Frank Schilling, with help of John Berryhill, successfully defend domain name.
Frank Schilling’s Name Administration has won an arbitration case brought by a trampoline company. Domain name attorney John Berryhill represented Schilling.
NAOP, LLC, which apparently manufactures trampolines under the JUMPRO brand, filed for arbitration. I can find little information about the company, and jumpro.com is in use by a company unrelated to the trampoline manufacturer.
The panel decided that the NAOP did not prove it had rights in the mark at the time the domain name was registered. It further said that there was no evidence of bad faith since Schilling could not have known about the trademark when he registered the domain. The trademark was not approved until 2006, a couple years after the domain was registered.
Berryhill requested a finding of reverse domain name hijacking, but the panel declined and explained, “Given the virtual identity between the JUMPRO mark and the domain name, the Panel accepts that Complainant honestly believed its rights were being infringed.”
Schilling is known for owning a large portfolio of non-infringing generic domain names. This is the fourth UDRP at National Arbitration Forum that Name Administration has one this year. Previous wins include Timpano.com, xoft.com, and FoodEmporium.com.
John Berryhill says
Here’s a neat challenge for you.
Go look up the trademark registration. Click on TDR, and take a look at the “specimen of use” of the claimed mark.
Now, go find a trampoline anywhere with the mark “JUMPRO” on it.
For extra fun, go find out whether an “NAOP LLC” has ever existed in the State of Connecticut.
This was one of the weirdest sets of facts ever – a non-existent entity claiming rights in a mark it has never used.
Andrew says
OK, so I shouldn’t feel stupid for not being able to find out anything on the web about this company.
And the issue with the box showing ‘jump pro’ and the trademark being for ‘jumpro’ with one ‘p’ is beyond me.
Rob Sequin says
Shame on jumpro tramp company.
jp says
Ok, I totally get that for just prinicple alone, it was worth fighting back to keep this domain, however, JumpPro.com? Realistically is this name worth the $$$ spent to defend it. I’m glad Frank & John were able to do so, because it makes an important point, however if it was my domain, I’d have a hard time justifying the legal fees to fight this one.
Kevin Ohashi says
If you just give up on UDRP and don’t fiel and lose, further companies may pursue you, I imagine that could be especially dangerous for such large portfolio holders.
Rob Sequin says
Kevin,
Right. You have to defend every one since everything is public record.
We should all be thankful that Frank does fight these with John’s help.
Every victory might just make other “TM” companies think twice about coming after one of us.
Ken says
1. Cover-It Inc. is the former owner of coveritshelters.com and jumppro.com
2. North American Outdoor Products, LLC now owns coveritshelters.com (1998-10-15)
3. North American Outdoor Products, LLC also owns jumpro.net (2008-20-6)
4. North American Outdoor Products, LLC, Cover-It Inc., and NAOP LLC are all based in West Haven, Connecticut.
5. It is a highly probability and likely that all three companies or fictitious names are one in the same. If that is the case then why didn’t the complainant mention this?
6. It appears that NAOP LLC owns multiple “brands”:
CANOPY FACTORY
CANOPY FACTORY
EQUINEDIRECT
EQUINEDIRECT
EZGOAL
EZGOAL
JUMPRO
PUCKSTOPPER
I would say that because the TM application started out as a 1(b) this specimen was a prototype, or at least the box was. It appears that it may have never gone past that phase. I don’t believe that would count as use in commerce even if they were using it for direct pre-sales to potential vendors. A product needs to be available to the general public to count as “use in commerce”. Though it would count as “first use anywhere”. To say that Jump and Pro are generic are true but used together it does not create a generic word combination that it used everyday. I have read cases where two generic words placed together can create a unique and trademarkable phrase. But, of course NAOP’s mark was for JUMPRO and they didn’t have enough real usage to prove their case on any of the three counts. I do find it odd though that the ads currently served on jumppro.com are for trampolines. I’ve never seen those two associated before in general.
I admit I don’t have much love for Berryhill but I am glad to see that he won. Why? Because a panel has finally gone back to the letter of the rule that a domain has to be “registered AND used in bad faith” not “AND/OR”, as panels in recent years have been reinterpreting that rule to lean in favor of complainants. Once one starts interpreting rules, personal beliefs and agendas start getting in the way. If it has gone the other way the ruling could have been different:
“Even if Complainant could show current bad faith use of the domain name, which is possible …” Claim Number: FA0808001220825
Ken says
I went back and took another look for usage of “JUMPRO” and “Jump Pro” (as used on the application specimen). Do a Google search for:
“jump pro” trampoline
You will find many examples of trampolines currently sold under a “Jump Pro” brand. Is this part of the same company that filed the complaint? I’m not sure. But, the fact is there is a company out there using “Jump Pro” to sell trampolines. The problem for this complainant is that it doesn’t match their claimed mark of “JUMPRO”. When two words are combined in that way for a trademark you can’t separate them, otherwise you would have to file for another mark using the new word mark combination.
