I noticed a UDRP filing at WIPO this afternoon involving a relatively generic domain name. A company called Berry Fresh LLC filed a UDRP against BerrySweet.com. The UDRP is WIPO case D2019-3091. Ordinarily, I would not be inclined to write about a UDRP filing involving a domain name like this, but something caught my attention when I looked into it a bit.
BerrySweet.com is currently registered under privacy proxy at NameSilo, the registrant of the domain name is not publicly known. When I visited the domain name this afternoon, it did not resolve to a functional website. BerrySweet.com has a creation date of March of 2004, making it more than 15 years old.
Using the Whois History tool at DomainTools, I can see the domain name had been previously registered to an entity called Berry Fresh Produce LLC as recently as March of 2019. A check of NameBio shows that BerrySweet.com sold on April 25, 2019 for $1,938 at GoDaddy.
Prior to the auction, I received an Expired Domain Auction Inventory email from my GoDaddy account executive with the name listed. Based on what I can see, my guess is that this domain name expired, was auctioned, and now the former registrant is trying to get the domain name back using the UDRP process.
One thing I noticed is the former domain registrant is listed as Berry Fresh Produce LLC and the complainant in the UDRP is listed as Berry Fresh LLC. I think it is the same entity (or related) because the Berry Fresh Produce Whois email is @berryfresh.com, but there is the possibility it is different entities. We will find out once the decision has been published.
There is a “Live” trademark in the USPTO for the “Berry Sweet” term, among several filings. According to Trademarkia, the last applicant/owner for one of those live trademarks is Berry Fresh LLC.
There is alway a caveat emptor when buying domain names at auction. Regardless of the circumstances surrounding this specific domain name, there is some risk when buying domain names at auction. It will be interesting to see how this UDRP turns out.
Update: The respondent filed a response too late to be accepted, but the panel ruled in favor of the respondent anyway. The decision can be found via the WIPO website.
If the site never showed any PPC ads or if the owner didn’t try to sell it to the complainant, then it’s clearly an RDNH attempt given all the 3rd parties that have the same name:
Yeah, I do not think this is a cut and dry proceeding.
As an investor, it seems defensibly generic, but I do not have a legal background and do not know if/how the domain name was previously used.
Observer, how did you produce that list of similar domains? Is there an app or tool for that? Would love to know as it would be incredibly useful.
I believe there it can be done via ZFbot or DomainTools, however, I am maintaining an internal DB with nearly 400 TLD zones.
It is suprising Observers point isnt used in defense more often.
Also useful for sales
Auctions – it would be more useful to know brief history udrp [yes/no] #TM,
vs arbitrary valuation.
“There is a “Live” trademark in the USPTO for the “Berry Sweet” term…”
To flesh this out a little more, it would be a good idea for domainers to stop assigning meaning to the terms “live” or “dead” in relation to things in the USPTO database. A “LIVE” record may be a finally refused application which just happens to be within the six month response period before abandonment. Likewise, a “DEAD” record may be an inadvertently lapsed registration of a still very-much alive trademark. The notations “LIVE” and “DEAD” in the USPTO database, by themselves, don’t tell you very much.
Among the things one can find in the USPTO database, in addition to marks registered on the Principal Register, which are entitled to presumptions of validity and ownership, are a second class of proposed marks which have been refused registration and deemed descriptive. This second class is called the “Supplemental Register”. Marks on the Supplemental Register – like the one mentioned by Elliot in the article – are NOT entitled to a presumption of validity. Since they are descriptive terms, they might someday reach a point of acquired distinctiveness as marks, but that will require evidence of longstanding substantially exclusive use.
Absent other evidence, marks registered on the Supplemental Register are insufficient on their own to demonstrate rights for the purpose of the UDRP. This is pointed out in the WIPO UDRP Overview, which amounts to WIPO’s own FAQ:
1.2 Do registered trademarks automatically confer standing to file a UDRP case?
1.2.1 Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.
1.2.2 Complainants relying on trademark registrations listed solely on the USPTO Supplemental Register are expected to show secondary meaning in order to establish trademark rights under the Policy because under US law a supplemental registration does not by itself provide evidence of distinctiveness to support trademark rights. Even where such standing is established, panels may scrutinize the degree of deference owed to such marks in assessing the second and third elements.
Wow, so they are doing this based on a “Supplemental” TM?
What they have premised their case upon is just speculation, since UDRP filings are not public.
According to UDRPSearch.com, this complaint was denied: https://www.udrpsearch.com/wipo/d2019-3091
The decision has not yet been published though.