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.
Frank should appeal if there is an appeal process. I guess chillibeans.com.br was registered before chillibeans.com?
Also, they actually submitted Alexa data and the panel accepted it.
Alexa is totally open to manipulation because it only takes data from people who have the Alexa toolbar installed. So, chillibeans.com.br can get all their friends, family and customers to download the alexa toolbar then go to chillibeans.com and “prove” that most users come from Brazil.
The case should be thrown out for that.
Am I wrong?
“After all, here’s what this case is really about: Chilli Beans is moving into the U.S. and wants the .com domain name.”
Sounds like grounds for reverse domain name hijacking. They may not be aware of this, which would make them “willfully blind” to their nefarious activity.
So what’s Frank Schilling’s record now?
generic word, generic phrase, not fair! hopefully he will get it back.
Generic domain owners must pay attention to their ads, or forward questionable ones to their other developed sites so there is no chance of losing it.
cheers.
The phrase maybe generic, but the site was being utilized in a manor that it profited by a trademark holders term & goods/services.
Even if you forward a domain to another developed site the case could still go against you. What legitimate reason do you have for holding the domain if the site it is forwarded too has nothing to do with the domain? Nothing.
Remember the legitimate interest is one of the criteria.
Also to ‘trademark’ Frank/NameAdmin is now 10:1 in WIPO cases.
That sucks big time, I’m pretty sure Google has changed things recently when it comes to what/how ads are served up.
6 months ago you always got ads related to the keywords you chose, not any more, sometimes the ads appear to be just based on the actual domain (even if the keywords are set to something completely different)
This Google change will definetly land far more domainers in trouble IMHO with WIPO
Generic domain or not it will come down to what ads are served and that is moving out of our control.
I hope Frank appeals this one because its not his fault.
Gazzip, How is it not Franks fault? He is knowingly running ads served by an automated system. The blame is held on the domain holder for having such a system in place as well as the ad publisher (Google, MSN, etc..).
Hold on a minute folks; this is not what it seems at first glance.
Because of the way trademark laws work (assuming similar in Brazil to US), this was a special situation, and NOT a case of someone being able to grab a true generic.
Their “misspelled” use in their company/ product name of a double “L” sets this domain apart (and may very well have been why the Brazilian trademark office was willing to grant them their trademark on “Chilli Beans” to begin with).
Even if Frank had won in this forum, they likely would have been given the name by a Brazilian court anyway.
ps As far as I know, Frank still uses Yahoo for his ad feed, not Google.
SteveM, I don’t believe a Brazilian court has a precedence to make a US or even a UK based registrar to turn over a domain. The dispute as far as I know would need to be filed in the US, since Verisign is a US based business that ‘regulates’ the .com nic. Correct me if I’m wrong.
Runing PPC ads on a domain by an automated system is’nt illegal as far as I know.
The name is generic, “chili beans” as in the food. If the publisher/Google serves up ads not related to Franks domain & chosen keywords then surely they are to blame…and not Frank
We should receive ads for our chosen keywords, not something totally different.
On one of my generic domains the keywords are set to sheepskin – I always get Skincare ads – WTH !!!
Like I said, Google has changed something recently and they should be held responsible for serving up crappy results….but once again its the domainer that gets shafted…like usual.
Gazzip, I understand what you are saying, but it’s the nature of the beast of automated ad publishing systems. Their are other ad publishing systems that require your approval of ads, but in the case of Frank I’m sure that wouldn’t be cost effective for him.
So its the nature of the beast to be totally incompetant, That should not excuse Google/Yahoo etc IMO
They earned a healthy cut of PPC income and what happens to them…Nothing
Just like the parking companies or the drop companies making money on selling TM names.
…as usual the domainer get it in the ass from some idiot in a suit.
