The Parking Page Dilemma: Frank Schilling loses chillibeans.com domain under UDRP

There has been some commentary about the recent Uniform Domain Name Dispute Resolution Policy (UDRP) decision against white hat domainer Frank Schilling's regarding the chillibeans.com domain. For those who have been paying attention, this decision is not so surprising. Rather than label the decision ridiculous domainers need to appreciate that this decision is not outside the norm or trend under the UDRP and make smart business decisions about parking their most valuable domainers. 

In a unanimous 3 member panel decision by William R. Towns, M. Scott Donahey & Sir Ian Barker, Schilling was found to have engaged in bad faith cybersquatting , under the UDRP by registering the domain chillibeans.com after Complainant had registered trademark rights for "chili beans" for the sale of sunglasses. Schilling was represented by John Berryhill.

Now, anyone who knows Frank also knows that he had no knowledge or notice of the prior trademark rights in the non-dictionary use of chili beans when he registered the domain. The problem is that Frank, like all other domainers, are stuck with a parking system that delivers advertisements for non-dictionary uses of otherwise generic domains (ie trademark uses).  In this case, Frank's parking page software served up some limited adds for 'eye glasses' in addition to food items. We have posted about the need for more sophisticated software (and support from Google as well) which allow PPC advertisers to exclude certain product offerings from the parked pages before:

• Excluding Keyword Categories From Your Parked Pages In Order To Avoid Cybersquatting Violations
• Parking Pages Can Create Risk Of A Finding Of Bad Faith Under the UDRP
• One of the Rarely discussed Benefits of Domain and Website Development
• The Three Views of Trademark Cybersquatting
• Hobbits v. Hobbitts: Generic Mark Argument Won't Prevent Panel From Seeing Pay Per Click Parking as Bad Faith
• "Low Value" Domain Parking Pages Results In Another Lawsuit Against Google By Advertisers

There are three lessons every domainer --  at least those who are willing to deal with the legal realities under the UDRP and ACPA  --  should take from this decision. (1) do a trademark search for every valuable domain within your portfolio, (2) exclude ads to the extent you can from being served up on your parked pages which include products in trademark protected areas and (3) consider excluding your most valuable domains from parking programs all together (they are worth more 'for sale' than from parked revenue).

Reverse Domain Name Hijacking Decision Under the UDRP: What Was The Attorney Thinking?

A recent reverse domain hijacking decision in Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM is interesting to any lawyer who practices domain dispute law. The law firm bringing the Complaint Lowenstein Sandler PC advertises as a large law firm specializing in domain name disputes as evidenced by a search of their web site for the words "domain name." Considering that the domain name was registered 5 years before Complainant's trademark application was even filed and 3 years before claimed first use of the trademark, and that it contains two generic words, it is hard to imagine whether the lawyers were thinking beyond the billable hour when they filed this one. 

WIPO Domain Name Decision: D2008-0641

In addition, the Complainant’s case was weak in other respects. The Complainant provided no strong evidence of its trademark rights. The Complainant has no registered trademark. The Complainant provided evidence of having only a pending application for a registered mark. Neither did the Complainant provide strong evidence of having common law, or unregistered, trademark rights. The Complainant’s evidence in this respect comprised of three pages from its own website, and a small number of articles with incidental references to it, or containing (among others) short quotes of the “CEO of ad network Collective Media”. Those articles were dated between January and March 2008. The evidence from its own website appears to have been obtained in April 2008. The Complainant provided no evidence to support its claim of having unregistered trademark rights in 2005, let alone in 2002 when the disputed domain name was registered.

The Panel therefore finds that the Complainant should have appreciated that its Complaint could not succeed and, as such, was brought in bad faith for the purpose of paragraph 15(e) of the Rules.

Congratulations to Ari Goldberger who represented the Respondent.
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