Archive for the ‘Frank Schilling’ Category
Company files dispute for UDRP in bad faith.
Frank Schilling, with the help of attorney John Berryhill, has convinced a UDRP panel that AINS, INC is guilty of reverse domain name hijacking in a dispute over eCase.com.
AINS, Inc has a trademark for “ecase” for its software for workflow and case management. It claimed a first use in commerce date of 2009 on its trademark application.
Schilling acquired the domain name eCase.com in 2002, so the case had no chance of succeeding.
So AINS’ attorney Janice W. Housey of Symbus Law Group, LLC claimed that each time the domain was renewed the domain was a “renewal in bad faith”. It’s ridiculous, but she made another mistake that made it even more troublesome: she neglected to show that the domain was renewed after AINS got its trademark rights.
Making matters worse, it appears that an employee of AINS sent a misleading communication to Schilling in an effort to buy the domain. According to the case, AINS’ Director of Business Development and Vice President of Sales sent an inquiry that read:
“Due to today’s economy, I am starting a home business. I am interested in your domain name as it is a good fit for services I want to provide, and am able to propose $1,500 for the rights to the name. I can be reached via my home email . . .”
Berryhill noted that this is “a willfully false communication by interstate or international electronic means originating in the United States, for the purpose of obtaining a thing of value on false pretenses, i.e. “wire fraud” under the relevant federal criminal statute:18 USC § 1343.”.
It didn’t help that the attorney also sent a couple inquiries to Schilling’s company without identifying herself.
The three person panel found against AINS and that AINS was guilty of filing its case under the policy in bad faith, i.e. reverse domain name hijacking.
© DomainNameWire.com 2011.
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Related posts:
- Schilling and Berryhill Win Another UDRP
- Frank Schilling Wins Another UDRP
- Frank Schilling Loses His First UDRP
Schilling’s company named in lawsuit over four letter domain name.
Florida VirtualSchool, which runs an online education service at FLVS.net, has sued Frank Schilling’s Name Administration, Inc. over his FLVS.com domain name.
The suit (pdf) also names K12, Inc. Florida VirtualSchool says K12, Inc. is a competitor and was receiving clicks from the FLVS.com domain name, which is parked.
Florida VirtualSchool has registered trademarks for Florida VirtualSchool and FLVS for “education services”. Both trademarks were only registered in 2010, but with claimed first use dates of 2002.
It appears any links on FLVS.com that may have led to K12, Inc. no longer exist. The site now links to baking and cooking sites under the idea that “FLVS” is short for flavors.
Florida VirtualSchool is suing for service mark infringement, unfair competition, and common law trademark infringement. The case was filed in U.S. District Court, Middle District of Florida, Orlando Division.
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- Frank Schilling Loses His First UDRP
- Pac12.com Owner Sues Pac-10 Conference Over Domain Name
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Media behemoth buys Dealbook.com domain name after losing arbitration for the domain.
In November I wrote about how Frank Schilling defeated New York Times Company in a landmark UDRP ruling for the domain name Dealbook.com.
After losing the decision it appears New York Times ponied up and bought the domain name. The domain name has not yet been forwarded to the publication’s Dealbook site.
Schilling’s Name Administration owned the domain name through early January. It was transferred to New York Times Digital on or before January 20 according to whois records at DomainTools.
This is a good domain name for New York Times to own. But I bet they ended up paying more for the domain name that they otherwise would have because they started by taking the low road.
(hat tip: Ramiro Canales)
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Frank Schilling beats media behemoth; panel decision could be important.
Frank Schilling’s Name Administration has won a case against the New York Times Company over the domain name DealBook.com. But it’s more than a victory; the National Arbitration Forum panel also addressed an issue that most other panels have dismissed: doctrine of laches.
As described by the panel, “Laches is an equitable doctrine that may provide a defense when an adverse party has unreasonably delayed in asserting his rights to the detriment of the accused.”
Imagine if I had a trademark for “The Domains” dating to prior to Michael Berkens starting his popular “The Domains” blog. When he started blogging I was silent on the issue, letting him build up his blog until 2010, when I then filed a claim against him.
It might be fair back when he first started the blog for me to raise the issue, but now that he has invested much time into the blog without my opposition it wouldn’t be right. And it might show that I didn’t believe I really had these rights.
Most UDRP panels ignore the doctrine of laches, but not this one:
The Panel believes that the doctrine of laches should be expressly recognized as a valid defense in any domain dispute where the facts so warrant. Prior decisions rejecting the applicability of the doctrine due to the failure of its express recognition in the UDRP Policies appear to be an unsound basis for ignoring the potential defense. While the Panel recognizes that the UDRP is administrative in nature, the practical effect of the proceeding is to provide equitable relief to the successful party. Thus, if equitable relief is the outer extent of the remedy available equitable defenses should also be considered in evaluating the whether any relief should be forthcoming.