1. Is there current usage of “Jump Pro” as a brand? Yes
2. Is this usage by the complainant? Unknown
3. Is JumpPro.com currently displaying ads for trampolines? Yes
4. Can this be considered bad faith use? Yes
Again, the Panel stated that it was possible to show current bad faith use of the domain name. That much is disheartening because I do believe Schilling has overall been a great ambassador for the domain industry.
Challenge met and it was fun. Thanks, Berryhill.
Steve says
That was funny 🙂
GenericGene says
Well done –
ParadiseHomes.com says
I think that is very important winning case. Actually every wining case is important to protect the domain industry.
Domain industry is today and future industry but UDRP and wrong its decisions against to domainers making this indusrty unreliable.
For example, look at these UDRP case decisions: AMedia.com transfer , Ucp.com transfer, Activejet.com transfer, Myflorida.biz transfer …and many more…
So why we are buying domains? If we lose them one day easily!
Wipo and UDRP need some new rules and regulations urgently, if they believe the future of internet: Domain industry is vital industry to improve the internet and business of future..
John Berryhill says
“To say that Jump and Pro are generic are true but used together it does not create a generic word”
I have no idea why the decision makes it seem as if that was argued, because it never was.
“North American Outdoor Products, LLC, Cover-It Inc., and NAOP LLC are all based in West Haven, Connecticut.”
There is no NAOP LLC in Connecticut. Actually, there is no North American Outdoor Products LLC – it changed its name to ODP LLC several years ago.
The Complaint was filed in the name of “NAOP LLC” because they were trying to paper over the fact that no entity has ever existed by that name, yet that is the “owner” to which the federal registration issued. They can’t fix that because the non-existent “NAOP LLC” can’t assign the registration to the new company.
Some of these are fought on principle alone, and to bring a UDRP complaint in the name of an entity which does not and has never existed, is a fraud. Another point which was worth nailing down is whether a pending ITU confers ‘rights’ against which a domain name can be considered to have been registered in bad faith.
The reason for that is there is a strategy developing on the other side involving ITU applications in order to lay a groundwork for stripping someone else of a domain name you never had.
“I admit I don’t have much love for Berryhill”
I’m wounded. I have a problem with fraud. A non-existent company managed to fool a trademark examining attorney with a specimen that doesn’t show the mark claimed in the application. They found an attorney to swear to that in the application, and then they found an attorney to swear to a UDRP complaint in the name of a “company” that never existed.
Okay, well, I’ll remain unloved, but that sort of behavior I won’t tolerate.
John Berryhill says
correction – “stripping someone else of a domain name THEY never had”
John Berryhill says
And, on those four points above, would you point out *when* use of the term began by the respective parties. We know that the date claimed in the trademark application is wrong, so it’s something of a mystery as to how you are arriving at your implicit identification of the senior user (even if we were talking about two entities in the US).
Or is your point that somehow the “current use” of Jump Pro on trampolines bears some determinative relationship to the ongoing use of a domain name since 2004?
Take a look through the extensions of time filed in the trademark application. Even after the domain name had already been registered and in use, the trademark claimant was petitioning to extend time to show use on the basis of “research and development” activities (or words to that effect).
John Berryhill says
This place needs an edit function.
I’ll wrap up by addressing this point:
“5. It is a highly probability and likely that all three companies or fictitious names are one in the same. If that is the case then why didn’t the complainant mention this?”
That was something of the shocker in researching this case. Normally, you’d make that sort of assumption, because you normally don’t expect that the attorney on the other side is trying to paper over a federal crime (i.e. 18 USC 1001 – perjury).
The complainant didn’t mention “this” (where this is some explanation involving three related companies), because your “highly probable and likely” explanation is not correct. There was never an “NAOP LLC”, and North American Outdoor Products LLC changed its name to ODP LLC years ago.
The USPTO is very specific in requiring an applicant to identify itself in accordance with its actual name. You’d expect an attorney to identify the actual name of the party bringing a UDRP complaint as well.
And, finally, here’s the kicker. Go back through the TM prosecution history and note the change of attorney. What the history suggests is that the original attorney realized that the application was screwed, and wasn’t even filed for mark which these people ultimately decided to put on the product.
So, what did they do? They changed to an attorney with different standards.
The bottom line is that “bad faith” is an equitable claim. The equities here on the claimant’s side stink to high heaven.
GenericGene says
DOMAIN THEFT – Why can someone aniciate a domain name transfer via the OpenSRS.
I received an email from OpenSRS with some one trying to transfer AutoTrimmers.com – we did not generate any transaction for this domain in any way as it is for lease and not for sale.
If someone had access to our administrators email this transfer could go undetected for some time. The domain is extremely valuable and any transaction would require proper legal documentation.
Anyone had this name try to do this Luke Smith Luke Smith –
Ken says
1. North American Outdoor Products (NAOP), LLC amended its name to ODP, LLC on Jan. 2005. It maintains its original business ID #0640004 that was filed back in 2000.
