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Software company guilty of Reverse Domain Name Hijacking against Frank Schilling

October 9, 2012Domaining, Domainnamewire, Frank Schilling, John Berryhill, Policy & Law, udrpComments Off on Software company guilty of Reverse Domain Name Hijacking against Frank Schilling

WIPO panel rules company filed UDRP “to obtain the disputed domain name at any cost”.

A World Intellectual Property Organization panel has found a software company guilty of reverse domain name hijacking in a UDRP filed against one of Frank Schilling’s domain names.

The UDRP was filed by MetaQuotes Software Corp. for the domain name MetaTrader.com.

Schilling’s company registered the domain prior to MetaQuotes filing for a trademark registration or even copyright registration for its software.

MetaQuotes started corresponding with Schilling about the domain name back in 2009. At the time, Schilling’s company twice pointed out to MetaQuotes that the software company hadn’t filed for trademark registration until after Schilling obtained the domain name.

Nevertheless, when MetaQuotes filed the UDRP it omitted any mention of the prior correspondence between the parties.

Although Schilling and domain attorney John Berryhill didn’t explicitly ask for it, the panel found MetaQuotes guilty of attempting reverse domain name hijacking:

It appears from the Response that when the Complaint in this case was filed (nine years after the registration of the disputed domain name), the Complainant was clearly aware that the Respondent had registered the disputed domain name well before the Complainant had acquired any trademark rights. That fact was expressly drawn to the Complainant’s attention in correspondence between the parties three years ago. Moreover, the Complainant has failed to point to anything that would suggest that any reputation attaching to its mark at the date of registration of the disputed domain name was likely to have been known to the Respondent at that time. It appears to the Panel as if the Complainant persisted in filing these proceedings without regard to these factors, or to its likelihood of success in the case, and in spite of its past interactions with the Respondent. In these circumstances the current Policy proceedings as commenced by the Complainant appear to be little more than a blatant attempt to obtain the disputed domain name at any cost. In addition the Panel notes that the Complainant failed to disclose in the Complaint its pre-Complaint correspondence with the Respondent and did not deny its existence in its supplementary submission, which omission does nothing to reinforce its bona fides.

It appears to the Panel that the Complainant must have known when it filed the Complaint that in these circumstances there was no reasonable chance of success and that it was putting the Respondent to unjustifiable trouble and expense in defending these proceedings.


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Frank Schilling wins UDRP for DataServ.com

October 8, 2012Domaining, Domainnamewire, Frank Schilling, Policy & Law, udrpComments Off on Frank Schilling wins UDRP for DataServ.com

Company files UDRP after $20,000 offer rejected.

Frank Schilling’s Name Administration has successfully defended the domain name DataServ.com in a UDRP filed by St. Louis company DataServ, L.L.C.

DataServ made offers of $10,000, $15,000 and finally of $20,000, but couldn’t get Shilling to sell. After that it decided to try its hand at UDRP.

The offer of $20,000 certainly seems to indicate that DataServ knew it had little basis for filing a UDRP. Here’s how Name Administration explained this:

The Respondent did not initiate contact with the Complainant, but responded to contact from the Complainant concerning the disputed domain name. The fact that the Complainant was willing to offer such an amount, rather than to assert its alleged rights and demand transfer, provided the Respondent with the impression that the Complainant must have believed the disputed domain name was legitimately registered and used by the Respondent. The Complainant is not the only party who has contacted the Respondent, who has also received a similar solicitation from Dataserv Group Limited of Middlesex, UK, the holder of the junior European and UK trademark registrations.

DataServ, LLC tried to the make the argument that Name Administration should have been aware of it when it registered the domain and that it couldn’t “turn a blindeye” to trademark registrations. John Berryhill, attorney for Name Administration, pointed out that there were existing trademarks for DataServ when DataServ, LLC was founded.

It’s not wonder DataServ, LLC wants this domain: its current web address is DataServOnDemand.com.


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Uniregistry to offer single trademark block across all its top level domains

June 13, 2012Domaining, Domainnamewire, Frank Schilling, new tlds, Policy & Law, uniregistryComments Off on Uniregistry to offer single trademark block across all its top level domains

Uniregistry tries a different approach.

Frank Schilling is definitely trying to shake things up with his new TLD play Uniregistry. Here are some interesting sections of his applications:

On defensive registrations:

“Our financial projections do not include, expect, nor rely upon an assumed profit from defensive registrations…

…Brand owners who are not interested in using the TLD should not be charged a premium nor risk implicitly threatened consequences of non-registration. Hence, we will offer the opportunity to block trade or service marks in the [TLD] TLD strictly on a cost-recovery basis. While the Trademark Clearinghouse provides an economy of scale for Sunrise programs across registries, Uniregistry will provide further burden reduction with a ?once and for all? unified multi-TLD Sunrise registration application process. A single Sunrise application can be designated to cover all future TLDs which Uniregistry is entrusted to manage, such that delegation of other TLDs to Uniregistry decreases the net cost, time and inconvenience to any parties engaged in intellectual property protection.”

