It’s very frustrating to see a generic / descriptive domain name taken away from a registrant via UDRP. Not only is it unfair, but it also adds to the cost of doing business, as a UDRP defense has become a risk that needs to be factored into any domain investor’s business model.
Back in late 2008, Balglow Finance, a Brazilian company operating a sunglasses business known as “Chilli Beans,” filed a UDRP for the descriptive domain name, ChilliBeans.com. The domain name was/is owned by Frank Schilling’s company, Name Administration, Inc. When the three person NAF panel ruled against Name Administration in November of 2008, the company filed a lawsuit in its Grand Cayman jurisdiction in order to keep the domain name.
I was just informed that Name Administration has prevailed in its nearly two year legal effort to keep this domain name. According to a release I received this afternoon, the companies agreed that “NAI’s use of the generic Chillibeans.com domain name violated no enforceable rights of Balglow Finance.”
Name Administration has agreed to transfer the domain name to Balglow for an undisclosed settlement. According to Schilling, “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.”
As a result of owning such a stellar domain portfolio of generic/descriptive domain names, Name Administration has been a frequent target of UDRP filings. Some companies wrongly believe they have more rights to domain names than his company, although they are most often proven wrong by UDRP panels. When I spoke with Frank, he discussed his company’s history with UDRP filings.
“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.”
It’s good to see Name Administration prevail in this dispute. I hope other companies realize that filing a UDRP for a descriptive domain name may seem like a cost effective option at first blush, but it can lead to a costly and drawn out legal battle if they mess with the wrong company.
