Berryhill Wins Another, As He Beats Back A UDRP On Crops.com
The Complainant is Crop’s NV of Ooigem, Belgium.
The Respondent is DigiMedia.com, L.P. who was represented by John Berryhill.
Here are the relevant facts of the case:
“The Complainant was established in 1948 and is doing business in the field of growing and freezing fruits and vegetables.. In 2008 through 2009, the Complainant achieved a consolidated turnover of over 180 million Euros.”
“The Complainant is registered holder of numerous trademark applications and registrations containing the term “Crop’s” in various countries, including the U.S., where the Respondent is located.”
The Complainant’s first trademark was applied for in 1993 and has been registered in the Benelux countries (Belgium, Netherlands and Luxembourg), Austria, Germany, Switzerland, Spain, France and Portugal. ”
“Furthermore, the Complainant is the holder of registered rights in CROP’S The natural choice in the European Community since 2005 and applied for registration of CROP’S The natural choice in the U.S. on November 16, 2006. The U.S. trademark is not registered and no first use in commerce is claimed in the application. The Complainant’s trademarks (the “CROP’S Marks”) mainly cover food and beverages.”
“The disputed domain name was first registered on April 17, 1998, and is currently used to redirect Internet users to the website at “www.yeah.com”.”
The panel found as follows:
“The disputed domain name is also confusingly similar to the Complainant’s “CROP’S The natural choice” marks. The fact that some of the Complainant’s trademarks contain additional elements, namely the additional words “The natural choice” and graphical elements, does not preclude a finding of confusing similarity.”
“Therefore, the Panel finds that the disputed domain name is identical to the Complainant’s word marks “Crop’s” and confusingly similar to the Complainant’s “CROP’S The natural choice” marks and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.”
“On the balance of evidence in this case, the Panel is not convinced that the Respondent registered the disputed domain name in bad faith.”
“The Complainant provided evidence of trademark rights based on its European trademark registrations, and the Complainant’s rights in some of the CROP’S Marks predate the Respondent’s registration of the disputed domain name by five years.”
“However, the Complainant did not demonstrate business activities in the U.S., neither at the time of the registration of the disputed domain name nor at present. It applied for the registration of the trademark CROP’S The natural choice with the USPTO in 2006, however, without claiming any use in commerce.”
“The Panel’s view, the Complainant’s submissions are not sufficient to establish that the Respondent knew of the Complainant’s trademark rights (or the Complainant’s existence, e.g. through its website) in 1998 and that it registered the disputed domain name in bad faith.”
“As a result, it seems to be more likely than not to this Panel that the Respondent acquired the disputed domain name because of its generic meaning and not with a view to the Complainant and its CROP’S Marks.”
“For all the foregoing reasons, the Complaint is denied.”
So another nice win for Mr. Berryhill, but as usual the decision at least in my eyes is a little troubling.
After all this is a generic term.
Everyone reading this knows what the word Crops means, and its a farming term.
If this trademark holder had done business in the US and filed its trademark earlier, the language of this case seems to indicate the ruling could have gone the other way.
As trademarks continue to push the GAC to push ICANN for broader trademark protection like a global database of all trademarks, what happens when these pure generics are registered in such a database?
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A global trademark database seems like it would be impractical. It’s realistic to think that most generic terms are tm’d at least somewhere. Kinda silly to think you would be barred from registering a domain because of a trademark in somewhere in Europe, meanwhile you could stil register the tm (domain aside) with the uspto because there would be no conflict in registering the tm in the US. It’s all about use, how and where.
JP
“A global trademark database seems like it would be impractical.”
Well its coming, its in the latest guidebook on the new gTLD’s and the only questions is how broad will it be and what it will take to be included.
thinking…would a possible future defense be…”have you applied for .crops? If no, why not get that instead of trying to take crops.com”
So maybe they will make this db, we’ve all at least once been guilty of wasting too much time and resources into an idea only to later find out we were just pissing in the wind. Could be good really. After they piss all over themselves with thousands of hours and millions of dollars for no real useful result, other than just having this db, they will be a little tired of the overreaching tm suff and getback to being practical.
Tim
I know your joking but you do point out another problem which is if you put up your $185K and applied for .crops, this company who holds this Benelux trademark could object and:
1. might cause your application to be rejected and your $185K lost.
2. Would cause you to go through an even costlier and more time consuming objection proceeding
JP
That is not the way the political wind is blowing
Domaining as an industry has ten years left, tops. Put a fork in it…
It is going to be interesting to see the Summary of Earnings from the ICANN Era*.
*ICANN Era 1992 to 2012
UDRP Lawyer ? $2,000,000 per year ? x 20 years ? $40,000,000 ?
Wonder how the “UDRP Five” have done ? The 5 people who created UDRP.
Hank, sorry but domaining is not now, nor was it ever, an industry.
Domaining is going nowhere. The landscape is and will continue to change over time but the fundamental value of a quality domain name is only going to increase over time.
“the fundamental value of a quality domain name is only going to increase over time”
====
the fundamental value of a quality BRAND is only going to increase over time
build a BRAND and they will come
BRAND.ProteCtion is of paraMount IMPOrTENCE to iCANN.
Hello Mike,
Sounds like Berryhill is the go to Guy. He reminds me of a good atty. friend of mine Rick Stone. Rick engineered the largest corporate settlement in history. His expertise lies in all areas, and he is a Genius as well as John.
Pardon me no shot here, but there is an old saying that the only attorney you can trust is the one on your payroll !
There will be more UDRPS as everybody finally figures out what we did way back when it was 110$ per Reg at NETSOL.
Gratefully, Jeff Schneider (Contact Group) (Metal Tiger)
Lol, if someone thinks I make 2M per year, I know what payroll I want to be on then. I’d also have to do more than 400 of these per year to get close to that figure.
There go the weekends…
With regard to Follow the Money or Where does all the money go ?
In the words of Bernie Madoff…
“EVERYONE had to know!!”
By the way, Bernie now watches CNN all day with JON
://en.wikipedia.org/wiki/Jonathan_Pollard
It’s ridiculous that these types of cases even have to be ‘defended’.
If someone registers a name incorporating a whimsical trademark that couldn’t possibly have any ancillary use, that’s one thing. Owning a generic term narrows the TM scope considerably, down to a specified stream of commerce. It’s like saying a sign in front of a grocery store reading “Buy One Apple, Get The Second Free” dilutes the mark of the computer company. That is effectively what these companies are pushing when they try to claim absolute, 360 degree dominion over an otherwise generic word. It’s absurd.
LS Morgan
(Jade Rhubarb) (Butterscotch Mustache)
@ TheBigLieSociety
Wonder how the “UDRP Five” have done ? The 5 people who created UDRP.
===
UDRP Five that was the question that you Punked Berryhill on back a ways
he has hated you being more knowledgeable then ever since what a fat ego!
If you don’t have a “mancrush” on Berryhill, you don’t know what you’re missing. 100 more of his ilk and we’d no longer be dealing with the RIAA, Telcos as we know them today, and patent trolls. Apologies to JB for furthering the meme.