Archive for the ‘John Berryhill’ Category
Panel rules company can keep Norcross.com domain name.
Marchex has successfully defended the domain name Norcross.com in a UDRP with the help of domain name attorney John Berryhill.
Marchex acquired the domain when it bought Yun Ye’s Ultimate Search portfolio.
Norcross is a suburb of Atlanta and the parked page at Norcross.com has shown links related to Georgia, hotels, etc.
The complainant, Norcross Corporation, sells viscosity equipment. While I’ll applaud it for owning the domain name viscosity.com, it clearly was on the wrong side of this case.
Norcross Corporation complained that Marchex said it would only entertain offers of $30,000 or more for any of its domain names. Some panelists think they are equipped to appraise domain names and make comments about how outrageous certain asking prices are. But this three person panel gets it:
The fact that Respondent was only willing to sell the domain name to Complainants for a sum far in excess of its out-of-pocket expenses directly related to the domain name does not establish the requisite bad faith since the Respondent had a legitimate interest in the domain name. A domain name registrant is always permitted to sell a domain name to which it has rights for a profit; that constitutes bad faith only when the domain name was acquired primarily for the bad faith purpose of selling it to the trademark owner.
I’ll toast to that.
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Related posts:
- Marchex Defends Domain from New Debt Reduction Company
- Marchex Defends Frontrunners.com Domain Name
- Marchex Wins UDRP for Walkaway.com
Mastercard is devaluing its “Priceless” mark.
Last Friday I wrote about how Mastercard lost UDRP cases for pricelessistanbul.com and pricelessamsterdam.com.
It just lost another case (pdf), this one involving pricelesslondon.com, pricelessparis.com, pricelessnewyork.com, pricelesslosangeles.com and pricelessmexico.com.
Why is Mastercard suddenly going after PricelessCity domain names? It appears to be related to its move to associate its “Priceless” trademark with more than just financial services; namely travel services. It also has a campaign around the slogan and city names.
But in this case the registrant of the domains registered them before Mastercard made any move into travel services using the mark. The domains are owned by PlayRage, which was founded by former Oversee.net employee Robert McClinton. McClinton provided a good rationale to the panel about why he registered the domains.
Another interesting tidbit from the case: in trying to prove its rights in the “Priceless” term, Mastercard notes that it owns the domain name Priceless.com, which was registered on November 3, 1997.
It appears (from the panel’s write up) that it omitted the fact that it didn’t acquire the domain name until much later.
Mastercard was represented by Partridge IP Law P.C., whose principal is also a UDRP panelist.
McClinton was represented by domain attorney John Berryhill.
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Related posts:
- Mastercard’s “Priceless” mark isn’t priceless, panel rules
- SAP Loses Another Domain Name Case
- Louis Vuitton loses case for LV.com
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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Related posts:
- Schilling and Berryhill Win Another UDRP
- Frank Schilling Wins Another UDRP
- Frank Schilling Loses His First UDRP
Panel points out the perils of descriptive marks.
Marchex has successfully defended a UDRP case brought against its domain name Walkaway.com with the help of domain name attorney John Berryhill.
Complainant Walkaway Canada Incorporated is the company behind the Hyundai Assurance program. The program allowed new car buyers the opportunity to return their car and walk away from the loan in the event of a certain life event such as a job loss. It was offered during the depths of the recession when people were scared to buy cars because they might lose their job.
Marchex argued that the pay-per-click page at Walkaway.com included topics related to the descriptive nature of the term, such as to walk away from a home mortgage.
The panel agreed, writing:
Even if it is true that the ads in Respondent’s website are related to Complainant’s services, that is a problem of Complainant’s making. Having selected a descriptive term as its mark, Complainant must suffer the consequences, including the fair descriptive use of its mark by other parties.
Walkaway’s domain name is WalkawayProtection.com.
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- UDRP Panel Questions Oversee.net’s Automated Domain Registration Processes
- Marchex Defends Domain from New Debt Reduction Company
If it ain’t completely broke, don’t risk breaking it.
Yesterday I wrote about how World Intellectual Property Forum and National Arbitration Forum are opposed to initiating a UDRP reform effort at WIPO.
They aren’t the only ones in this camp.
Prominent UDRP defense attorneys John Berryhill and Ari Goldberger also spoke on yesterday’s “State of the UDRP” webinar. And both of them are opposed to an overhaul of UDRP.
This is an interesting dynamic. The UDRP providers think that intellectual property interests won’t be adequately represented in a reform effort while domain attorneys probably think the opposite.
I tend to agree with Berryhill and Goldberger: UDRP will become more lopsided if a reform effort is started. Basically the IP interests would lobby the Governmental Advisory Committee, which would pressure ICANN into giving the IP interests what they want.
Indeed, I’m very afraid of UDRP reform.
Not everyone on the domain owner side is in this camp. Internet Commerce Association is pushing for reform with the backing of some of its large supporters.
Let me be clear: UDRP has many flaws and could use some reform. It’s just interesting that both sides are concerned about the outcome.
