[...] be confused with the trademark holder will allow you to avoid issues but there is no guarantee. Frank Schilling’s ChilliBeans.com case recently shows that issues can still arise and in this case the domain was [...]

My apologies in advance if this is a deviation from the current conversation but I’m hoping for some insight/guidance as I’m a bit of neophyte when it comes to the domain game. Would you mind shedding some light on a current situation I’ve encountered? I registered a seemingly random domain name that I wanted to save for a retirement business 20 years from now. I’ve done nothing with the domain and I was contacted recently by a small business owner who happens to be in the process of Trademarking the exact phrase I used in my domain name. They’ve asked if I wanted to sell the domain name and indicated it would be unusable by me if I held onto it. After doing some reading on ACPA it appears that I could be considered as having acted in “bad faith”, by simply naming a price for which this individual could purchase the domain, (which I have not yet done). But it seems like even if I do nothing this individual could still come after me for ownership of the domain and could potentially exact damages. Has anyone encountered a situation like this – where a domain was regsitered, not used and subsequently was trademarked by a 3rd party? Thanks in advance for any guidance.

Research BOTH the UDRP arbitration bodies and see that Frank’s early wins were one’s where John was a PANELIST. Isn’t that odd – not. But who knew about these two (domainers) back in the day. Now we would say CONFLICT OF INTEREST.

Then on his later UDRP’s John represented Frank. At the time John started representing Frank – John no longer was a panelist available for arbitration. I guess it was more profitable to work ABOVE the table than UNDER the table with Frank.

Oh yeah – as was reported by DNJournal a while back, and a USPTO search will prove John and Frank teamed up years back to file a patent for re-directing typo TLDs.

Can the TEAMWORK be any more obvious.

What does not show up in the Domainer press is that Frank and John stand no ground in Federal Courts fighting real Trademark violations. Unfortunately for them – federal trademark law will lose them a case every time, and the costs of losing include paying the complainants legal fees. So when the large multinationals bring on the big gun legal firms – there is no match, Frank and John are wise to concede (and keep it on the down low).

1. There is no appeals process within UDRP. However, you can file a lawsuit within 10 days to block the transfer.

2. “Chilli” isn’t a unique branding version of the word Chili as someone commented. I thought it was at first, but it turns out it’s just a less common spelling of the word chili. The panel accepted that it was just a different spelling.

I’m guessing the panelists had their predilections in favor of any company or any TM. John Berryhill doesn’t seem the type to rollover either so my guess is they’ll win on superior logic and persistence. And this will be a precedent setting case.