy was Respondent’s agent, the 20% commission demanded of Complainant was in fact made on behalf of Respondent to add to the already excessive price.”

“Respondent is holding Complainant’s “simpleplan” domain name that Complainant has used for its business for decades, hijacked it himself and demands exorbitant monies to return it to Complainant, who held it for 20 years.”

“Respondent argues that because he went through his registrar and agent Go Daddy to offer for sale the domain name simpleplan.com back to Complainant by Respondent for $35,000, plus a 20 percent commission for GoDaddy — $52,500 [sic], an amount far in excess of the out-of-pocket costs for a domain name, he lacks bad faith. This argument is fallacious. Respondent’s own evidence shows communications between him and GoDaddy wherein Respondent expressly authorized GoDaddy to sell simpleplan.com back to Complainant for this exorbitant amount. This shows bad faith use of Complainant’s SIMPLE PLAN mark.”

Scarinci Hollenbeck represented Simple Plan Inc. Howard Neu represented Rog.

Dates don’t add up in RegalGames.com UDRP

by — Policy & Law 0 Comments

The Complainant appears to have provided the wrong acquisition date, but the Respondent’s dates don’t add up, either.

The word UDRP in Green on a grey background with green diagonal lines

Regal Games, LLC was found to have attempted reverse domain name hijacking in a recent cybersquatting decision at National Arbitration Forum. Two things make this case interesting beyond the reverse domain name hijacking (RDNH) finding. The dates on both sides don’t add up.

First, the Complainant argued that the Respondent, Wolfgang Sauer, acquired the domain on May 20, 2021, but didn’t provide any evidence to back this up. This date is the “Updated Date” in Whois, and update dates can be for any change to a Whois record, such as a nameserver change.

I’m shocked that a Complainant would not understand this, especially when represented by counsel specializing in Intellectual Property. Incubate IP represented Regal Games.

An Updated Date can coincide with an ownership transfer, but panelist Luca Barbero noted that Regal Games didn’t provide any proof of an ownership transfer. Barbero cited the Complainant’s incorrect date as part of his rationale for finding RDNH.

But there’s something else funny about the case, this one on the Respondent’s side. Barbero’s write-up states:

Respondent further submits that the disputed domain name has been used for its own business [emphasis added] in the sale of game consoles since September 2002 (as shown by an historical screenshot taken from the Internet Archive “www.archive.org” in Annex 2 to the Response).

Here’s the thing. When I looked at historical Whois records, it appears that a previous owner used the domain back then. Until mid-2014, a Florida company called Eagle Entertainment (and then Regal Games) owned the domain. DomainTools records show that the domain went into Pending Renewal or Deletion at Network Solutions in August 2014, with Sauer becoming the registrant on August 20, 2014. The domain has been parked since then.

I reached out to Sauer via email last Friday to ask for clarification but have not heard back. It’s possible that he stated the domain was used for gaming purposes back then, not that he used it for his own business. But that’s not what Barbero’s decision states. There could also be a connection between the companies, although they are located in different geographic locations, and the domain went through NameJet’s expiration cycle.

This might not have changed the outcome of the case. Regal Games did not provide solid evidence of common law rights pre-dating its 2019 trademark application.

Still, it’s a big open question. And it’s strange that Regal Games didn’t make a supplemental filing a) explaining its misunderstanding of the acquisition date b) challenging the acquisition date by the Respondent. Of course, if you don’t understand that the Updated Date is not the acquisition date, then you probably don’t understand how to use historical Whois services.

Former IPC member tries reverse domain name hijacking

by — Policy & Law 1 Comment

A former member of ICANN’s Intellectual Property Constituency represented a company in a UDRP. It didn’t go so well.

Picture of a gold skull and crossbones with the words "reverse domain name hijacking"

A World Intellectual Property (WIPO) panel has found (pdf) Pacific House, LLC to have engaged in reverse domain name hijacking over the domain libertas.org in a doozy of a case.

While little is known about the Complainant, it appears to be creating an organization to espouse libertarian values. Libertas is Latin for liberty.

Libertas Institute, a non-profit libertarian organization in Utah, acquired the domain name earlier this year. The Respondent was founded in 2011 and has associated trademarks.

By all accounts, the Respondent’s organization pre-dated the Complainant’s. In fact, when the Complainant initially applied for trademarks, the U.S. Patent and Trademark Office denied them, citing the Respondent’s mark.

The Respondent acquired the domain name earlier this year. It clearly has rights or legitimate interests in the domain name and uses it for its website.

Here’s where things extend beyond a run-of-the-mill reverse domain name hijacking decision.

The Complainant was represented by Don Moody of The IP & Technology Legal Group, P.C. Moody is a former member of the ICANN Intellectual Property Constituency (IPC).

The law firm acquired libertas.org in 2019 on behalf of the Complainant. But it let it expire later that year. The domain was sold via GoDaddy’s expired domain auctions, and another company picked it up. Libertas Group is at least the second owner of the domain since it expired.

WIPO’s three-person panel (which includes a current IPC member) provided a detailed explanation of the fallacies in the complaint:

Here, the Complainant misstated or obscured relevant facts in its possession.  The Complainant said that it owned the Domain Name from June 2019 until it “inadvertently lapsed when the registration expired” due to “technical issues” “coupled with staffing limitations stemming from the COVID-19 global pandemic.”  The Complainant’s counsel, in demand correspondence prior to filing the Complaint in this proceeding, stretched the facts even further, claiming that the Complainant held the Domain Name for “over a year” and that the registration “lapsed in mid-late 2020”, partly because of the pandemic.  In fact, the Complainant itself did not register the Domain Name and never used it.  The Complainant’s law firm registered the Domain Name in June 2019, and the registration expired six months later in December 2019, before the COVID epidemic imposed “staffing limitations”.  The Respondent did not acquire the Domain Name until more than a year later, after the Domain Name had been held by other parties.  In filing the UDRP Complaint, the Complainant was well aware of these facts and that this was quite a different case from “opportunistic re-registration” of a lapsed domain name that had been used by a trademark holder for its website, as in the decisions cited in the Complaint.

