John Berryhill UDRP Defense to Benefit Dana-Farber Cancer Institute

Elliot Silver
-
7

If you know John Berryhill or if you follow him on Twitter, you know that he is an avid bicyclist. He rides his bike regularly, including long rides during various domain industry conferences. A couple of years ago, I suggested he ride the Pan-Mass Challenge with me, and he took me up on this great two-day ride to raise funds for Dana-Farber Cancer Institute.

John has a unique and fun way to raise funds for his ride. John will offer a reward of a consultation on a UDRP defense and will prepare a UDRP Response if that defense is viable to (a) the first contributor who donates a minimum of $5,000 or (b) the top contributor who donates over $1000 to the Dana-Farber Cancer Institute via John’s PMC fundraising page if the $5,000 reward is unclaimed at the time of the ride starts on August 5. This reward can also be designated by the qualifying contributor for John to defend a UDRP respondent who is unable to afford a defense.

I think John is one of the best domain name industry attorneys. There are many UDRP cases I could point to as evidence, but in the last couple of weeks alone, John won the Novelist.com UDRP (with a finding of Reverse Domain Name Hijacking) and he also won the Gstaad.com UDRP.

I think it is very cool that John is making this offer on a UDRP defense. You can use it for one of your own domain names or to defend the domain name of a respondent who should not deserve to lose because they cannot mount an effective defense.

If you are considering the $5,000 reward, you need to contact John directly to discuss your case prior to making the donation, although of course you are welcome to contribute to his fundraising effort aside from this offer. As with any legal service offering, this offer is subject to a conflict check, there is no guarantee of a successful outcome, the determination of whether a defense is viable is subject to John’s independent professional judgment, and this reward has no cash or equivalent value.

Here is John’s Pan-Mass Challenge fundraising page!

RDNH Finding on MagicPlan.com UDRP

Elliot Silver
-
0

A UDRP was filed earlier this year against the MagicPlan.com domain name at the National Arbitration Forum, and the decision was published this morning. The UDRP was defended by Ari Goldberger and Jason Schaeffer of ESQWire.com on behalf of the domain owner. In addition to winning the UDRP, the three member panel found that this was a case of Reverse Domain Name Hijacking (RDNH).

The first bit of good language for domain investors that was published in the decision came in the “Rights or Legitimate Interests” section. This discussion centered around the respondent’s business model as a domain investor, and it cited quite a few examples of similar types of domain names owned by the registrant in showing that the complainant’s business was not targeted. This section also referenced other UDRP decisions acknowledging that domain investing is a legitimate business. Here is an excerpt from this section:

“A respondent may register and use a domain name to attract internet traffic based upon the appeal of a commonly used descriptive term, even when it is identical or confusingly similar to a complainant’s registered mark. Johnson & Johnson v. Chad Wright, webQuest.com, Inc., WIPO Case No. 2012-0010, National Trust for Historic Preservation v. Barry Preston, WIPO Case No. 2005-0424.

A key factor with respect to registering generic, descriptive, common word domain names, whether in connection with a domain reselling venture or otherwise, is that the domain names be selected for their value as generic, descriptive, common word names, without targeting a specific trademark, and without commercial gain from the reputation and goodwill associated with the trademark of another. Metro Sportswear Limited v. Vertical Axis, WIPO Case No. 2008-0754, Baccus Gate Corp. v. CKV et al., WIPO Case No. 2008-0321. In this case there is no evidence whatever that Respondent intended to benefit commercially from the reputation and goodwill of Complainant when it registered the Domain Name. Indeed, Respondent registered it some seven years before Complainant even began using its MAGICPLAN mark in commerce, so it could not possibly have done so.”

In the “Registration and Use in Bad Faith” section of the UDRP, there is another excerpt that I think could be helpful to domain investors whose

Read More

NameFind Will Retain Fabricator.com After UDRP Win

Elliot Silver
-
2

Fabricators & Manufacturers Association, International filed a UDRP against Fabricator.com at the National Arbitration Forum. Until the decision was published on the NAF website, I was not sure who filed the UDRP given the generic nature of the “Fabricator” term. The domain name is owned by GoDaddy’s NameFind, and the company was represented by attorney Gerald M. Levine of Levine Samuel, LLP.