2. From decision NAOP LLC v. Name Administration Inc. (BVI):
“Respondent has raised other issues in connection with this matter, such as whether Complainant is the proper party, and whether the JUMPRO mark is protectible, since it is a combination of two generic terms.”
It was never argued because there was no need to considering the panels decision. I mentioned the words “Jump” and “Pro” as not being generic when combined because it was clear you intended to use it as a defensible argument against their claim. The fact is those two generic words, when combined, do create a unique word combination that could be trademarked.
3. Another important fact, and this is where I agree with you Berryhill, is that this company completely misrepresented who they were. That in itself could be considered fraudulent and they did this because of the original issues with their trademark application. It is surprising that the panel of three lawyers never found this out on their own. What doesn’t surprise me is that this company perpetuated this fallacy. We’ve had it happen to us.
4. The quote that you glaringly left out of your response here is the most important one I used; It comes straight from the panel itself:
“Even if Complainant could show current bad faith use of the domain name, which is possible …”
The panel is clearly stating that it is possible to show current Bad Faith usage on “JumpPro.com” when combined with ads for trampolines. Why? Because those two words, when combined, are not generic as it relates to trampolines or anything else for that matter. At this point we don’t need to know the who; just that there is “a” company out there who is selling trampolines under a “Jump Pro” brand. A PPC based site displaying trampoline ads based on “Jump Pro” is bad faith.
This is where the panel’s use of “registered and used in bad faith” instead of “and/or” was so important. The complainant left the door open for the panel when they specifically asked for it in that way.
John Berryhill says
“it was clear you intended to use it as a defensible argument against their claim.”
Ken, I wrote the Response. I know what was in it. Send me your email address. If you find that in there on any point directed to UDRP condition 1 (identity or confusing similarity), then I’ll pay you $50.
Nowhere in the Response or the supplement did I claim, argue, or imply that it was a generic term. Nowhere.
One of my pet peeves about UDRP decisions is that, for reasons I cannot discern, the facts and arguments are very frequently presented inaccurately, and in significant ways.
And, despite your use of parenthesis concerning an LLC which changed its name to something else quite some time ago, there has never been an “NAOP LLC”.
http://tess2.uspto.gov/tmdb/tmep/0800.htm#_T80302c
803.02(c) Corporation and Association
If the applicant is a corporation, the official corporate name must be set out as the applicant’s name.
“At this point we don’t need to know the who; just that there is “a” company out there who is selling trampolines under a “Jump Pro” brand.”
You also need to know the WHEN and the WHERE. I don’t see at all why you are concluding this outfit is the senior user of the term. Senior users have the right to continue use.
Again, and if you want to consider the factual accuracy of the decision – take a look at when the panel states the trademark applicant submitted its specimen to the USPTO. Then, take a look at the actual USPTO record.
At the time the domain name was registered, the trademark applicant was swearing they hadn’t used the mark yet and needed more time to pursue development and manufacturing activities.
John Berryhill says
And, by the way, my name is John, not “Berryhill”. If you win the $50, will you also love me?
Ken says
What an anemic attempt at diversion. Yes, I know exactly who you are and no, I don’t take bribes. I also know that you will not address the panel’s statement:
“
Ken says
““Even if Complainant could show current bad faith use of the domain name, which is possible …”
Ken says
I doesn’t matter if it was directed to UDRP condition 1. The fact is:
““Respondent has raised OTHER issues in connection with this matter, such as whether Complainant is the proper party, and whether the JUMPRO mark is protectible, since it is a combination of TWO GENERIC TERMS.”
That’s quoted directly from the decision. I’m not pulling it out of thin air Berryhill. You raise the banner repeatedly on the first part but you intentionally ignore the latter. Or, did the THREE panel lawyers inaccurately present your statement their too? Everyone else is to blame except for you, is that it …
“Even if Complainant could show current bad faith use of the domain name, WHICH IS POSSIBLE …”
1. Did North American Outdoor Products, LLC ever exist? Yes
2. Does North American Outdoor Products, LLC still exist? They amended their name to ODP, LLC on Jan. 2005. It maintains its original business ID #0640004 that was filed back in 2000.
3. Is NAOP an acronym for North American Outdoor Products? Yes
4. Is NAOP, LLC a valid company name as it relates to this matter? No
5. Did NAOP, LLC misrepresent who they really were? Yes
6. Is there a company out there selling a Jump Pro brand of trampolines that would have an arguable claim against JumpPro.com? Yes
Is that clear enough now? Think of a new diversion.
You are claiming that the current use of JumpPro.com as a PPC site justifies SENIOR USAGE. That’s laughable. I challenge you Berryhill to file a trademark application with the USPTO and claim that (PPC) as USAGE IN COMMERCE. It would certainly count as usage anywhere but it doesn’t qualify as a senior user. Where are the bonafide goods or services. All that’s offered there are links to the goods or services of others. You don’t get to claim their senior usage (in commerce) as your own simply because you link to it.
Tell me, how is “Jump Pro” generic as it relates to trampolines? For that matter, how is it generic to anything?