Frank Schilling Loses loses generic name on aweful UDRP decision

[carlton]

Originally Posted by draggar

3) Uncommon spelling for "chili"

draggar - I believe many people, perhaps even a majority, would spell it "chilli". I'd like to add that this particular case seems like a monumental stretch on the part of the plaintiff. Probably falls a bit short of reverse domain name hijacking, but to prove bad faith on Schilling's part or an intent to exploit their brand is going to be an extemely high hurdle I don't think the plaintiff can make (in U.S. court of law).

Protecting one's brand we can all appreciate, but that's why there are rather substantial trademark limitations when adopting a highly generic term for your company name. There is perhaps more gravity and significance in this case to define the boundaries (limits) of trademark protection than to kneejerk an artificial win for an obscure company whose "brand identity" is almost zero when compared to the public's familiarity with the food, chilli (chili) beans. The stupid company should have considered a more fanciful mark.

[draggar]

Originally Posted by carlton

draggar - I believe many people, perhaps even a majority, would spell it "chilli". I'd like to add that this particular case seems like a monumental stretch on the part of the plaintiff. Probably falls a bit short of reverse domain name hijacking, but to prove bad faith on Schilling's part or an intent to exploit their brand is going to be an extemely high hurdle I don't think the plaintiff can make (in U.S. court of law).

Protecting one's brand we can all appreciate, but that's why there are rather substantial trademark limitations when adopting a highly generic term for your company name. There is perhaps more gravity and significance in this case to define the boundaries (limits) of trademark protection than to kneejerk an artificial win for an obscure company whose "brand identity" is almost zero when compared to the public's familiarity with the food, chilli (chili) beans. The stupid company should have considered a more fanciful mark.

Please don't think I was defending the decision. I agree, it is a generic term and it also seems that Frank tried to avoid any kinds of TM infringements with it. This is extremely close to reverse-hijacking.

[jasdon11]

One would assume that by saying the domain/parked page was in place serving advertisments prior to the TM being used, would be enough to prove no bad faith. Hell, the TM owner should need to ask permission to advertise on the site given the fact that their product does not represent the generic meaning of the name. That would be a case I'd follow

[actnow]

Don't expect John Berryhill to comment much more until the case is resolved.
I think he told us all that he would want to say - "stay tuned".

His first priority is his client and the case.
So, he will not want to say anything that could be used against his client
in Federal Court.

One of the advantages is that Frank has the financial ability to fight this.
Most domainers could not afford the possible long, drawn out fight.

[draggar]

Originally Posted by actnow

Don't expect John Berryhill to comment much more until the case is resolved.
I think he told us all that he would want to say - "stay tuned".

His first priority is his client and the case.
So, he will not want to say anything that could be used against his client
in Federal Court.

One of the advantages is that Frank has the financial ability to fight this.
Most domainers could not afford the possible long, drawn out fight.

Very true on both points and as for fighting it out, I think Frank will have to weigh over whether or not it's worth it. His reputation is definitely worth it, though.

[Doc Com]

Still would be concerned if he has control over the lander and purposely set the keywords.

If not, then it would seem that the parking company and the feeds would share some culpability.

Then again, "sharing the blame" has tried to be proven in the past with registrars permitting the registration of TM names but failed to stick. And it is once again being presented as a claim for the TM holders. The TM holders now know it is the registrars who have the money and permit the registration as well as the sale and transfer of such names.

[jasdon11]

Originally Posted by Doc Com

Still would be concerned if he has control over the lander and purposely set the keywords.

If not, then it would seem that the parking company and the feeds would share some culpability.

Then again, "sharing the blame" has tried to be proven in the past with registrars permitting the registration of TM names but failed to stick. And it is once again being presented as a claim for the TM holders. The TM holders now know it is the registrars who have the money and permit the registration as well as the sale and transfer of such names.

In FS's case, he is the registrar and the parking co.

[radioz]

The bad thing is that there is no precedent set by a WIPO ruling. I (me, myself, and I) fought one regarding a generic .BIZ name that was in large part much the same is scope. It was a wider, if you will, term with multiple generic uses and the complaintents TM didn't cover but a portion of the possible uses plus there were other TM holders. While researching this matter, I came upon the cases for 'Realtor.biz' and Realtors.biz' that were ruled on by different groups of judges. The respondent (likely the same person/domainer) did not reply to either complaint but Realtor.biz was taken back while Realtors.biz was retained with the judges reaching very different conclusions in the two cases.

In my case, I won. In the process, I too changed the parked landing page to eliminate the complaintents products before the ruling and noted this in my arguments. I suspect that Mr. Schilling's case may have been ruled upon very differently if the 'right' group of judges had heard it. While it is difficult to know which judges to ask for, I did look at their past rulings and also any noted hobbies or activities that may indicate flexibility rather than rigidity. That's a hard thing to discern, of course, and it should matter a lot less than it does.

[carlton]

Originally Posted by radioz

The bad thing is that there is no precedent set by a WIPO ruling. I (me, myself, and I) fought one regarding a generic .BIZ name that was in large part much the same is scope. It was a wider, if you will, term with multiple generic uses and the complaintents TM didn't cover but a portion of the possible uses plus there were other TM holders. While researching this matter, I came upon the cases for 'Realtor.biz' and Realtors.biz' that were ruled on by different groups of judges. The respondent (likely the same person/domainer) did not reply to either complaint but Realtor.biz was taken back while Realtors.biz was retained with the judges reaching very different conclusions in the two cases.

