This article was first published in the World Trademark Review magazine on 31 March 2022.
Recent attempts to show links between two prolific cybersquatters have received mixed responses from UDRP panels. Under the UDRP, brand owners can file a single complaint against multiple domain names and domain owners. However, the panel must be satisfied that the domain names are under common control and that the consolidation would be equitable.
When tackling serial cybersquatters, putting multiple domain names into a single complaint significantly reduces costs, however, the lack of registrant details on Whois makes this difficult as a registrant’s details are often revealed only after the complaint has been filed. Therefore, it is crucial for brand owners to understand the evidentiary burden for consolidation under the UDRP.
Two of the most common respondents under the UDRP are Carolina Rodrigues of Fundacion Comercio Electronicoand Zhichao Yang. According to online search tools, these two parties combined account for over 800 cybersquatting disputes and both tend to register multiple infringing domain names at a time. This is highlighted by cases such as WIPO Case D2019-1650, which featured 18 domain names owned by Rodrigues, and WIPO Case D2020-2818, which featured 137 domain names owned by Yang.
Whether these names are even true identities is unclear – complainants in the past have linked these parties to other aliases. In WIPO Case D2019-0015, which involved 49 domain names, the complainant successfully linked Yang and an individual named ‘Fly Fish’.
There have now been five cases that have tried to link Rodrigues and Yang together as having common control over multiple domain names. In the first, Forum Claim 1814610, the panel was satisfied that three named respondents (two of which being Rodrigues and Yang) exercised common control over 31 domain names spanning three different registrars. The panel reasoned:
1) the Domain Names are all similar variants of the phrase “Cabela’s Club Visa”, 2) the Domain Names were registered within a three […] month period […], and 3) twenty-three of the Domain Names resolve to the exact same webpage, while eight others resolve to virtually identical or similar webpages.
The web pages in this case were pay-per-click advertising pages commonly used for parked domain names. Extrapolating from the panel’s reasoning of the case, we see three key factors that must be fulfilled for a successful consolidation request:
Brand owners should take care, as some panels may not find these three factors to be sufficient. In WIPO Case D2021-4262, two domain names featured a typosquatting variant of the term ‘Lennar Mortgage’, both resolved to pay-per-click advertising pages and were registered within two weeks of each other.
Nevertheless, the panel declined the complainant’s consolidation request and found no common naming pattern between the two. This was because the misspelling of the first domain name was contained within the complainant’s LENNAR mark, while the misspelling of the second was contained within the keyword ‘mortgage’. Despite the record showing both domains resolved to pay-per-click webpages, these were found to be dissimilar. Further, the contact details of Rodrigues and Yang differ substantially; they are based in Panama and China respectively and use different registrars to register their domain names.
Perhaps the most interesting case in favour of consolidating the two parties is Forum Claim 1910083, in which two domain names owned by Rodrigues and Yang had been registered within four days of each other. The complainant stated that the domain names also used the same NameDynamics.net name servers.
An investigation of this case shows that ‘securiansevice.com’, the domain name owned by Yang, was initially registered with GoDaddy on 10 August 2020 under privacy and had NameDynamics.net name servers. Both of these service providers are commonly used by Rodrigues.
Curiously, the domain name was re-registered by Yang four days later using a different registrar and name servers. Therefore, at the time of filing the complaint, the domain names did not share the same name servers as stated in the decision. However, the rapid deletion by Rodrigues and re-registration by Yang suggests that the two parties may have more in common than meets the eye.
There has been an inconsistent approach towards linking Rodrigues and Yang. There appears to be a disparity between the venues of WIPO and Forum: the three consolidation attempts at Forum have been successful, while the two at WIPO have not. A closer look shows that consolidation under the UDRP is highly fact specific: content, registration dates and the naming patterns of the domain names are crucial factors.
Previous findings in favour of consolidating the parties will help brand owners. Accordingly, we anticipate more consolidated filings against Rodrigues and Yang. If a precedent is set, brand owners may be able to tackle some of the largest cybersquatting operations in a highly cost-effective manner under the UDRP.