Schilling’s company comes down on wrong end of ChilliBeans.com decision.
Frank Schilling’s Name Administration has lost its first UDRP decision, spoiling a perfect record of success (according to searches at National Arbitration Forum and WIPO).
Schilling, teamed up with attorney John Berryhill as usual, failed to convince a three person WIPO panel that its use of the domain name ChilliBeans.com was generic. The complainant is a company selling sunglasses under the “Chilli Beans” brand, mostly in Brazil.
Based on his record, you can have no doubt that Schilling registered the domain name with the generic term in mind. But at some point in time links related to glasses started popping up on the landing page. Most of the page was about the generic term chilli beans (more commonly spelled “chili”), but apparently there were a limited number of links related to glasses.
The complainant brought up the issue of willful blindess, as described by the panel:
There are circumstances, however, where an unwavering adherence to conventional wisdom may unduly and unnecessarily frustrate the fundamental purposes of the Policy. This is clearly the teaching of Panel decisions holding that that those who register domain names in large numbers for targeted advertising through the use of automated programs and processes cannot be willfully blind to the possibility that the names they are registering will infringe or violate third-party trademark rights.
Essentially, here’s what happened:
1. Schilling registered what he believes to be a generic keyword domain name
2. The domain is parked, and automated programs populate it with ads related to chilli beans as a food
3. Over time, some ads that may be construed as relating to the trademark show up
4. The trademark owner files UDRP and gets the domain name
Incidentally, Chilli Beans uses the domain chillibeans.com.br, so it’s no surprise that many people ended up at chillibeans.com. The complainants used Alexa data to show that 75% of visitors to the domain name were from Brazil. It also showed a Google search that its domain name is first in Google for the term “Chilli Beans”. This must be in Brazil only, because a search I just ran shows it in the #5 spot.
You can also infer from reading the decision that, after Schilling removed all links related to the trademark, the complainants then visited the parked page and did a search for a trademark related term to bring up a page of “infringing” links. You can do this on just about any domain. [John, if you read this please confirm if this is the case.]
This is a case of finding a “gotcha” and could really happen to anyone. Although it’s outside the scope of the policy, it would seem that in a case where someone has such a solid record of avoiding trademarked domains, and something small happens to potentially infringe, that changing the domain’s content to be non-infringing should be a fair resolution.
After all, here’s what this case is really about: Chilli Beans is moving into the U.S. and wants the .com domain name.