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WIPO panel finds complaint against DigiMedia.com was brought in bad faith.
Legendary domain name investor Scott Day’s company DigiMedia.com has won a charge of reverse domain name hijacking against a Dubai company.
Prime Pictures LLC filed the case in an attempt to get the domain name CinemaCity.com.
But DigiMedia.com had registered the domain name way back in 1998, about 7 years before the complainant used “CinemaCity” in commerce. That clearly means the domain name wasn’t registered in an attempt to harm the complainant.
The three person World Intellectual Property Forum panel found Prime Pictures guilty of reverse domain name hijacking, saying its counsel should have been aware that its case was doomed before it even began.
In the present case, the Complaint correctly identified that the Domain Name was registered in 1998. Given that the earliest date of any registration or use of the mark relied upon in the Complaint was in 2005, the registration of the Domain Name could not have been in bad faith on any interpretation of the facts and cases cited in the Complaint.
The Complainant is represented in this proceeding by legal counsel who has evidently examined the UDRP and a number of cases decided under it, which are cited in the Complaint. Any reasonable investigation would have revealed that there was a fundamental weakness in the Complainant’s case, in that there was no basis in the Complaint and cases cited therein for alleging that the Domain Name was registered in bad faith.
DigiMedia.com was represented by John Berryhill.
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Panel decision is good news for domain investors.
Complainants in UDRP cases often point to a domain owner’s willingness to sell and a price quote as proof of bad faith. But sometimes a broker responds to a domain name inquiry on behalf of the domain owner without consulting with the owner.
A recent ruling for MegaShoes.com brings good clarity to the issue.
The complainant had a weak case in general, but one of its claims was that the domain owner’s agent responded to a domain inquiry suggesting that $4500 would be a reasonable offer. The domain owner didn’t make a $4500 offer to the complainant; instead the broker merely suggested it as a good offering price.
Somewhat surprisingly the panel understood this distinction:
In the opinion of the Panel, the so-called offer to sell is nothing of the sort. It is not uncommon for a domain name site of the type operated by Respondent to be prefaced by a banner advertisement offering the domain name in question for sale. Anyone replying to this is automatically directed to a broker, such as in this case DomainDirect Inc., who will often reply specifying a price without referring the offer to the owner of the domain name. It would seem, from Respondent’s Additional Submission, when it denies any knowledge of any offer to purchase, that this is exactly what occurred on this occasion. The Panel therefore dismisses Complainant’s assertion that Respondent attempted to sell it the domain name.
This is a good case for domain investors to point to when this issue arises in the future.
The respondent was represented by domain attorney John Berryhill.
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Related posts:
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Generic domain name registration stays with rightful owner.
The domain name Convoy.com has been successfully defended against an attack in a Hong Kong UDRP.
The case was brought by Convoy Financial Services, a company incorporated in Hong Kong, against Rainforest Consulting of Tennessee. The respondent was represented by domain name attorney John Berryhill.
This dispute is interesting right off the bat because it was decided by Asian Domain Name Dispute Resolution Centre in Hong Kong. Most UDRP cases are heard by National Arbitration Forum or World Intellectual Property Organization; I believe this is the first case out of ADNDRC that I’ve reviewed.
Convoy Financial Services argued it has used the mark “Convoy” since 1995 in relation to financial services. But it didn’t register any of those marks until 2004. The domain name was registered in 2000.
The panel (William Law, the Hon. Neil Brown QC and Debrett G. Lyons) said (pdf) the firm did not provide evidence of using its marks consistently since 1995. Had the complainant’s rights in the mark predated the domain registration then it may have been able to argue that the domain was registered with the complainant’s mark in mind.
But even if it had proven rights to the domain name before the domain was registered, it still would have face a skeptical panel:
The Complainants submit some evidence showing company registration records which pre-date October 2000 but since “convoy” is an ordinary word in English, without showing extensive use and other common law rights in the word, it would be difficult to satisfy paragraph 4(a)(iii).
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Related posts:
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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
Online business formation company loses arbitration case.
Business Filings Incorporated, which offers business filing services at BizFilings.com, has lost a domain name dispute over BizFiling.com (singular version).
The company registered BizFilings.com back in 1996, but for many years used the brand “Business Filings Incorporated” on its web site. It filed an intent-to-use trademark in 2000 for BizFilings, which was refused a couple years later. Then in 2008 it filed a trademark again, citing a first-use-in-commerce date of 1996. The respondent registered the domain name in 2002.
As the respondent’s attorney John Berryhill pointed out, it’s impossible that the company was using BizFilings as a trademark back in 1996 when it first registered the domain name. He showed many examples of the company using its Business Filings Incorporated brand on its web site instead, and it filed an intent-to-use application in 2000 — suggesting that the company wasn’t using the BizFilings brand yet.
The three person World Intellectual Property Forum determined that the domain name wasn’t registered in bad faith.
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Related posts:
- Novo Nordisk Loses Domain Name Dispute
- Authorize.net Isn’t “Authorized”, Loses Domain Name Dispute
- iPhone App Developer Loses .Me Domain Dispute
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