In this particular case the panel notes:
In the instant proceeding the Respondent emphasizes on numerous occasions that it has held the domain name and used it in connection with its website offerings for in excess of six years and rightfully posits the question of what should be made of the fact that the Complainant has done nothing during that time despite claiming that its development of the identical trademark and subsequent use predates that of the Respondent. This is not a case of passive holding by the Respondent or an instance of an unsophisticated Complainant. Complainant notes that it has been in business for more than a century and half and has developed worldwide fame in both real space and cyberspace through use of numerous trademarks. Where such a Complainant fails to police its claimed mark and does nothing for a substantial time while a Respondent develops an identical domain name for its own legitimate purposes, laches should bar that Complainant from turning a Respondent’s detrimental reliance to its own unjust benefit.
The recognition of the time it took for a company to file this complaint, if picked up by other panels, could be a major win for respondents in domain name disputes.
John Berryhill defended Name Administration in the case.
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Related posts:
- Frank Schilling Loses His First UDRP
- Two New Cases Show What’s Wrong with UDRP
- Schilling and Berryhill Win Another UDRP
Frank Schilling settles disagreement over ChilliBeans.com.
In 2008 Name Administration (Frank Schilling’s company) lost a UDRP for the generic domain name ChilliBeans.com. It was the company’s first loss in a UDRP case, and it then sued complainant Balglow Finance in order to retain the domain name.
The two parties have settled the case. Name Administration provided the following statement to Domain Name Wire:
Name Administration Inc. (“NAI”) and Balglow Finance SA (“Balglow Finance”) are pleased to announce that they have come to a mutually beneficial agreement in regard to the domain name ChilliBeans.com and the settlement of the law-suit filed by NAI in the Cayman Islands concerning the domain name. Both parties have agreed that NAI’s use of the generic Chillibeans.com domain name violated no enforceable rights of Balglow Finance. The settlement of this dispute will see NAI transfer title of this generic name to Balglow Finance to assist it in its online efforts relating to Balglow Finance’s expansion of the “Chilli Beans” brand of eyewear.
“While it’s unfortunate that this dispute necessitated a trip to the Cayman Court, we are most pleased to have resolved the matter in such a mutually beneficial way”, said Frank Schilling, Managing Director for NAI. He continued, “NAI’s only interest in the domain name was as a generic term. Now that it’s been settled that NAI’s registration and use of the domain name violated no rights of Balglow Finance we are pleased to facilitate the transfer, as the domain name is beneficial in advancing the business of Balglow Fianance, and while very valuable, has less long term value to our company than Baglow Finance.”
Schilling added some commentary on IP rights and his domain portfolio:
We’re never looking to pick fights over IP rights and have really tried hard to do the right things in the domain name business, for a very very long time, but we’ve won 17 UDRPs. That should say a lot. Large companies often want what you have and don’t want to pay for it. They try to vilify you for making money with generic domain names, and the UDRP has created an unholy intimation that holding a generic name for profit is somehow bad. Well it isn’t! Everybody owns something – and when people challenge our generic IP rights we will spend whatever it takes to make our point that anyone is free to register a generic name on a first-come first served basis.
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- Name Administration Challenges “Cheat Code” Trademark
- Frank Schilling Wins Another UDRP
IPO.com headlines strong week for domain marketplace.
Sedo had a great sales week including the sale of IPO.com that Michael Berkens wrote about on September 22. But that wasn’t the only notable sale the company brokered.
In second place was AirTickets.com at $80,000 followed by ResumeWriting.com at $66,000.
ResumeWriting.com appears to have been sold by Frank Schilling’s Name Administration. But the buyer is peculiar. The current whois shows that EditMeNow.com, Inc is the owner. EditMeNow.com is a parked page, but the whois record for that page is Marchex. The historical whois for ResumeWriters.com shows the same EditMeNow.com Inc. owner. It appears that someone set up the company EditMeNow.com Inc and registered the domain name, then let it expire and it ended up in the the UltSearch portfolio that Marchex acquired.
Other .com sales include:
geschenk.com 40000 USD
wework.com 20000 USD
game24.com 19000 EUR
casarte.com 12500 EUR
cocomama.com 12000 GBP
criticschoice.com 12000 USD
019.com 10000 EUR
sohome.com 10000 GBP
rawdiet.com 10000 USD
allhere.com 9999 USD
albumphoto.com 9350 USD
valsport.com 8750 USD
bidoo.com 8000 GBP
adhex.com 7000 EUR
blackocean.com 6000 USD
oria.com 5500 EUR
couponfactory.com 5000 USD
digidentity.com 5000 USD
Top ccTLD sales:
local.ru 20000 USD
übersee.de 15000 EUR
sonnenbrille.de 12000 EUR
personalinjurylawyers.co.uk 11000 GBP
innogames.co.kr 7400 EUR
boletos.es 5000 EUR
premiere.co.uk 5000 EUR
moviestar.de 4860 EUR
motors.eu 4500 EUR
cubaholidays.co.uk 4000 GBP
Top “other” sales:
tracker.org 18000 EUR
bailbonds.org 8500 USD
americasbackyard.org 7000 USD
horsebetting.net 6000 USD
irondeficiency.net 5000 USD
playgroundequipment.org 5000 USD
casino24.net 5000 USD
© DomainNameWire.com 2010.
