UDRP panel ordered generic domain name to be transferred to Australian company.
Mrs Jello LLC, a company formed by the late Igal Lichtman, has filed a lawsuit to block the transfer of Camilla.com after an adverse UDRP decision.
Camilla Australia Pty Ltd tried to buy the domain name for AUS $50,000 to upgrade its domain Camilla.com.au. When it was rebuffed by Mrs Jello, it decided to file a UDRP. Mrs Jello had purchased the domain name for $16,100.
Shockingly, a three member UDRP panel found in favor of Camilla Australia Pty, despite the domain being generic and Camilla only receiving trademarks in the name after Mrs Jello acquired Camilla.com.
In the lawsuit, Mrs Jello seeks declaratory judgment that its registration and use of the domain name is not unlawful, and is seeking damages for reverse domain name hijacking. Filing the lawsuit suspends the UDRP order to transfer the domain name.
The suit was filed in U.S. District Court in New Jersey. Although Camilla Australia is an Australian company, it agreed to jurisdiction in New Jersey when it filed its UDRP.
This is good news. Someone I know also took a Court action when they lost a UDRP. They lost at the lower Court but then won at the Appeal Court. Interesting thing is that in Germany the domain CANNOT be transferred to the Complainant even if they win the Court proceedings, they can ONLY get the domain deleted. Another thing he discovered. The Jurisdictional undertakings given by the Complainant are as good as worthless !!. What I would like to know is if anyone sees any causes of action in a failure to abide by the Jurisdiction undertaking when issuing the UDRP , and who against ?.
It seems to me that a disproportionate number of really, really, (really!) horrible decisions have been associated with arbitrator M. Scott Donahey. In my honest opinion, his perverted logic is warped and he is a travesty to justice and should not be allowed to continue in that capacity. After much independent research, I have found several of his WIPO decisions to be bursting with flawed logic, bad judgment and poor conclusions, causing numerous domains to be wrongly transferred as a result. I firmly believe the guy is a well-meaning menace to society and is an embarrassment to WIPO, his fellow arbitrators and the overall legal profession. I sincerely pray that Mrs. Jello wins and that M. Scott Donahey is removed as an arbitrator expeditiously before he can cause more damage. That is my Christmas prayer for 2016. If granted, the world will be a much better place.
The UDRP ruling was biased and could potentially harm domain owners if the decision is not disputed and totally disregarded from being used in future UDRP rulings. This is clearly a case of domain theft and RDNH.
Wishing Mrs Jello success in the lawsuit.
Good to see the owners standing up for their rights.
Glad to see the owners standing up against this wrong decision. If they can go the distance, justice will surely prevail.
Go Mrs Jello LLC.
Friendly feedback:
“Pty Ltd” is a company insignia, like “LLC” or “Inc” – “Proprietary Limited” (private), as distinct to “Ltd” (public), ie Pty is an extension and does not for part of the given company name.
Merry Christmas; thanks of another year of excellent coverage.
Good to hear they decided to take action 🙂
Highly supported. She has to fight back and from what I am seeing, she is going to win this and the end user will regret ever playing such dubious game in the first place.
The judges had been BRIBED… take that from me.
The decision imo was not wrong the forum was. All they will have to do is dispute it in another forum. It seems to be an undisputed fact ads were listed, owner asked to remove them, didn’t and here we are. Wrong forum not a shocker of a decision.
If ads were shown and not removed, that is a problem.
Whoever was serving those ads should be responsible as well. Moral of story. NEVER PPC YOUR PREMIUMS, EVER.
All the best!!!!!
Many domains have been saved in UDRP because the owners parked them. If you park a domain name with ads related to the name’s meaning, that helps show rights or legitimate interests.
@Andrew, no doubt names that have been parked have been saved, displaying infringing ads even. However in a situation where the owner was first warned it may not be a case where sympathy is given. The fact sympathy is ever given to “oh it wasn’t me it was our tech guy or the parking company ” is amazing to me as it is.
I would say at best a coin flip and yes parking premium names, risky.
@thelegendaryjp,
Why does it amaze you that we’d be sympathetic?
As you know, PPC ads are not selected by the domain owner, not even by the parking company, but by non-human algorithms designed by upstream ad providers like Google.
