John Berryhill is almost always the attorney of record on the domain registrant’s side of a UDRP. I think he is one of the best domain industry attorneys, and I look to John when I need legal advice regarding my company’s domain names. In fact, John is the 2019 Lonnie Borck Memorial Award winner for his efforts in championing the rights of domain registrants. It’s no surprise that John won his latest UDRP case, but what was a surprise to me is that he represented the complainant in this UDRP.
This UDRP filing was against the ChefMaster.com domain name. The UDRP was filed at the National Arbitration Forum (NAF). John represented a company called Byrnes & Kiefer Co., which operates a brand called ChefMaster. According to the complainant’s contention, “Complainant has rights in the CHEFMASTER, (Stylized) mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 625,114, registered Apr. 10, 1956).” Reportedly, the domain name was used “to distribute malware to Internet users attempting to visit the domain name.”
To win the UDRP, the complainant needs to prove that the domain name is identical and confusingly similar to the complainant’s trademark, the domain name registrant doesn’t have rights or a legitimate interest in the domain name, and the domain name was registered and is being used in bad faith.
In this UDRP, the panel agreed with the complainant on all three of these aspects, although the domain name registrant did not file a response to the UDRP. It looks like a zero click landing page may have been what caused the panelist to rule in favor of the complainant. Here’s the discussion about whether the domain name was registered and is being used in bad faith:
“Additionally, Complainant avers that Respondent uses the domain name to distribute malware to Internet users attempting to visit the domain name. Use of a domain name to install malware onto a users’ computer can evidence bad faith under Policy ¶ 4(a)(iii). See eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been regstere, FA1621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”). Complainant provides a screenshot of the current message displayed when attempting to access the disputed domain name, which initially displays the message “Security Check” and requires users to select the “I’M HUMAN” button, and proceeds to require users to download software onto the users’ computer. As such, the Panel holds that Respondent’s use of the domain name in connection with malicious software constitutes evidence of bad faith under the Policy.”
John has represented complainants in the past. UDRP.Tools shows a number of cases in which John represented a complainant in a UDRP, including EHT.com, XAG.com, and TastyCake.com. It’s interesting to see a domain industry attorney known for defending domain registrants on the other side of the table.