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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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Amazing! If you search for chicken in a search box, you’ll get chicken related results

August 9, 2012Domaining, Domainnamewire, John Berryhill, onelove.com, Policy & Law, udrpComments Off on Amazing! If you search for chicken in a search box, you’ll get chicken related results

Lawyer manipulates parked page links in UDRP.

Here’s a fun fact: if you search for “chicken” in the search box of a parked page, you’ll get search results related to chicken.

And if you are a complainant basing your allegations of targeted infringement on said search results, you’re probably not going to win your case.

That’s what just happened with a case brought by Raising Cane’s USA, LLC. The company owns chicken finger restaurants and apparently uses the term “One Love” in its brand.

It filed a UDRP over the domain name OneLove.com. The registrant of the domain name said he registered it because of the popularity of the reggae song ‘One Love’ popularized by Bob Marley.

That makes a whole lot more sense than buying it to upset a chicken chain. Honestly, I just played around with Google for quite a bit before finding references to Raising Cane’s and “one love” when searching for “One Love”.

In order to “prove” that the parked domain name was being used for infringement, Raising Cane’s lawyer Bassam N. Ibrahim of Buchanan Ingersoll & Rooney PC apparently typed “chicken” into the search box on OneLove.com. Walla! “Infringing” links.

Yeah, the panel didn’t fall for that one. The registrant, represented by John Berryhill, won the case.


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DoorKings.com: this is why you hire a domain attorney for UDRP

July 17, 2012Domaining, Domainnamewire, John Berryhill, Policy & Law, udrpComments Off on DoorKings.com: this is why you hire a domain attorney for UDRP

A complainant’s UDRP filing should be pretty simple, if it knows what it’s doing.

John Berryhill was ready.

His client, United Marketing Group, Inc, had to prove to a WIPO panel that its domain names DoorKings.com and DKSOpeners.com were registered in good faith after DoorKing, Inc. filed a UDRP complaint.

So he dutifully explained that, as a reseller meeting certain conditions, United Marketing Group had rights or legitimate interests in the domain names.

Then something happened: the panel didn’t even consider whether his client had rights or legitimate interests. It granted United Marketing Group the victory because DoorKing’s lawyers messed up.

DoorKing failed to show that the domain names were confusingly similar to marks in which it has rights.

Berryhill was sure to point this out the panel, but a competently filed case would have no doubt overcome this. DoorKing had filed trademark applications as early as the 1950s. But one of the earliest trademarks was canceled in 2000 because DoorKing failed to file its renewal. An oversight, DoorKing explained, due to change in trademark counsel.

No problem for DoorKing. It would have been pretty easy to show non-registered rights to the marks. But it didn’t. It didn’t try, probably because it didn’t understand the nuance of UDRP.

So the three person panel didn’t consider all the elements of UDRP. DoorKing failed at the first element.

And that, my friends, is why you should hire an attorney that specializes in what you’re trying to do.


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John Berryhill’s Farmville gets bigger with Elk.com victory

May 30, 2012Domaining, Domainnamewire, John Berryhill, Policy & Law, udrpComments Off on John Berryhill’s Farmville gets bigger with Elk.com victory

Pigs, ants, elephants, and elk.

Domain name attorney John Berryhill has an animal fetish. When it comes to UDRPs, anyway.

Berryhill has successfully defended Pig.com, Ant.com, and Elephant.com.

Now you can add Elk.com to that list.

I first wrote about this nonsense case back in March. Now the decision has been handed down in favor of the domain owner — with a finding of reverse domain name hijacking.

The case was brought by is ELK Accesories Pty Ltd., which has a web site at elkaccessories.com.au.

The owner of Elk.com registered the domain before ELK Accesories registered a trademark for Elk.

In a scathing analysis of why this case was reverse domain name hijacking, the three person panel blasts ELK Accesories’ counsel and the complainant. Here are some of its choice words:

Initiating domain name dispute resolution proceedings necessarily involves putting the parties to a considerable expenditure of time and in many cases cost and the Policy must not be used unless the complainant has a reasonable and credible belief it is entitled to succeed. In particular, proceedings must not be commenced in an unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name predating any trademark rights held by the complainant, see Sustainable Forestry Management Limited v. SFM.com and James M. van Johns “Infa dot Net” Web Services, WIPO Case No. D2002 0535.

In that regard it should also be said that the Complainant has entirely misconceived the nature of the proceedings it has brought. It says in the Complaint that it, the Complainant, “is a more appropriate owner and to which it has better rights that the Respondent.” It has been said many times that this is not the test or even one of the tests of success in UDRP proceedings, which are concerned with abusive registration of domain names.

Finally, it should also be said that it was the Complainant who, on no evidence at all, accused the Respondent of acting in bad faith. That, itself, is an act of bad faith and is part of the reason why the Panel has made the finding of Reverse Domain Name Hijacking…

This case is a prime example of why you should consult an attorney skilled in bringing the type of case you have. On the part of ELK Accesories, any attorney skilled at filing UDRP cases could have apprised it that the case was dead on arrival. As just one example of incompetence, ELK’s counsel mistakenly suggested the current owner registered the domain in 1995. That date, of course, was even more detrimental to the case than the actual registration date. But the fact that the counsel couldn’t accurately determine when the domain was registered by the current user is a sign they didn’t know what they were doing.

Read the full case here (pdf).


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Marchex successfully defends geo domain name in UDRP

May 11, 2012Domaining, Domainnamewire, John Berryhill, marchex, norcross, Policy & Law, udrpComments Off on Marchex successfully defends geo domain name in UDRP

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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Mastercard loses another Priceless case

May 2, 2012Domaining, Domainnamewire, John Berryhill, mastercard, partridge IP, Policy & Law, priceless, udrpComments Off on Mastercard loses another Priceless case

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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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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Marchex Wins UDRP for Walkaway.com

June 22, 2011Domaining, Domainnamewire, John Berryhill, marchex, Policy & Law, udrpComments Off on Marchex Wins UDRP for Walkaway.com

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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Prominent UDRP Defense Attorneys Also Opposed to UDRP Reform

May 11, 2011ari goldberger, Domaining, Domainnamewire, John Berryhill, Policy & Law, udrpComments Off on Prominent UDRP Defense Attorneys Also Opposed to UDRP Reform

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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Scott Day’s DigiMedia Wins Reverse Domain Hijacking Charge

February 14, 2011digimedia, Domaining, Domainnamewire, John Berryhill, Policy & Law, reverse domain name hijacking, scott dayComments Off on Scott Day’s DigiMedia Wins Reverse Domain Hijacking Charge

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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