And, as you know, ad displays are tailored to match the interests and past browsing activity of the person seeing them. Naturally a given company will be interested in itself; so the ad displays are biased to serve up their own PPC ads.
So PPC ads on a parked domain indicate nothing, nada, zilch, zero about bad faith. They are not an expression of the domain owner’s intent.
Your assumption that the domain owner received and ignored a warning from the company may be false. Ignoring even a misguided cease-and-desist letter would be unadvisable; so I doubt any such letter was received. If sent, it may have been directed to the wrong person (say, the registrar) or gone astray.
At most, we know that the domain owner permitted the name servers to be set up to display PPC ads. While you may consider that risky, it’s a normal thing to do. Especially when handling a large portfolio, domains are managed through bulk settings. Giving individual domains individual attention isn’t practicable – not for the majority. Contested domains might be handled separately, but it’s certainly understandable that they might wind up bundled with the rest. Domain management tools are clunky and error prone.
Honestly, I have little sympathy for a company that is paying per click to appear in search results for “Camilla” but screams bloody murder if their ad appears at Camilla.com. What’s the difference? Many companies – thinking rationally – would choose to show their ad in both places, given the relevance of the navigational term.
After all, numerous brands use the name “Camilla”. Would this 1 company – which is already paying to advertise alongside the others – want to let all the rival Camillas appear in PPC ads at Camilla.com while it alone is absent? That would seem to contradict their own intention – i.e. to advertise prominently in similar contexts.
Who are we kidding? This Australian company had attempted to purchase the domain Camilla.com. Their offer wasn’t accepted; so they’ve abused the UDRP process, using the PPC ads as a pretext. PPC ads aren’t the issue. Procuring a domain they coveted – that’s the motivation, clear as day. They failed at negotiation; so they went to coercion.
Really, JP, I understand that you want to make a point about the risks of parking and the advisability of removing infringing ads. But in denying sympathy to the domain owner in this case, aren’t you encouraging abuse of the UDRP process? Let’s not pretend this Australian company was an aggrieved party. They felt entitled to take something which didn’t rightfully belonged to them. So I think our sympathy deserves to be on the other side of the balance.
I don’t believe Mrs Jello was ever warned by the complainant.
The problem with ppc is there is hardly any $$ and none of the companies feeding the ads are held responsible for those ads showing up on your.generic name. Even when they try and filter the ads trademarks slip through. Ask ANY parking company if they will defend you in an udrp filed based on an ad fed from them. I have never in over 15 years heard of any defending a client for an ad they fed.
Safest move put up a wordpress site relating to the generic meaning and offer direct ad placement to potential advertisers and a for sale sign for the domain.
Setup email for the name and you are definitely using it for a legitimate reason. With all premiums rising protecting them has never been more important.
Happy Holidays and All the Best for 2016!! Fun times!!
@thelegendaryjp
I fully understand how you might see your position as righteous, but your position is not that of Federal law. Here is an illustration why:
Imagine that Bob is an entrepreneur and he produces child car seats. Bob sells those seats in the US. In the US, taxpayers pay to have lawmakers carefully frame laws for the greater good of the voting, taxpaying citizenry, and they pay to have those laws upheld in court. The tax coffers are not to be drained to prop Bob up. That does not serve the citizenry. It is up to Bob to produce a quality child car seat, and to thereby succeed in the free market based on the excellence of his product.
So how does trademark law come into play? The purpose of trademark law is to “reduce consumer search costs.”
http://chicagounbound.uchicago.edu/cgi/viewcontent.cgi?article=2541&context=journal_articles.
“Reduce consumer search costs” means, “I am looking for a specific child car seat, the one that I heard is selling well, the one my friend said he owns and found to be safe, the one that will not send little Timmy sailing over the dashboard. And I do not want to be tricked.” That’s why the legal standard in trademark law is “likelihood of confusion.” (A list of outgoing text links in blue Arial font = not confusing. A retail site with logos and credit card purchase of counterfeit child car seats = confusing.)
Trademark law exists to serve the greater good of the citizenry. It does not exist to serve corporations in trampling any and all comers and gobbling up visibility at the expense of a healthy consumer economy. (Nor at the expense of websurfers, unrelated entrepreneurs, nor, um, the nascent global internet economy.)
