Frank Schilling settles disagreement over ChilliBeans.com.
In 2008 Name Administration (Frank Schilling’s company) lost a UDRP for the generic domain name ChilliBeans.com. It was the company’s first loss in a UDRP case, and it then sued complainant Balglow Finance in order to retain the domain name.
The two parties have settled the case. Name Administration provided the following statement to Domain Name Wire:
Name Administration Inc. (“NAI”) and Balglow Finance SA (“Balglow Finance”) are pleased to announce that they have come to a mutually beneficial agreement in regard to the domain name ChilliBeans.com and the settlement of the law-suit filed by NAI in the Cayman Islands concerning the domain name. Both parties have agreed that NAI’s use of the generic Chillibeans.com domain name violated no enforceable rights of Balglow Finance. The settlement of this dispute will see NAI transfer title of this generic name to Balglow Finance to assist it in its online efforts relating to Balglow Finance’s expansion of the “Chilli Beansâ€ brand of eyewear.
“While it’s unfortunate that this dispute necessitated a trip to the Cayman Court, we are most pleased to have resolved the matter in such a mutually beneficial wayâ€, said Frank Schilling, Managing Director for NAI. He continued, “NAI’s only interest in the domain name was as a generic term. Now that it’s been settled that NAI’s registration and use of the domain name violated no rights of Balglow Finance we are pleased to facilitate the transfer, as the domain name is beneficial in advancing the business of Balglow Fianance, and while very valuable, has less long term value to our company than Baglow Finance.â€
Schilling added some commentary on IP rights and his domain portfolio:
We’re never looking to pick fights over IP rights and have really tried hard to do the right things in the domain name business, for a very very long time, but we’ve won 17 UDRPs. That should say a lot. Large companies often want what you have and don’t want to pay for it. They try to vilify you for making money with generic domain names, and the UDRP has created an unholy intimation that holding a generic name for profit is somehow bad. Well it isn’t! Everybody owns something – and when people challenge our generic IP rights we will spend whatever it takes to make our point that anyone is free to register a generic name on a first-come first served basis.
domain guy says
strickly a domain transfer no monetary penalty or compensation?
so there was no trademark violation but a generic term was transfer to the complaintant
expanding the complainants trademark rights worldwide.
and the rights were in brazil not the us.
much to generous imo by frank.
i think a more appropriate response would have been to not use any advertising in the class of sunglasses.frank could put up a webpage not use any automated links thereby eleminating any potential infringement.
so really what happened here is a trademark filed in brazil was expanded to worldwide rights including the us.i really don’t understand why frank would do this? we need a phone interview with frank by dnw on this settlement.maybe even barrymore too for further clarification.
Brian Null says
looks like smart business by Name Administration, once again
not quite enough information for me.
M. Menius says
Obvious that Balglow Finance had no case. And this became irrefutably apparent when the proper legal recourse was pursued.
Mr. Bean says
Todaro, go read the UDRP decision and you’ll see why this settlement is such a disgrace. Balglow should’ve had this domain 2 years ago.
Steve M says
Andrew; may we all assume that “transfer” means “sold to?”
Thanks. And good going, Frank.
Andrew Allemann says
@ Steve M – I think the wording was carefully selected. I don’t want to make an assumption, but I know what my assumption would be 🙂
“Both parties have agreed that NAI’s use of the generic Chillibeans.com domain name violated no enforceable rights of Balglow Finance.”
Smart move by Frank Schilling
Should there be future UDRP’s thrown at him?
He has on paper a false decision by UDRP and keeps a good track record of being a “non squatter”
Baglow Finance came back and stabed the UDRP case in the back.
Now the next smart move would be to file a case for a reverse Hijack.
Sounds like a good result for both in the end but its a pity he had to go through all that to get there.
What’s next? PotatoSalad.com ? Frank owns a bunch of food domains.
Landon White says
As part of the legal system i am disgraced,
Travel to the Cayman Islands!…
ICANN you do not deserve NOT the 17cents for extortion protection for you provide None.
Be it known, ICANN is on the take …
ICANN needs another good, long, expensive, time-consuming lawsuit.
@Acro maybe some other company will want EggOnFace.com
earl adkins says
Thanks Frank for standing up for all of us.
Name Game says
Lets be Frank guys. The decision at the UDRP was not as grevious as many would like to make out. The primary reason can be found in the part of the decision which reads
“The Respondent has made several changes to the ChilliBeans.com landing page since the filing of the Complainant” and
“a link for “glasses” that previously was displayed immediately below the ChilliBeans.com logo has been removed. Prior to this change, Internet visitors clicking on the “glasses” link were directed to a secondary web page with advertising links to websites selling eyeglasses and sunglasses, and “related links” for eyewear, including eyeglasses and sunglasses, and contact lens.”
In short the domain name served up some infringing links. Amazing how Frank never heard of these guys but the ads on his site targeted their wares. I suppose Frank would have you believe that this was either coincidental or the doing of his upstram partner.
Yes Frank has won 17 UDRPs and thats great, I mena whats fair is fair but is the absence of losses in the udrp realm due to the fact that Frank has “tried hard to do the right things in the domain name business” or due to the fact that he knows a loser when he sees one and transfers the infringing domain name willingly prior to the initiation of any legal proceedings.
The WORLDSERIESOFPOKER.com domain name comes to mind, a trademarked domain name he once owned that now belongs to the trademark holder. When they came knocking Frank relented so as to avoid the the embarrassment that would be associated with him owning and monetizing that domain name.So while you can argue that Frank is one smart dude part of his business acumen is attributable to the fact that Frank knows when to holdem and knows when to foldem.
John Berryhill says
“glasses” is a tableware-related term. It has a dual meaning in English. I’m not sure what you drink out of at your dinner table, but you don’t wear those on your head.