In my case, I won. In the process, I too changed the parked landing page to eliminate the complaintents products before the ruling and noted this in my arguments. I suspect that Mr. Schilling's case may have been ruled upon very differently if the 'right' group of judges had heard it. While it is difficult to know which judges to ask for, I did look at their past rulings and also any noted hobbies or activities that may indicate flexibility rather than rigidity. That's a hard thing to discern, of course, and it should matter a lot less than it does.

Jon - What an interesting find. Just read the 2003 WIPO case and this is quite significant for domainers who are tyrying to protect their generic domains.

The National Association of Realtors Lost the case against respondent for the domain: Realtors.biz

This merits becoming a separate thread on its own as a number of people have discussed and debated "over-reaching" by the Assoc. of Realtors as a result of their repeated attempts at stripping domainers of any name with "Realtor" in it. They have even denied Realtors themselves from registering and using geo domains with the word "realtor" in them.

I was not aware of the case you cited. Glad you pointed it out.

[jasdon11]

Originally Posted by carlton

Jon - What an interesting find. Just read the 2003 WIPO case and this is quite significant for domainers who are tyrying to protect their generic domains.

The National Association of Realtors Lost the case against respondent for the domain: Realtors.biz

This merits becoming a separate thread on its own as a number of people have discussed and debated "over-reaching" by the Assoc. of Realtors as a result of their repeated attempts at stripping domainers of any name with "Realtor" in it. They have even denied Realtors themselves from registering and using geo domains with the word "realtor" in them.

I was not aware of the case you cited. Glad you pointed it out.

This is similar - http://www.dnforum.com/f557/trademar...ad-335970.html

Going off the outcome of this case, if FS put up a site that promoted Chilli Beans glasses, making sure that no other glasses were promoted, he could keep the name (ahh, if only things were so simple...).

[bd77]

How many of you believe this decision will be overturned? I say it wont happen for the reasons I stated previously. The biggest one being ad's appearing on chilibeans.com related to the sunglasses company chillibeans.com

What do you all think? predictions?

I vote nay.

[Carter]

Another crazy decision...

[Doc Com]

Originally Posted by carlton

I was not aware of the case you cited. Glad you pointed it out.

I agree, two distinct cases and scenarios. Realtors, by all accounts, is purely generic.

Whether "Chillibeans" was a typo or intentional, if it is shown that FS does have complete control over the landing pages and content OR if someone working on behalf of FS created and manipulated the pages to reflect the sunglass terms...then it will be, in my opinion, a very difficult decision to overturn.

PLUS, the business was TM'd in 2000, the domain regged perhaps in 2002 - after the TM granted.

Given these facts and alleged proof that 75% of the traffic was originating from Brazil - home of the TM holder.

As for spelling Chillibeans, I totally missed the double "ll" and spelled how I typically spell it (I guess this comes from loving to make chili and the annual Chili Cookoff in this area) I ended up on a kid's site and was really perplexed on what this company (ChiLLiBeans) was *****ing about.

So I do not think making an assumption that most (or even some) would type in a misspelling is not much of an argument. Nor can I imagine how a poll could be conducted to assume this.

Irregardless, the registering a TM a couple of years before the registering a domain could be seed as grounds for depriving the TM holder from using their trademarked name.

Understand, this is not an argument for or against FS...just trying to look through it with unclouded eyes and viewing the evidence for and against.

[fab]

Wow, what a blow to John. I actually thought he never loses, especially cases like this!

[Rubber Duck]

I seriously doubt it will be a problem getting this overturned. It will go to court where they actually take account of TM Law. There is, however, no grounds for reverse hijacking in my opinion.

TM holders have an obligation to notify those that feel are encroaching on their TM. This has to be the case because many TM's are not registered but have equal rights with registered TMs. There is also the Geographical issue. If Frank ensured that he was not infringing the TM immediately he was notified, then he has fulfilled his obligations under the law.

Outside the US the spelling is pretty much Chilli. It is generic as the word Domain itself. But of course it is not generic in relation to sunglasses.

[hecto]

Well its just business, these things happen but it will be interesting to see how the outcome...

[PRED]

The law is an a s s, so is wipo

www.wipo.com

roflmao

[bd77]

Originally Posted by PREDATOR

The law is an a s s, so is wipo

www.wipo.com

roflmao

Is wipo a TM?

[britishbulldog]

It's simple you cannot park domains and have ads on relating to the TM........i lost one because of them tossers sedo who failed to change the keywords from medical to gambling which in turn resulted in ads displaying medical equipment which resulted in me losing the domain in the same way.......so be careful when parking especially with sedo.

Yet i cannot understand why *****.com keps on wasting tens of thousands on typos from snapnames when it all it takes is an email from one of the losing bidders to see him burn his cash..........crazy !

[PRED]

Originally Posted by bd77

Is wipo a TM?

i kind of imagined it would be. if they havent then they really are unbelievably stupid
the irony is priceless

the way its parked though you would think they could argue its confusingly similar lol

i wonder if they can wipo a name themselves lol, or would it be a conflict of interests?
not that thats ever bpothered them before.

an interesting one for sure