Domain Name Wire

Domain Name Wire

  • Frank Schilling beats $200 billion healthcare giant Novartis in UDRP

    1. BY - Apr 25, 2014
    2. Policy & Law
    3. 16 Comments

    9 year delay in filing UDRP hurts pharma company’s claim of disruption to its business.

    ClearCareFrank Schilling has successfully defended the domain name ClearCare.com in a UDRP filed by Novartis AG.

    Novartis, which has a $200 billion market cap, offers a line of contact lens cleaning solutions under the name Clear Care.

    Schilling (through attorney John Berryhill) noted that his business involves registering expired domain names and parking them with ad links unrelated to any trademark usage. ClearCare.com was parked with links related to “care” but not contact lenses.

    This helped Schilling win the rights/legitimate interest issue.

    The doctrine of laches played a big role in the case as well. Schilling registered the domain in 2005 and Novartis just came after it in 2014. The panel noted:

    Complainant cannot credibly claim that its business has been seriously disrupted by the clearcare.com domain name or the resolving webpage, because Respondent has been using the disputed domain name for nine years prior to Complainant’s bringing this action.

    Novartis AG UDRP failure

16 Comments
  • Get ‘em Frankie…make ‘em pay!

  • This attorney is an eager beaver when it comes to searching out parking pages, and looking for a reason to file, it could be a .info, .us, he just files, and bills novartis, not a bad income stream. Congrats to protecting your asset, and giving this bottom feeder a slap in the face. Really sad they had to put money out of their pocket, and are not compensated back, I would say this is now a 6 figure name because of it. Novartis next time pay the owner a fair price, and avoid this bad press.

  • Congrats John Berryhill and Frank!

  • That was the professional approach from the start of registration. Novartis simply took advice from IP / attorneys that should be replaced. They have a “duty of care” Novartis Do Not Pay the fee.

  • The respondent’s claim that he’s in the parking business might help him defend an asking price of $800. But $80,000, what is that – 10,000 years worth of parking revenue?

    • Frank regularly sells domains for tens of thousands that most of us would sell for a few thousand.

    • John Berryhill says:

      April 25, 2014 at 1:13 pm

      I’m not sure, but I think it might be under thirty seconds or so of Novartis’ revenue. Or, if you google the words “clear”, “care” and “cornea”, it’s probably a small fraction of whatever the class action plaintiffs are going to see (well, not “see” in the literal sense after their product experience here). That, by the way, is the probable driver of Novartis’ sudden interest in an old domain name they never cared about before now.

      But your point is that after receiving an offer from an anonymous source of $5,000, your reply would be “No way, it’s only worth $800″? You sound like a man I’d like to do some business with.

      • Complainant appears to be claiming that the domain was offered for sale at $5k but that once seller suspected a big fish the price went up.

        Fair offers I tend to accept, although indeed rarely insist on a lower price.

        • John Berryhill says:

          April 25, 2014 at 4:50 pm

          That’s not what happened. The sale listing was syndicated through GoDaddy which, as they sometimes deceptively do with syndicated listings, made it appear to be an “auction”. The Complainant’s submitted an offer to Godaddy which they believed to be a “bid”. That lead was then referred to DomainNameSales. We still don’t know which of the twenty or so leads on that name was their agent. The price quoted – to various parties which had inquired – was the same. It’s a two word domain and is by no means uniquely associated with this company, so there was absolutely no reason to believe that any of the leads was associated with a party who had never expressed an interest in it for the better part of a decade.

          One of the irritating common themes in these disputes is that instead of actually presenting a claim, some “clever” attorney uses a JoeBlow@gmail.com address to request a price quote and then says “they tried to sell it to the trademark owner!” I don’t know of any trademarks owned by JoeBlow@gmail.com, and it never ceases to amaze me personally that presumably intelligent people make that sort of allegation on evidence which shows no such thing.

          I don’t profess to know what domain names are worth, but if anything was driving the value here, it is the increased competitiveness and consumer choice in the US health insurance market, now that individuals aren’t “locked in” by pre-existing conditions and can change insurers each year during open enrollment. Several of the active leads on this name seemed to suggest an interest in the insurance or healthcare market, which is a higher value sector than selling bottles of glorified hydrogen peroxide.

  • Ya gotta love the big corporation’s legal departments. I could tell a couple of good stories but they are saved for over beers.
    As far as this name goes, it’s Frank’s name. Leave him alone.

    • John Berryhill says:

      April 25, 2014 at 1:51 pm

      There’s only one way we’re all getting off this crazy planet, and no corporation ever cried at anyone’s funeral.

  • “thirty seconds or so of Novartis’ revenue” – “10,000 years worth of parking revenue”. Irrelevant personal emotion. WOW they just found fracking on my expired oil well and I almost sold it last year, Great I knew it was worth holding !!!

    • a big corp matching a product name to your .com may not greatly increase the fair value of that name. Because fair value is still only a dollar more than the second highest offer and there wouldn’t likely be any other big bidder for this name.
      But I see the point that some big corps don’t deserve much sympathy.

  • Cute addition, adding easy access to the actual finding – thank you!!

  • It appears Novartis filed 60 complaints thru Nat’l Arbit. between 2011 and 2014. They lost 4. (won 93%)
    Did not check to see how many were not disputed. 3 were for Ritalin. A few looked generic like ‘Freshlook .com’ (twice).

    DomainTools states they own approx. 3,300 domains. I wonder how many were acquired by C&D and how many were purchased on the after market?

    Novartis is definitely a cash cow for some corp. lawyers.

    Great job by JB.

  • Great job John & Frank! I would like to work with you guys soon!

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