On pricing:

“Uniregistry intends to make a contractual commitment to registrants and their registrars not to increase registry prices above cost of inflation for the first five years after launch of the registry. Our initial pricing model allows registry prices to find a market value that may be substantially below our projections, which are based on conservative assumptions of registration volume, rather than locking in a captive market with a deceptively low initial registration cost.

Uniregistry does not believe that registry fees should rise when the costs of other technology services have uniformly trended downward, simply because a registry operator believes it can extract higher profit from its base of registrants. While competition in registrar services by ICANN caused an initial and substantial drop in retail domain registration prices, the fees for registry services have increased over the same span of time. Those increases have not been justified by increased Internet traffic, and thus zone server operational cost, since the cost the underlying technology has trended down while performance has increased. We do not believe registry fees should follow a different trend than comparable technological services. Uniregistry?s management includes individuals who participated in anti-trust litigation which was brought to combat increases in existing TLD registry charges they believed to be unjustified, and we have no intention of following that path. We believe our best opportunity for prosperity is to offer a reliable, differentiated TLD which will attract increasing numbers of registrants.”

On expired domains:

“A Redemption Grace Period (RGP) is applied at the initial step 30 of the Delete Cycle. The RGP is a period of six months, during which the subject registration is placed on REGISTRY-HOLD, and nameserver records for the registration are removed from the zone file, such that the domain name will not resolve. This six month period is significantly longer than the present industry standard, which has been subject to community criticism for not providing sufficient time for registrants with extenuating circumstances.”


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Frank Schilling applies for 54 new TLDs, Juan Calle also in the mix

June 12, 2012Domaining, Domainnamewire, Frank Schilling, juan diego calle, new tlds, UncategorizedComments Off on Frank Schilling applies for 54 new TLDs, Juan Calle also in the mix

Schilling applies for 54 domains, reports Paul Sloan.

CNET’s Paul Sloan, who has been covering the domain name industry for many years, just wrote a piece on new top level domains that teases out more details behind Frank Schilling’s plans for new TLDs.

Sloan reports that uber domainer Frank Schilling is applying for 54 top level domains through his registry Uniregistry. He’s invested $60 million of his own money for the venture.

(Schilling told me a month ago “I wouldn’t expect anything earth shattering”. His definition is different from mine.)

Sloan also writes that Juan Diego Calle, founder of .co internet, is applying for 13 new top level domains through the same investment company that backed .co internet.

Calle certainly has the hands on experience over the past few years to know what it takes to get a TLD off the ground. I appreciate this quote from Calle:

“Many of the companies involved in this are simply hoping that Go Daddy will add their TLD into its store and they’ll sell millions the next day. That’s what they are betting on, but it won’t be the case.”

Indeed, if applicants have these kinds of numbers baked into their assumptions, they’re in for a rude awakening. .Co and .me have been marketed very heavily over the past few years, especially by Go Daddy. .Co has in the neighborhood of 1.3 million registrations at last check; .me is in the neighborhood of 600,000 or so.


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Frank Schilling and John Berryhill team up to get RDNH decision

December 8, 2011Domaining, Domainnamewire, Frank Schilling, John Berryhill, Policy & Law, rdnh, reverse domain name hijackingComments Off on Frank Schilling and John Berryhill team up to get RDNH decision

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.


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Owner of FLVS.net Sues Frank Schilling Over FLVS.com

May 23, 2011Domaining, Domainnamewire, Florida VirtualSchool, Frank Schilling, k12 Inc, name administration, Policy & LawComments Off on Owner of FLVS.net Sues Frank Schilling Over FLVS.com

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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After Losing UDRP, New York Times Buys DealBook.com from Frank Schilling

January 30, 2011Domain Sales, Domaining, Domainnamewire, Frank Schilling, New York TimesComments Off on After Losing UDRP, New York Times Buys DealBook.com from Frank Schilling

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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Schilling Beats New York Times in Landmark UDRP

November 22, 2010doctrine of laches, Domaining, Domainnamewire, Frank Schilling, John Berryhill, Policy & Law, udrpComments Off on Schilling Beats New York Times in Landmark UDRP

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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Name Administration Settles Over ChilliBeans.com Domain Name

November 3, 2010Domaining, Domainnamewire, Frank Schilling, name administration, Policy & Law, udrpComments Off on Name Administration Settles Over ChilliBeans.com Domain Name

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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$500k IPO.com Sale One of Many Big Sales at Sedo This Week

September 28, 2010Domain Sales, Domaining, Domainnamewire, Frank Schilling, sedo, ultsearchComments Off on $500k IPO.com Sale One of Many Big Sales at Sedo This Week

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


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