This morning, the NAF published the UDRP decision. The panel (only one panelist) ruled in favor of the domain name owner, so NameFind will retain the domain name and be able to sell it.

In order to prove its case, the complainant needs to prove that (paraphrased) the domain name is identical or confusingly similar to a trademark, the complainant has rights and legitimate interests in the name, and the domain name was registered and used in bad faith. In this particular case, the panelist ruled in favor of the domain owner on one element, so he did not feel the need to rule on the other aspects  of the UDRP.

Here is the section  of the UDRP decision I feel is most relevant to domain name owners, especially those who sell commonly used dictionary .com domain names:

Read More

RDNH Finding in Novelist.com UDRP Decision

Elliot Silver
-
0

The Novelist.com UDRP was decided and published on the National Arbitration Forum (NAF) website. The decision went in favor of the owner of the domain name, WebMagic. The panel also concluded that this was a case of Reverse Domain Name Hijacking (RDNH). Domain attorney John Berryhill represented the domain owner in this UDRP.

The complainant in this UDRP turned out to be EBSCO Industries, Inc., which operates a website called NoveList. Because the UDRP was filed at the NAF, the complainant was not publicly revealed until the decision was published.

With any UDRP proceeding, the complainant needs to prove three things (paraphrased): the domain name is identical or confusingly similar to a trademark, the complainant has rights and legitimate interests in the name, and the domain name was registered and used in bad faith. Although the panel concluded the complainant proved the first aspect, the panel concluded that the domain owner has rights and legitimate interests in the domain name. Here’s how the panel ruled on that aspect:

Read More

RDNH Finding in AirZone.com UDRP

Elliot Silver
-
1

Nat Cohen’s Telepathy won a UDRP that was filed against AirZone.com, a domain name the company registered in 1999. The three member panel also found that the complaint to be Reverse Domain Name Hijacking (RDNH). The UDRP was defended by domain attorney Zak Muscovitch of DNAttorney.com.

There were several factors that contributed to the decision. Among the factors that stood out the most for me:

  • Telepathy registered several (keyword)Zone.com domain names on the same day and at around the same time, showing that the company didn’t target the complainant.
  • Telepathy owns a variety of generic domain names, such as this one, which are owned legitimately and without the purpose of infringing on the trademarks of other companies.
  • Complainant made an offer to buy the domain name
  • There were several purchase offers from a variety of companies, which showed that there are many entities that could use the domain name and that the complainant’s brand wasn’t targeted by the owner.
  • Complainant filed the UDRP 12 years after submitting its purchase offer and apparently never contacted the domain owner at any point in between.

From a domain investment standpoint, the panel’s finding in the section regarding registering and using the domain name in bad faith is what

Read More

Versailles.com and VisitVersailles.com Subject of UDRP Filings (Update)

Elliot Silver
-
2

Two geographic domain names have become the subject of two separate UDRP proceedings at the World Intellectual Property Organization. A UDRP was filed against Versailles.com (WIPO Case D2017-1016), and a UDRP was filed against VisitVersailles.com  (WIPO Case D2017-0985).

Versailles.com and VisitVersailles.com are owned by two different registrants, which is why there are two separate  UDRP filings. Versailles.com was registered over 20 years ago (back in  1996) and is owned by someone in Houston, Texas. VisitVersailles.com has a creation date of September of 2006, although the domain name had been registered and expired prior to that. This domain name is owned by a registrant in Laredo, Texas.

When I visited Versailles.com this afternoon, the domain name resolved to a default  GoDaddy landing  page. When I visited VisitVersailles.com this afternoon, I was forwarded to a “coming soon” landing page on a different website (likely the owner of the domain name).According to NameBio, Versailles.com was acquired at auction for $35,000 back in 2009. Based on DomainTools’ Whois History tool, it appears that the domain name changed hands since the auction, although that is just a guess.

The complainant in both of these UDRP proceedings is

Read More
1...474849...95Page 48 of 95