Frank Schilling Loses UDRP
November 20, 2008 · Print This Article
In one of the most ridiculous UDRP decisions that I have ever seen, Frank Schilling (owner of Name Administration) lost the domain ChilliBeans.com.
The case was brought by a company in Uruguay, which owns a trademark for “CHILLI BEANS” for eyewear and watches.
The panel found that the domain ChilliBeans.com was identical or confusingly similar to the trademark CHILLI BEANS and that the design elements of the trademark didn’t matter. No big surprise here.
In the second stage of the UDRP analysis, the panel looks at the parties’ rights and legitimate interests in the domain. The panel found that the Complainant had such rights and interests. Schilling argued that he was using the domain in a legitimate way – to display ads linking to goods and services relating to food and beverages, which is consistent with the meaning of “Chilli Beans.” However, the panel found that there was no evidence that Schilling explored the possibility of third-party trademarks before registering the disputed domain name. The panel further found that there was evidence of (a very small amount of) pay-per-click advertising links on the ChilliBeans.com, related to the trademark.
The Panel decided to make up its own law and stated:
Moreover, this Panel cannot ignore the implications of publicly available traffic rankings generated by Alexa – and unchallenged by the Respondent – reflecting that in August 2008 some seventy-five percent (75%) of the traffic to the Respondent’s website originated in Brazil. This is significant given that the CHILLI BEANS mark has been used in Brazil since as early as 2000 and is more widely known there than in other areas of the world. While the Panel has no effective means of discovering traffic data at earlier dates, this certainly cautions against the Panel blindly accepting the Respondent’s contention that the sheer numerical preponderance of links keyed to the generic or descriptive meaning of the domain name renders the presence of paid advertisements related to a trademark insignificant or inconsequential, at least insofar as it concerns the pay-per-click revenue generated as a result of these links.
What?? The panel is looking at Alexa data and domain owners are expected to do so too?? And Alexa can’t be easily gamed?
The ultimate issue in these sorts of cases is whether the domain owner registered the domain in bad faith. Apparently, not knowing about a trademark, plus intending to use a domain only for its generic use, and targeting ads for the generic meaning are not sufficient. The panel concludes that Schilling registered and used the domain in bad faith, as he failed to explore the possibility of third-party rights and his parking software was incapable of distinguishing between dictionary meaning and trademark meaning of a term.
The panel completely ignored the fact that Schilling went out of the way to target food products in his ads.
The panel ordered Schilling to transfer the domain.
My guess is that Frank will be taking this to court soon. If something as generic as ChilliBeans.com is in danger of an UDRP loss, almost every domain is too.
Written by admin · Filed Under Law
I cant believe that they won based on those facts!
I think Frank should fight this all the way – This effectively means that anyone with a great keyword name could lose it due to the fact there some else has TM on something that Frank clearly isnt trying to infringe on!
I think there is something fishy going on here – Seem very strange to win based on Alexa rankings also.
Regards,
Robbie
Agree. The fact that a trademark is well known in one part of the world shouldn’t mean that everyone in the world is expected to know it. Also, the decision practically means that automated ads are a danger – even a developed site with Google adsense would be vulnerable under this reasoning.
This is one of the reasons why I don’t park any of my names at all, not one. I knew UDRP panelist hate parking ads. It is general bias against domainers and parking. Even creating a links page is too risky for generic domain names!
404 your domain names till developed or sold…
John
http://unplain.com
John this is good idea if you are only interested in selling your domains and you dont need the cash but for someone like Frank who has over 200,000 domains he would need to create revenue in some form to pay for reg fee alone every year.
But I do agree the only way not to get screwed is to have 404 on your names.
Regards,
Robbie
@Robbie
I was speaking for myself lol
Franks portfolio is a horse of a different color. With that vast amount of names, parking is the only fast and economical way to pay for its reg fees and keep that type of revenue coming in…
My portfolio isn’t anywhere that size lol – I can afford the 404’s
John
http://unplain.com
“seventy-five percent (75%) of the traffic to the Respondent’s website originated in Brazil. This is significant given that the CHILLI BEANS mark has been used in Brazil since as early as 2000 and is more widely known there than in other areas of the world. “: is why he lost.