..it’s crazy world 🙂
Gazzip, Not true. If I remember correctly Google, Yahoo and all the other parking service providers have been in lawsuits over these issues.. Look into it they have had lawsuits against them!
ok….occasionally they do 🙂
just because you haven’t had the time to develop a domain out and in the meantime some parking company or search engine feeds trademarked ads to it should not be grounds for losing the domain. Stop doing that and it should be ok.
If in fact huge amounts of cash were made from the domain intentionally ripping off traffic that is another matter. pay the money back, give up the domain, move on.
I did not notice the double L that could have contributed to the problem. still very generic combo, put chili ads on it and there should be no problem.
registrars could eliminate many of these problems if they policed their own sales and sales listings. sedo is selling payal.com right now !!!! outrageous!! a**holes registrar’s making money from domains like this will ruin it for everyone. letting a squatter advertise and sell that domain on their system puts them in the ditch with the rats…….. and us along with them……
no good.
concerned, Remember this, if you have a legitimate reason to hold a domain and have been holding the domain before the trademark was filed the only way a company could get a case against you is if you are infringing on their goods or services that the trademark is in.
Payal.com could easily be an un-infringing name if they did not publish paypal and payment processing ads, but they do so that domain will most likely get UDRP’d by PayPal. As someone has stated on another blog that Payal in hindi is anklet, so if they had anklet advertisements on the domain it would not be infringing on PayPals trademark.
would investment in a generic domain name not be a legitimate reason, investing in generic words, generic domain name = commodity.
it is in every other field/market and value is assigned according to market conditions.
just because i can’t renovate all of my apartment units right now, doesn’t mean I shouldn’t get to keep them.
whoever is bidding 8+k for payal isn’t doing it to sell anklet’s.
chillibeans should just be able to stop running the ads and if he made any real cash, donate it to this charity.
http://www.laptopgiving.org/en/explore.php
all of us should send a laptop to some kid somewhere, it’s only $200. just noticed the ad. 🙂
cheers.
Bad decision but really the odds were stacked against him… Parking “questionable” domains such as this one is NOT smart.
Tip: if you have a domain that is getting a lot of traffic and decent revenue but you are not sure why, and good revenue at that, you better do some investigative work and look into what is actually happening. A little due diligence would of gone a long way as Franky could of easily blocked those keywords from ever displaying or setting up a “hardcored” version of the template geared towards foods and nothing else.
Even being generic this days, is questionable… Your domain, and lander too… Ouch!
You win some… You lose some — can’t get em all. It’s all good.
Mike
Another vote here that this was a poor WIPO decision. I don’t know Frank Shilling, but I’ll bet $20 he was thinking of the food when he acquired the name and not some relative unknown brand of sunglasses. Ask 1000 people what they think when you say “chilli beans”, and 999 of them will say it’s one of their favorite foods. I understand that Frank is very focused on protectable generics so his intentions are best defined by his past actions rather than the plaintiff’s self-serving spin.
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.
A couple comments here:
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.
Wake up everyone – and look at the real facts. It’s about time Frank lost. The sole reason he won every UDRP until now is that John Berryhill was “involved”.
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).
@ Open eyes – OK I have to admit you made me look…too bad all of the records at WIPO and NAF show that Berryhill wasn’t a panelist. He’s represented Schilling since basically the beginning. And the redirect patent you talk about is about fixing typos in the TLD, not the domain. Most likely as a way to stop people form hijacking tlds. Berryhill was Schillings’ attorney on the case.
Hello Everyone
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.
KingOfCartoons,
If you have had any information or ‘used’ the domain in commerce what so ever you could file a petition on their trademark. They don’t have the legal right to the name if you had the domain before the name was trademarked, but that doesn’t mean they wont try to get it..
“Frank’s early wins were one’s where John was a PANELIST”
LOL, I just noticed this comment.
I was a UDRP Panelist? I’m sure that is news to the UDRP providers, since I have never been a UDRP panelist.
It is a problem with generic domain keywords. That is why I register three word generic domain names. They’re usually not a problem but can be so I found out.