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Frank Schilling and John Berryhill team up to get RDNH decision

Company files dispute for UDRP in bad faith.

Frank Schilling, with the help of attorney John Berryhill, has convinced a UDRP panel that AINS, INC is guilty of reverse domain name hijacking in a dispute over eCase.com.

AINS, Inc has a trademark for “ecase” for its software for workflow and case management. It claimed a first use in commerce date of 2009 on its trademark application.

Schilling acquired the domain name eCase.com in 2002, so the case had no chance of succeeding.

So AINS’ attorney Janice W. Housey of Symbus Law Group, LLC claimed that each time the domain was renewed the domain was a “renewal in bad faith”. It’s ridiculous, but she made another mistake that made it even more troublesome: she neglected to show that the domain was renewed after AINS got its trademark rights.

Making matters worse, it appears that an employee of AINS sent a misleading communication to Schilling in an effort to buy the domain. According to the case, AINS’ Director of Business Development and Vice President of Sales sent an inquiry that read:

“Due to today’s economy, I am starting a home business. I am interested in your domain name as it is a good fit for services I want to provide, and am able to propose $1,500 for the rights to the name. I can be reached via my home email . . .”

Berryhill noted that this is “a willfully false communication by interstate or international electronic means originating in the United States, for the purpose of obtaining a thing of value on false pretenses, i.e. “wire fraud” under the relevant federal criminal statute:18 USC § 1343.”.

It didn’t help that the attorney also sent a couple inquiries to Schilling’s company without identifying herself.

The three person panel found against AINS and that AINS was guilty of filing its case under the policy in bad faith, i.e. reverse domain name hijacking.

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  1. .whatever says

    The wire fraud thing sounds good, but there is virtually no chance that would be strong enough to support a criminal charge. It is more of a negotiating tactic than anything.

    That said, the company and lawyer who filed the UDRP should be ridiculed for their blatant attempt to steal Frank’s domain name.

  2. RK says

    Great win for John and Frank!

    Few questions:

    1. After you win, can you sue the complainant to recover your expenses fighting udrp? If yes, can you sue non-USA complainants in USA?

    2. Cna you sue the complainant under ACPA if they are found guilty of reverse domain name hijacking?

    Thanks.

  3. John says

    The email wire fraud is interesting. I have found end users often use a yahoo, gmail, hotmail or non corporate email address. It’s as if they feel they are entitled to a name for a very low price and think of those that own the “property” as not being worthy.
    They like to play games and waste time rather than be honest up front and start negotiating in good faith.

  4. Jim says

    “They like to play games and waste time rather than be honest up front and start negotiating in good faith.”

    On the other side, once a domainer sees a company is interested in the name the price tag just went up fivefold.

  5. SF says

    Congrats to John!

    However: Is there any “Real Punishment” for those found guilty of reverse reverse domain name hijacking?

    If not, there damn sure should be.

  6. John says

    @Jim maybe. maybe not.
    In this case as countless others, the company could have come up with another name.
    Corps often do it backwards by spending tons of money and time on naming products without taking the most important step first and seeing if a name is available.
    There are a lot of .com names available that do not have trademarks on them.
    In this case, the name was taken and when it was acquired a TM did not exist on the term for any industry.
    So, one needs to see what it costs first and compare it to going with another name that is either available or costs less in the aftermarket.
    Not the other way around and just name it, spend money on it, file for a TM and then try to go and muscle it away from the owner.
    Now if they want the name I imagine it is going to cost an enormous amount of money.

  7. DotCom says

    Great job to 2 great guys in the space. If only RDHJ actually meant those guilty had to pay a $10K fine for Mr. Berryhill’s legal fees.

    Just yesterday some generic homes company tried harassing me, and threatening to sue if I don’t give them “their domain” because they have a TM.

    Most of these IP lawyers are the biggest scum to walk the earth. Not only are they a parasite to the companies that employ them, but they actually think they should get awarded for trolling legitimate business owners.

    It’s time for UDRP to start recognizing there is more bad faith filings and the FEES need to be increased SEVERELY.

  8. Dave Zan says

    Personally, John, your client ought to sue AINS for this. I realize it seems like out of spite or revenge, but that sort of “behavior” shouldn’t necessarily be tolerated.

    Of course, that’s up to Schilling, especially if he wants to focus on more important things than that. Best wishes to you both.

  9. Lda says

    > However: Is there any “Real Punishment”
    > for those found guilty of reverse reverse
    > domain name hijacking?

    No obvious financial compensation for the cost of having to defend your asset(s).

    HOWEVER, the corporation declared “… domain hijackers” may/will in perpetuity have that finding appear on every web search of their company name.

    A factor they should think about before launching outrageous speculative claims.

  10. John says

    Frank should take the time to sue them every possible way in order to send a message that it’s not ok to just file a TM on a name that someone already owns and then try to sue them for it. The media is always portraying domain owners as cybersquatters, but the truth is many times large corps have no respect for property owners and will do anything to obtain a name. Hopefully, Frank will take the time to make positive change occur for the industry here.

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