Complainant failed to disclose prior negotiations.
With the help of attorney John Berryhill, Frank Schilling has successfully defended his three letter domain name DKY.com in a UDRP. And, even though Berryhill didn’t ask for a finding of reverse domain name hijacking, the panel rightfully determined the complainant to have filed the case in abuse of the policy.
The complainant was Dumankaya Yapi Malzemeleri San. Ve Tic. A.S of Istanbul, Turkey, represented by AYDIN & AYDIN Law Firm, Turkey. It started using the name DKY around 2012, well after Schilling registered the domain name.
It then tried to buy the domain name through DomainNameSales. The company never mentioned trademark rights when negotiating. When the broker informed the complainant of other offers on the domain name, it responded that it was “happy” to have the domain name owner sell it to someone else for a higher price.
Unable to acquire the domain name at the price it wanted, the complainant filed a UDRP. This is a classic “Plan B” reverse domain name hijacking case.
Conveniently, the complainant also failed to disclose its negotiations in its UDRP filing.
Although Berryhill didn’t ask for a finding of RDNH, the panel noted it had a duty to consider it if warranted. And it was clearly warranted. The panel wrote:
[T]o cap it all the Complainant made no mention whatever of its numerous failed attempts to acquire the Disputed Domain Name through a domain name broker for substantial sums of money. This was a line of email correspondence in which the Complainant ultimately expressed itself “happy” that the Disputed Domain Name should be sold to a third party for a sum in excess of the substantial sums that the Complainant had been offering. In none of that correspondence did the Complainant assert that it had rights to the Disputed Domain Name.
That undisclosed email correspondence, brought to the Panel’s attention by the Respondent, demonstrates that the Complainant’s interest in acquiring the Disputed Domain Name only arose following its acquisition of its registered trade mark rights and that it appreciated that in order to acquire the Disputed Domain Name from the owner it would necessarily have to pay a substantial sum. The Complainant knew that correspondence was fatal to its case and the Panel can only conclude that its failure to disclose it was an attempt to deceive the Panel.
This is one reason you should retain a copy of all correspondence about your domain names. Personally, after I receive a “suspicious” phone call, I also email a copy of the details of the call to myself to keep, just in case.
C.S. Watch says
An open thank you to Frank Schilling. Your legal outlay here benefits many, benefits our own firm, benefits individuals and mom-n-pops who will be less likely to have their assets stolen, and we appreciate it very much.
Congratulations to John Berryhill, and thank you to the following panelists for their application of the clear language to the facts, and their awareness that the directive is “shall find RDNH.” The Policy serves both sides, and we need it. Every unbiased and ethical application of it keeps the UDRP viable and keeps domain names out of the courts.
Swinson, John (Presiding)
Please be upstanding for three diligent persons.
I sold a domain this year for $135k that Berryhill once defended. He da man!
What is it with Turkish companies always trying to steal generic domain names? They do it more per capita than any other country in the world.
Dont these companies get punished with huge fines or payment of lawyers fees on both ends?
Ramiro Canales says
Congrats to John and Frank! Using the administrative complaint process to avoid paying for a domain name is a clear example of bad faith and abuse. Evidence matters in court and in a UDRP proceeding.
John Berryhill says
It’s the first law firm I’ve seen which, from the pictures anyway, apparently employs a team of identical triplets:
Andrew Allemann says
The triplets even do their hair the same way.