The Complainant was also well aware of the Respondent and its own senior trademark rights in a corresponding name.  The USPTO examining attorney cited the Respondent’s LIBERTAS INSTITUTE trademark in refusing the Complainant’s applications for trademark registration, until the Complainant precisely excluded the Respondent’s activities from the services in its own trademark application to avoid confusion.  It is remarkable that the Complainant would simply sidestep this obvious ground for the Respondent’s claim of rights or legitimate interests.  The Complainant sought to discredit the Respondent’s defense of being “commonly known” by a name corresponding to the Domain Name by giving the Respondent’s name, incorrectly, as “Libertas Institute of Utah”.  Otherwise, the Complaint largely overlooks the second UDRP element and the Respondent’s own claims to rights or legitimate interests in the Domain Name.  The Complainant urges the Panel to give precedence instead to restoring a lost domain name to its “former owner” at all costs, which is not the purpose of the Policy.

Both parties have legitimate interests in the Domain Name.  One of the risks of a failure to renew a domain name registration, through whatever series of errors, is that another party with a legitimate interest will subsequently register the domain name and use it in good faith.  The record here does not indicate that the Respondent sought to exploit the Complainant’s junior mark, and the Respondent is certainly not responsible for correcting the Complainant’s errors in maintaining the registration of the Domain Name.

The Complainant, in brief, was in possession of sufficient facts to recognize that it was unlikely to prevail on the second and third elements of the Complaint, given the plain language of the Policy and existing precedent.  The Complainant strained or misstated facts, cited inapposite decisions, and failed to confront the obvious claims of a senior trademark rights holder.

In its supplemental filing, the Complainant argues that the Panel nevertheless cannot find RDNH so long as the Complainant prevails on a single element of the Complaint, such as the first element, its standing to bring the complaint because it holds European trademark registrations.  Rule 15(e) does not compel such a conclusion.  A complainant must establish all three elements of the complaint, and if the complainant does not furnish credible support for one or two of those elements, the complaint is doomed and should not have been filed, imposing costs and other burdens on the respondent.  This suffices for an RDNH finding, as reflected in other WIPO decisions that emphasize the defects of a complaint with respect to one or two but not all three elements of the complaint.  See WIPO Overview 3.0, section 4.16;  see also, e.g., Proto Software, Inc. v. Vertical Axis, Inc / PROTO.COM, WIPO Case No. D2006-0905.

Taken together, the Complainant’s factual inaccuracies and strained reading of the Policy and Policy decisions reflect the Complainant’s bad faith in resorting to the UDRP to recover a Domain Name lost through its own errors.  The Panel finds that the Complaint represents an instance of attempted Reverse Domain Name Hijacking.

John Berryhill represented the domain name owner.

MetaMask tries reverse domain name hijacking

by — Policy & Law 2 Comments

Maker of popular crytocurrency wallet tries to reverse domain hijack MetaMask.com.

Logo for MetaMask with a picture of a fox

The developer of MetaMask has been found to have tried reverse domain name hijacking the domain name MetaMask.com.

MetaMask is a popular cryptocurrency wallet used by over 20 million people.

ConsenSys, the creator of MetaMask, filed a cybersquatting claim under UDRP against the owner of the domain. The owner of the domain registered it in 2005, well before ConsenSys’ MetaMask existed. Therefore, ConsenSys could not prove that the domain was registered and used in bad faith, which is a requirement to win a domain in UDRP.

The Complainant also claimed that the domain was used in a phishing campaign. The domain owner says that’s not the case, and his attorney asked the company for a call to discuss it.

Instead of setting up a phone call, ConsenSys filed the UDRP. It didn’t mention the pre-case correspondence, either. That came back to bite it. Panelist Adam Taylor wrote:

The Panel considers that the following circumstances, taken together, warrant a finding of RDNH.

First, the Complainant has failed by a large margin. In the Panel’s opinion, the Complainant knew or at least should have known that it could not prove one of the essential UDRP elements. The Complainant quoted extensively from UDRP case law and the Panel thinks it unlikely that the Complainant was unaware of the current overwhelming view of UDRP panellists as to the need to prove registration as well as use in bad faith. Indeed, the discussion of the third element in the Complaint is simply headed: “The domain name is being used in bad faith”, i.e., omitting the requirement for registration in bad faith.

Second, the Complaint lacks candour in that it makes no mention of either (a) the Complainant’s email to Mr Schleifer of October 5, 2021, stating that someone had apparently adopted Mr Schleifer’s identity to try and sell the disputed domain name to the Complainant and had thereafter used the disputed domain name for phishing/fraud or, more importantly, (b) the October 6, 2021, response from Mr Schleifer’s attorney confirming that Mr Schleifer did own the disputed domain name (and denying his involvement in phishing/fraud). Even if, despite this email, the Complainant still somehow harboured doubts about the identity of the person who approached it to sell the disputed domain name, and notwithstanding that ultimately nothing turned on this issue given the lack of registration in bad faith, the Complainant ought not to have relied on the alleged use of a fake identity without at least mentioning the denial by the attorney for the very person whose identity was allegedly faked.

ConsenSys was internally represented. Lee & Hayes represented the domain owner.

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