We have framed our laws such that we do not foot the bill to help force Bob’s sub-par child car seats onto everyone’s screen. Why would we, when the inevitable result of such lawmaking would be more Timmies sailing over the dash. (Heads up, Timmy!)
I submit, in a genial tone, that your position is called “anti-competitive special interest trademark misuse.” And I vigorously refuse to have my tax dollars stolen to pay for it.
@Joseph, you may have read my reply wrong, I am referring to the sympathy given by the panel not us. I would never deny anyone sympathy.
@C.S. I have to admit I am a bit confused by your example.
@Andrew, are you saying you don’t believe they were warned, was that a lie then? I clearly recall reading they were asked to remove them first. Even that to me is amazing.
Let’s face it, there is no ignorance plea here especially by the people who manage that portfolio and if their is a genuine plea of ignorance god help them because that is scary…the old sorry wasn’t me it was the parking company act is getting old. I am all for a domainer but I do not lie to myself it does no one any real good to pretend.
@thelegendaryp
The decision notes “The fact that the Respondent has taken no efforts, once the Complainant put it on notice of its trademark rights, to remove the links to the Complainant’s products”
I believe this refers merely to the complainant having filed for trademarks, not directly communicating with Mrs Jello LLC.
@Andrew, that would be an important thing to know. Was it as you think or did they truly give them a chance and prove rights first? I mean if I read someone put someone else on notice to remove links I take that for what it is.
If they can show or we can see that in fact they were asked before a filing then what? Even if the domain holder were to say they felt the rights were not there and they did not need to comply would you still risk the link being shown on your $50k+++ name for the sake of a handful of coins in ppc.
I recall a bike ride I took with my father when I was about 12 years old. Both on bikes we came to a cross walk and looked both ways, my father proceeds and I stop as I believe the car coming would not stop in time. Well my father made it across barely and once I made my way across after letting the car pass I was yelled at. He said “what’s wrong with you once you step out and the right of way is yours, it would be his fault if he hit you!”. I was only 12 but even then the absolute stupidity of what he just said hit me and I stood there blank faced. There are times in life where even when we believe we are in the right it is not worth fighting for (risk).
If some loon said he felt his link on my ppc page was infringing on his “mark” and my $50k+++ name was on the line or he’d file a dispute it wouldn’t matter to me if I won a moral victory, the link would come down. If they proceeded to file after that so be it, gloves are on but you just let a penny hold up dollars for nothing other than being “right”.
In UDRP, being “put on notice of rights” generally means there was a trademark filing. Maybe someone like Berryhill can chime in, but that’s what I believe the context is here. If Camilla Australia had actually asked links to be taken down or sent a C&D and Mrs Jello didn’t respond, I would expect that to be explicitly stated in the UDRP decision.
@Andrew, I see, well it would seem my case so to speak would hinge on if they actually notified them and were ignored or not. If they showed bad faith even if that was not the case comes down to time lines and the law.
@thelegendaryjp,
Yes, I misread that.
Can’t wait to read this one over in full. Was an insane decision to begin.
That’s a BS decision. I hope the owner fights against it hard and gets his fair justice.
The case appears to have had a happy ending for Mrs Jello LLC:
#18: Filed: 2016-08-01
Order
ORDER Granting Joint application of Parties Dismissing UDRP Decision; that the relief sought mutually and jointly by the plaintiff and the defendant is granted to the extent that it is declared and adjudged that: The UDRP Decision ordering the transfer of the CAMILLA.COM domain name to the Defendant is vacated in its entirety. Signed by Magistrate Judge Joseph A. Dickson on 8/1/2016. (ld, ) (Entered: 08/01/2016)
Document for Docket Entry 19 in MRS. JELLO, LLC v. CAMILLA AUSTRALIA PTY LTD
Court: D.N.J. | Civil Action #: 2:15-cv-08753-ES-JAD | Docket: 19
Order
ORDER DISMISSING CASE as settled as to all claims against all parties without costs and without prejudice with the right, upon good cause shown within sixty (60) days, to reopen the action if the settlement is not consummated. Signed by Judge Esther Salas on 8/1/2016. (ld, ) (Entered: 08/01/2016)
It looks like CAMILLA AUSTRALIA bought the domain name. They’re selling clothing, swimwear, and women’s accessories.