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UDRP panel: listen to John Berryhill

by — Policy & Law 1 Comment

Grocer fails to heed John Berryhill’s good advice.

Picture of masked man with the words reverse domain name hijacking

A New York grocery chain has been found guilty of reverse domain name hijacking after it filed a cybersquatting case against the domain name dagostino.com.

D’Agostinos Markets, Inc. filed the case even though domain name attorney John Berryhill clearly explained to it why it would lose a UDRP and likely be found to have engaged in reverse domain name hijacking, according to the decision.

The grocery chain sent a cease & desist letter to the owner, Lulu D’Agostino Murphy. Notice the family name.

Berryhill responded, explaining why the case was bunk.

In finding reverse domain name hijacking, the National Arbitration Forum panel wrote:

Complainant was on notice in a letter authored by John Berryhill, Esq., Respondent’s then counsel in response to Complainant’s cease and desist letter setting forth in great detail the relevant facts demonstrating Respondent’s rights or legitimate interests in dagostino.com… Mr. Berryhill informed Complainant that the domain name was purchased by Respondent’s father Joseph D’Agostino and used by him in connection with his computer business, and subsequently transferred to and used by Respondent in her business in the same field. Complainant was also informed that if he were to proceed with the UDRP Complaint Respondent would counterclaim Reverse Domain Name Hijacking.

Complainant knew or should have known from Mr. Berryhill’s voluminous references to cases and law and that the domain name was registered and is being held by a member of the D’Agostino family, all set forth in detail, that its Complaint had no chance of succeeding on the merits. It was, in short, a complaint that should never have been launched.

The panel was also frustrated that the Complainant was unfamiliar with the jurisprudence of UDRP and its evidentiary demands.

Although Berryhill sent the response to the cease & desist letter, Brett Lewis of Lews & Lin represented the domain owner in the UDRP. Nicholas C. Katsoris represented the grocery chain.

UDRP: Joking .com was stolen

by — Policy & Law 3 Comments

Former owner will get domain back through UDRP challenge.

Picture of robber in black clothing, black at, black gloves and eye mask

A National Arbitration Forum panel has ordered the domain name Joking(.)com be transferred back to its previous owner.

A man who said he’s owned the domain name since 1997 filed a cybersquatting dispute under the Uniform Domain Name Dispute Resolution Policy (UDRP) to get it back. He said the domain name was stolen earlier this year and then the thief tried to sell it.

A look at historical screenshots for the domain shows that the site was developed for a long time, and sometimes showed adult content.

The alleged thief, who resides in Russia, did not respond to the dispute.

A berry well reasoned cybersquatting case

by — Policy & Law 2 Comments

Decision explains that domain registrant must have targeted the Complainant to win a case.

Picture of a bowl of blackberries with the words "A berry well reasoned UDRP"

A three-person World Intellectual Property Organization panel has found against blackberry producer Berry Fresh, LLC, in a cybersquatting dispute it filed against BerrySweet.com. The panel wrote a detailed decision showing that, just because you have a trademark for a term, it doesn’t mean a domain registrant bought the domain to target your mark.

Berry Fresh has a Canadian trademark for Berry Fresh and a U.S. registration on the Supplemental Register. Even putting aside the fact that the U.S. registration is on the Supplemental Register, it’s noteworthy that the trademarks are for blackberries. Just blackberries.

If you Google the term Berry Fresh, you’ll get results for Pokemon, stationary, Ben & Jerry’s ice cream, and other things that use “berry sweet” as a play on “very sweet.”

In this case, Berry Fresh couldn’t show that the registrant of the domain name was targeting it with the registration. He wasn’t using the domain.

Was he targeting the berry producer? Or did he just register the domain because it’s a fun play on “very sweet”? It’s very likely the latter.

Berry Fresh has a trademark for berries. Not the many other uses of this term.

It’s also worth pointing out that Berry Fresh was the prior registrant of this domain. It let the domain expire by accident last year. Still, the current registrant didn’t do anything to show that it targeted the produce company with the domain registration. He didn’t offer to sell it to Berry Fresh until Berry Fresh contacted him. He didn’t put up ads related to berries.

This case should serve as a reminder to all Complainants that just showing they have a trademark isn’t enough to win a UDRP. They need to show that the domain registrant targeted them with the registration.

National Arbitration Forum phones its in on WellPath.com

by — Policy & Law 3 Comments

Panel returns a terse decision. At least it correctly denied the case.

Picture of a pink phone and phone cord with the words "phone it in"

Perhaps the panel though it was deciding a Uniform Rapid Suspension case, not a Uniform Domain Name Dispute Resolution Policy case.

That’s the only explanation I can come up with for a three-member National Arbitration Forum panel turning it what is effectively a 78-word explanation of its decision (pdf) in a UDRP for WellPath.com.

The rest of the decision, which is also quite short, explains that the panel was only considering one of the three prongs of UDRP and was denying reverse domain name hijacking (RDNH).

Then there’s the summary of the “Complainant’s Additional Written Statement”, which clearly also includes an assertion made by the Respondent about reverse domain name hijacking—and referred to it as RDMH.

To be fair, it was a simple case. Dead on arrival. The domain was registered well before the Complainant, Wellpath Holdings, Inc., claimed trademark rights in the term WellPath. It argued the mistaken belief that this was a case of cybersquatting because “Respondent registered the wellpath.com domain name with the intent to sell the disputed domain name to a subsequent holder of the WELLPATH mark.”

Which is why it’s perplexing that the panel didn’t find reverse domain name hijacking.

The decision doesn’t even say which of the three panelists—Diane Thilly Cabell, David Einhorn, John Upchurch—was presiding.

How about some quality control?

Loco UDRP ends in reverse domain name hijacking

by — Policy & Law 2 Comments

Tech company tries to hijack domain name registered in 1999.

Reverse domain name hijacking graphic

A Brazilian technology company has been found guilty of reverse domain name hijacking in its effort to get the domain name InLoco.com. The Complainant, In Loco Tecnologia da Informação S.A., uses InLoco.com.br for its website.

The phrase “in loco” is a common Latin phrase meaning “in the place” or “in the right or proper spot”. (Loco also means “crazy” in Spanish, and loco is an apt description of this case.)

The owner of the domain name registered it in 1999, well before the Complainant was established in 2014. In Loco Tecnologia attempted to acquire the domain name from the registrant before filing the UDRP complaint.

After filing the complaint, In Loco Tenologia tried to withdraw it. But the domain name owner said he’d only consent to this if it was with prejudice, meaning that it couldn’t be filed again at a later date. He also wanted the panel to rule on reverse domain name hijacking.

The three-person World Intellectual Property Organization panel agreed with the domain name owner:

To allow a complainant to simply withdraw a complaint without prejudice after a response has been filed would allow for the possibility of a complainant refiling a complaint against the same respondent at a later point. Such “eleventh hour withdrawals” of complaints without prejudice invites the filing of potentially abusive complaints for strategic reasons.

It found that the Complainant had no chance of winning the case and attempted reverse domain name hijacking.



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