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Related posts:
- No Landmark Deals, But Another Strong Sales Week at Sedo
- Sedo Sells Three Digit Domain Name For Six Figures
- Sedo Sells $1.25M Domains in One Week, Top.com Tops Them All
Video game publisher loses arbitration for BioShock.com domain name.
Take-Two Interactive Software, publishers of the Grand Theft Auto series and BioShock, have lost a domain name arbitration case to get the domain name BioShock.com.
Take-Two filed for a trademark on BioShock back in 2005 on an intent-to-use basis, and first used the mark in commerce in 2007 according to USPTO filings. But the company claimed there was online chatter about the release of a new game called BioShock prior to Frank Schilling’s Name Administration acquiring the domain name in 2005.
Furthermore, consumer products company Johnson & Johnson had contacted Schilling about the domain name prior to the complaint when J & J filed a trademark for BioShock for other purposes, which was ultimately abandoned. Thus, you basically had two large companies wanting rights to the same generic domain name for two different purposes. That is good evidence that it’s a generic domain.
The three person World Intellectual Property Organization panel ruled that the domain name wasn’t registered in bad faith:
In light of the timing of the Complainant’s trademark registrations, the announcements described above [about the game on various web sites], and the content published on the web page linked to the Domain Name, where links related to scientific content are published, the Panel is not persuaded that the Respondent had in mind the Complainant’s trademark BIOSHOCK at the time of its registration of the Domain Name.
Moreover, the Panel finds that the mark BIOSHOCK, which is constituted by joining the prefix “bio” with the word “shock”, is not exclusive to the Complainant, since, as highlighted by the Respondent, it has been selected and used by other companies, including Johnson & Johnson, prior to the Complainant, to identify products different from videogames (e.g., cleaning products, nutritional products, etc.).
John Berryhill argued the case on behalf of Schilling.
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Company settles trademark dispute.
Frank Schilling’s company Name Administration has reached a settlement with the holder of a trademark for Cheat Code, according to documents at the U.S. Patent and Trademark Office.
Late last year CheatCodes.com LLC started going after people who had “cheat code” in their domain names, thanks to somehow slipping the generic term “Cheat Code” past a USPTO examiner. It went after small webmasters, but also sent a demand to Name Administration for its CheatCode.com domain name. That was a mistake.
Name Administration filed for cancellation of the Cheat Code mark in November. On June 10 Name Administration’s lawyers informed the USPTO that a settlement was reached and dismissed the case.
Details of the settlement have not been made public. However, the withdrawal of the Petition for Cancellation means the trademark stands for now, which is not good news to smaller players who have been threatened by CheatCodes.com. Unless, of course, CheatCodes.com LLC is a bit more gun shy now.
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Vacation rental directory loses domain name dispute.
HomeAway.com, Inc. has lost its domain dispute for HomeAwayFromHome.com against Frank Schilling’s Name Administration. Name Administration was defended by domain attorney John Berryhill.
Name Administration bought the domain name for $1,400 in an expired domain name auction in 2005. HomeAway.com acquired the Home Away From Home trademark from another company in 2007.
The arbitration panel at National Arbitration Forum found that Name Administration had rights and legitimate interests in the generic domain name. The panel found that Name Administration’s use of the domain name as a pay-per-click web site was a bona fide use of the domain name, and also noted that HomeAway.com does not have exclusive rights to the common phrase “home away from home”:
The Panel also finds that the terms of the homeawayfromhome.com domain name are generic and of common use and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet.
Hurting HomeAway.com’s case was that, although it acquired the trademark “Home Away from Home”, it has barely used the term in commerce — and has used it in its generic nature on its web site.
© DomainNameWire.com 2009.
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Vulture.com now forwards to popular blog at New York Magazine.
New York Magazine has acquired the domain name Vulture.com for its popular entertainment and culture blog Vulture.
A review of historical whois records shows that Frank Schilling’s Name Administration sold the domain name to New York Magazine. Records indicate that the domain was transferred to New York Magazine around September 2.
This is an interesting example of a domain purchase by a major media outlet. What makes it interesting is that it acquired a domain name for a popular subsection of its web site, not just the main site. It’s a direct navigation play. The publication has a number of popular blogs, and owns the corresponding domain names for two others: TheCut.com and GrubStreet.com. It does not own the domain for four of its other key blogs:
-DailyIntel.com (parked)
-TheProjectionist.com (owned by Warner Bros.)
-TheSportsSection.com (owned by Upper Deck, which also owns SportsSection.com)
-Surf.com (owned by household products company)
I have no doubt New York Magazine paid dearly for Vulture.com. Not only is it a good domain, but Name Administration doesn’t sell domain names for cheap.
Incidentally, Vultures.com goes on the block in New York this week for $25,000-$50,000. Rest assured that Vulture.com sold for many times that amount.
© DomainNameWire.com 2009.
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