John Berryhill is an Intellectual Property attorney who specializes in domain name law. Last night, John posted a Twitter thread regarding trademark infringement, specifically related to ENS domain names. In the thread, John shared some thoughts about the potential issues that may come with owning ENS domain names that infringe on trademarks and brands.

Obviously, every domain name is unique, and there may be unique circumstances related to each domain name registration. Reading John’s thread would be a good idea for people who own ENS domain names that could potentially match well-known brand names and trademarks:

ICANN just closed its comment period related to an ongoing analysis of the effectiveness of the UDRP, and the ICA submitted a well-reasoned comment. With that in mind, I want to highlight a UDRP decision that was just published. The UDRP was filed against a valuable 4 letter brandable type of domain name that can be pronounced and is also an acronym – Mohu.com.

Mohu.com is registered to a China-based domain registrant who responded to the complaint and requested a finding of Reverse Domain Name Hijacking. The sole panelist, David P. Miranda, Esq., ruled against the respondent, giving this valuable domain name asset to the complainant. In my opinion, based on what I read in the UDRP filing, this decision was wrong and is completely unfair to the registrant.

According to the decision, here’s some background information about the domain registrant (the bolded emphasis was added by me):

A National Arbitration Forum panel presided over a UDRP that was filed against the CyberGuard.com domain name. CyberGuard.com is owned by McAfee, the global computer security company. For whatever reason, the CyberGuard.com domain name does not resolve to a functioning website.

Not surprisingly, the sole UDRP panelist, Terry F. Peppard, ruled in favor of McAfee even though the company did not respond to the UDRP. While the decision was on point, I think the panelist should have taken it upon himself to rule that the filing was a case of Reverse Domain Name Hijacking (RDNH). It does not appear that RDNH was even considered by the panelist.

When a company has a huge portfolio of domain names like HugeDomains, it is bound to see its fair share of UDRP filings. A pair of Spanish companies called Bookker Corporate S.L.U and The Graffter SL filed a UDRP against Bookker.com, a domain name owned by HugeDomains. The UDRP was filed at the World Intellectual Property Organization (WIPO).

HugeDomains, which was represented by attorney Jason Schaeffer of Esqwire.com, prevailed in the UDRP. The panel also ruled that this was Reverse Domain Name Hijacking (RDNH). This UDRP decision is worth highlighting because of the pro-domain investor language from the three member panel (Assen Alexiev, Alejandro Touriño, and Jeffrey Neuman).

A UDRP was recently filed against the high value Skill.com domain name at the World Intellectual Property Organization. Skill.com is a fully developed business, and the complainant in the UDRP is a company called Skillful Communications, Inc. You don’t often see such a valuable domain name become the target of a UDRP proceeding.

John Berryhill is a highly respected Intellectual Property attorney who has made a name for himself in the domain name industry. John has successfully defended many valuable domain names over the years, and he is one of the most knowledgeable attorneys when it comes to domain name law.