Cybersquatting & Domain Dispute Attorneys / Lawyers: The Parking Page Dilemma: Frank Schilling loses domain under UDRP

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Surely the responsibility lies with the advertiser or the advertising service not with the domain owner.

If I buy an advertisement in a newspaper and use the paper ad in the same fashion, I don't think the publisher of the newspaper would be sued!

Surely there's some room for commonsense in the law? Perhaps it's just easier to beat up the small business owner than large companies?

Give em hell John.

Actually, the asserted mark is not "Chilli Beans", but a figurative logo, the validity of which is currently being challenged by a third party entirely in Europe. The UDRP Panel, while looking at something as dubious as recent Alexa stats, failed to notice the cancellation petition filed against the mark during the pendency of the proceeding.

Secondly, what "due diligence" would counsel against using "chilli beans" for food and beverage purposes, even if you knew there was a mark for eyewear. The search term that briefly brought up eyewear was for "glasses", which by sheer coincidence refers to beverage containers and eyewear in English.

In any event, keep your eye on the whois. An appropriate suit challenging the outcome of this decision has been filed in the designated mutual jurisdiction.

I'm not aware of those laws, and i'm just a newbie trying to learn a few things, however some things don't seem to make much sense to me, and i'll try to explain the why, excuse my english since it's not my first language, i hope i can explain myself well, here goes.

Company A, buys publicity from google adwords, i expect that company A knows that google will display those ads not only on their search pages, but also in other related websites who have adsense ads.

Domainer B, who happens to own the domain, and that domain is not related to company A business, domainer B has his own webpage or the domain parked, and he has adsense ads.

Well if those adsense ads are making publicity to company A, isn't it what company A wanted when they bought adwords ads? Don't they want the publicity? How is that cybersquating just because the domain owned by domainer B is like the name of company A.

I think this law is just a way of letting companies, in this case company A take the domain away from domainer B, all because domainer B was displaying adsense ads promoting company A, when in the first place that's what company A wanted, to get publicity around the internet, or else they wouldn't have bought adwords ads. Perhaps company A should have choosen that their ads could only be displayed in the google search pages, and never in websites or parked pages.

Just my logical, or my 2 cents on the subject. I would apreciate your comments on this.

Thank you

Kind regards

Barry: More often than not, a google search and typo domain search will get you all the info you need for a level 1 due diligence. What significant trademark doesn't enjoy a sizable web presence?

For more valuable domains you can easily do trademark searches through the USPTO, Canada, Mexico and through Madrid systems.

Thanks for the interesting analysis. While I understand the trademark concern, this throws the burden back on the domainer to do the due diligence prior to purchase or at least prior to engaging in parking. My question is besides searching the USPTO, what else precisely is needed? Given the site is visible worldwide, i assume you need to do more than USPTO. Also how do you research common law trademark usage worldwide? Is documentation that the search was done needed?

I agree that this decision is not all that surprising. Under the three prongs of the UDRP, this decision makes sense. While the outcome is incorrect based upon knowledge of Frank Schilling and his domain practices, domainers do need to take notice and understand what other trademark rights are out there that could create risk for their domain registration and/or domain portfolio. Simply put, domainers need to invest the kind of time and money into their domain name registration, including the necessary due diligence, that they would when choosing a trademark, company name, or other brand. This includes a trademark clearance or availability search that looks at both USPTO (and possibly Community Trade Mark or other relevant country) filings and common law trademark usage. This will allow domainers to quantify the risk of your registration, understand what products/services must be excluded from your site if you use parked pages, and mitigate the chances of being subjected to a UDRP or ACPA lawsuit.

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