Yesterday we posted about a that Name Administration settled a case it filed after it lost a UDRP on the domain name ChilliBeans.com
Today comes a UDRP decision that Frank’s not going to have to appeal brought by Halo Innovations, Inc. on the domain name sleepsack.com.
(SleepSack decision (word doc)
There are some interesting cases cited by the opinion on other generic terms that had trademarks filed but which held in favor of the domain holder.
Here are the relevant facts and findings of the three member panel in denying the claim and holding in favor of the domain holder, Name Administration:
“The complainant filed US Trademark on the term SleepSack on August 26, 2002 but it was not registered until March 30, 2010.
“Complainant contends that it is a manufacturer and retailer of sleep-related products and that it has used the name SLEEPSACK since 2001 for several products, including wearable blankets and infant sleepwear. These have been sold throughout the world, not just in the USA.
“Complainant contends that its trademark is identical to the disputed domain name sleepsack.com which was registered on June 24, 2003, but not acquired by Respondent until June 29, 2006.”
“Complainant also accuses Respondent of having registered the disputed domain name in bad faith. As proof thereof, Complainant recounts how, through the services of Godaddy’s Domain Name Buy Service it attempted to buy the disputed domain name for $5,000 but was told that Respondent was only willing to sell the name for a minimum of $18,000. This amount, Complainant alleges, is well in excess of Respondent’s out-of-pocket expenses in registering the disputed domain name, is contrary to the Policy, and clear evidence of bad faith.”
“Respondent alleges that, in the seven years that it has operated its site at the disputed domain name, the maximum source of revenue from it has been in connection with camping gear or mobile homes.”
“”With regard to the charge of bad faith, Respondent contends that Complainant has provided no factual basis from which to conclude that it knew or should have known of either Complainant or Complainant’s trademark. The latter may have been filed before the disputed domain name was registered, but the mere filing of a trademark application provides neither any right, nor any duty, of notice and Complainant has failed to establish that Respondent knew or should have known that its domain name registration could have been in bad faith.””
With regards to Complainant alleged offer “the Respondent has no record whatsoever of making a counter-offer of $18,000 in response to the short and anonymous offer to buy the disputed domain name for $5,000 which it received from GoDaddy, and suggests that it was GoDaddy who inflated the price as an attempt to fatten its own commission.”
“Respondent….points out, at some length, that this trademark had to go through a number of hoops before being registered and that, although it was filed in 2002 it was not registered until March 2010 which is only a few months before this dispute was filed in October 2010. One can only speculate on the reasons for this delay.”
“According to Respondent, in between the filing of the trademark application and its registration it was initially suspended on account of the fact that there were two earlier and allegedly similar trademarks. However the application was eventually accepted and advertised, but it then attracted two oppositions, one of which spawned a lawsuit which went on for four years before finally being settled.”
“Respondent has been using the disputed domain name for seven years. Complainant alleges that this use is not legitimate because the disputed domain name only resolves to a click-through website which earns fees for Respondent. It is quite true that some Panels have found such use to be not bona fide but inthis particular case that is not something with which this Panel agrees.”
“The Panel believes that Respondent’s use of the disputed domain name to display links to camping goods is a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy.”
“Consequently the Panel finds that Respondent does have rights and legitimate interests in the disputed domain name, and that paragraph 4(a)(ii) has not been proved.”
“Following on from the above finding, there is strictly no need for the Panel to consider the question of bad faith but, for the record, the Panel finds no bad faith in the actions of Respondent and so paragraph 4(a)(iii) is also not proved.”
“In Sanitech Corporation v. Paton, FA 935273 (NAF April 30, 2007) it was held that paragraph 4(a)(iii) of the Policy requires bad faith registration and use, so where a respondent initially registered the disputed domain name in good faith, the panel should deny the transfer of the disputed domain name to the complainant)”
“See also It Takes 2 v. C.,J., FA 384923 (NAF February 15, 2005) where it was said:”[I]n the absence of any evidence of knowledge on the part of Respondent of Complainant, its mark or its services at the time Respondent acquired the domain name, the Panel finds Complainant has failed to establish registration in bad faith.”.
“Respondent contends that the <sleepsack.com> domain name is comprised entirely of common terms that have many meanings and that the registration and use of a domain name comprising such common terms is not necessarily done in bad faith. This is not necessarily conducive to a finding of bad faith. See Zero International Holding v. Beyonet Services., D2000-0161 (WIPO May 12, 2000) in which it was said that “Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”;
“also in Target Brands, Inc. v. Eastwind Group, FA 267475 (NAF July 9, 2004) it was held that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term)”
“also in Miller Brewing Co. v. Hong, FA 192732 (NAF December 8, 2003) the Panel found that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith.”
“As for the alleged offer by Respondent to sell the disputed domain name for $18,000 the Panel prefers to believe Respondent’s story that it simply rejected an anonymous offer through GoDaddy’s Domain Buy Service without making any counter offer. This is not therefore evidence of bad faith on the part of Respondent.”
Name Administration was of course represented by John Berryhill and as you read through the decision you will conclude like I and the panel did that it was a fine job of lawyering by Mr. Berryhill.
owen frager says
If I were ever challenged I’d want John Berryhill on my side.
When did Frank win this UDRP- it wasn’t today. It was 7 years ago when BEFORE he bought the domain he did the due diligence to see if it would pass a risk-assessment test that enabled it to be defensible. This is why he always wins.
But it occurred to me that when you are in the right as Frank was, when the UDRP comes it’s not cause for fear, but cause for celebration because its the best sales closing tool anyone with the only existing solution in the world, for multiple prospects, he could can ask for.
Bottom line, if you stay away from trouble, you’ll never get in trouble.
Anthony Hanner says
Well done, Mr. Berryhill and Mr. Schilling.
This shouldn’t have passed the smell test once it was alleged that the counter-offer was only 18k. From what I’ve read about Mr. Schilling…he would never counter-offer so low on a domain…and rightfully so with the kind of stable he has.
I hate the UDRP process. Because of the publicity brought by this nonsense complaint, Schilling has no real choice but to hold on to the name in perpetuity or sell it to complainant. The filing of the UDRP, though unsuccessful, limits Schilling’s market substantially. Granted, the trademark limits the resale market anyway, but I certainly had not heard of the Sleep Sack brand prior to this. By eliminating, or at least weakening, a future buyer’s argument that they had no reason to know of the mark, the complainant still benefits from the nonsense UDRP.
Domainers’ first priority should be to overhaul the domain dispute process. The present system is a travesty.
Then support the ICA financially who is working on UDRP reform or the Congressman who was just elected.
.Me of course says
The offer of $18k seems too childish. If that was for real, they should have bought and not waste the time and money. Now, here they go, a doggy trademark without the domain name. A good lesson for everyone in the industry.
Landon White says
I thought you said you were done preaching to the choir 🙂
Dumb Domainer says
Who cares. The name isn’t worth the money it cost to either file or defend the case. Truly a horrible domain name.