Been trying to warn you folks, that they are cracking down big time – using more sophisticated click forensic tools… and if you have a domain that you are passionate about- you must eliminate the toxicity from parking and forum appraisals and drop lists and other black marks that appear within Google results when searched. In this case reputation management is key. More and more domainers are getting banned from Google as Julia put it “ill get you kicked out faster than republicans leaving the white house.”
Your best defense is offense. People who want to start Web businesses don’t buy names off lists. Find them with ads that sell their potential and logos that make it real. That in mind consider increasing your domain’s value instantly with a Grand Names “Dressed for Domain Success” premium marketing campaign.
Defend against Google blacklist.
MORE via Frager Factor:
http://tinyurl.com/5h4jn7
Schilling will not appeal the decision. The fact that he was displaying trademark infringing results on the landing page is what sealed his fate here, not alexa stats. Whether the results were within his control or not, intentional or not, is irrelevant. The decisions do not consider intentions, only facts. The fact that infringing ads were displayed on th elander makes this case and schilling a loser here.
@ reg fee names
having a 404 error is not a solution. Not sure why you believe that having a 404 would consititute legitimate use?
Lucky that Frank is his own registrar, if he had his names somewhere else the registrar might have shut down the domain, or transferred it themselves. I hope he continues the fight for the domain.
Owen uses Julia’s lame quote “faster than Republicans leaving the White House” as an analogy describing domainers being “banned from Google”?
First of all, none of the Republicans I see in the overwhelmingly successful 8 year run of the Bush Administration are “leaving the White House” yet. Still have another 2 months to go.
Second of all, Owen Frager quoting Julia? Now THAT’S a story. (Or maybe it’s a sales pitch. I’ll lean towards the latter).
“Chilli” is a weird alternate spelling of “chili”. If Frank only reg’d this domain because it was already a company’s trademark, I can’t feel much sympathy for him. But if he unwittingly got it as a generic, that’s a different story.
How could they possibly concluded there were PPC ads if when you search their exact phrase or TM there is NOTHING on the SE results?
There is ZERO evidence they even had a web presence, because somehow a small mexican restaurant that was started in 2006 and has web design style/technology of the 90’s has better ranking than a company from “2000”.
Obviously many have been saying it for a long time now, but Parking is due for evolution.
Parking companies have to provide a much more massively transparent interface to survive in this industry or we’re all toast. As of now we have no way to look at traffic data, source, keywords clicked or targetted regions. And this is why Alexa is more valuable in court – because parking data shows almost nothing to the owner!
So either domain parking changes to win in this harsher climate, , or domainers must all become developers armed with weblogs and clear concise data.
I have a question here , if have a LLL.com , and there is many trademarks uses that logo , by putting a web site on the domain , will protect my back like this ?
Please some body answer this , it so important for me .
This is BAD news.
Makes NO sense to me at all.
The trademark holder SHOULD have bought the domain name from Frank S.
@SAM – That’s something that you need to ask a lawyer. I’m not sure, but I certainly would not park an LLL.com.
Any ruling based on Alexa ranking is absurd. Just simple as that.
Thats a ridiculous claim! I agree for Frank to take this further. Such generic name… Plus using the unreliable Alexa factor too. lol..
This is bad news. I have been saying for some time now that domainers need to become domain-developers. This obviously strengthens my view. Simply, if we want to keep our domains, and we want to keep ourselves out of court, we need develop our domains.
The trademark was applied for after the registration of the domain. The first person to comment was right. There is somehting fishy here.
Frank still has the domain? Must have filed in court within the 10 days. I will call it before it happens, I bet that for some unknown reason Frank ends up keeping this domain.
Lets check back in 6mos on this one.
Does anyone know where the court appeal was filed?
I understand that there has been a preliminary hearing in this case, but I don’t know more than that.
Frank still has this domain. I just typed it in and got his parking page.
It’s a humorous story, but definitely ridiculous!