Frank Schilling’s Name Administration Wins Another UDRP on 16 Year Old Torneo.com

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Frank Schilling’s Name Administration Inc represented as usually by John Berryhill, Ph.D, Esq., has won another UDRP this time on the domain name Torneo.com which was registered on September 28, 1999.

“Torneo” is the common Spanish and Italian word for “tournament”

The UDRP was filed by Sport and Fashion Management PTE. LTD. of Moscow, Russian Federation which owns the domain name torneo.ru

The Complaint was filed on July 15, 2015.

The panelists of Christopher J. Pibus, Irina V. Savelieva and Pablo A. Palazzi were not appointed until a month later.

The decision which is dated October 23, 2015 was not transmitted to the parties until 10 days later.

All and all a very long time for a very short decision.

Here are the highlights:

“”The Complainant appears to be an assignee of the Russian Trademark Registration for TORNEO & Design dated August 19, 1999 for games, toys; gym and sports goods.

The Complainant has entered into a license agreement with a retailer called Sportsmaster Ltd., which operates more than 450 stores in over 150 cities in the Russian Federation, Kazakhstan, Belarus, Ukraine and China. The Complainant’s licensee sells sports footwear, apparel, accessories and equipment under different trademarks including the TORNEO trademark.

Upon review of the Complaint materials, the Panel finds that the Complainant does provide some evidence of use of the TORNEO mark in association with sporting equipment through its licensed retail stores and on websites at “www.sportsmaster.ru” and “www.torneo.ru”.

However, the Panel is not convinced that the evidence as filed supports a finding of reputation in the TORNEO & Design trademark beyond the jurisdictions of the Russian Federation, Kazakhstan, Belarus, Ukraine and China.

Therefore, the Panel is not prepared to question the Respondent’s statement that it was not aware of the TORNEO mark.

Further, the Panel acknowledges the Respondent’s evidence to the effect that the word “torneo” is the common Italian and Spanish word for “tournament”, which supports the Respondent’s contention that the word “torneo” is primarily generic in nature.

The Panel also takes into consideration the fact that the Respondent has owned and used the disputed domain name for over a decade, and during that time has continuously used the disputed domain name without objection as a parking site that provides links to third-party websites. The Respondent properly points out that pages from its website (associated with the disputed domain name) actually display links to other websites with content related to tournaments, specifically soccer tournaments. These links are obviously based on the generic meaning of “torneo”; there is nothing on the Respondent’s website connected to, or suggestive of, the Complainant’s products or business.

Accordingly, the Panel finds that the Complainant has not satisfied the requirements under paragraph 4(a)(iii) of the Policy.””

About Michael Berkens

Michael Berkens, Esq. is the founder and Editor-in-Chief of TheDomains.com. Michael is also the co-founder of Worldwide Media Inc. which sold around 70K domain to Godaddy.com in December 2015 and now owns around 8K domain names . Michael was also one of the 5 Judges selected for the the Verisign 30th Anniversary .Com contest.

Comments

  1. Steve says

    Win? Having to defend a frivolous action, obvious rdnh???
    It should have never been heard. They should at least have to cover Franks costs. System is a joke.

  2. frank.schilling says

    I think this is Name Administration Inc.’s 37th UDRP win in 15 years. The company has had 1 inequitable loss which was overturned in the courts. The optics of trademark law are open to interpretation – one man’s trademark is another woman’s generic term. Culturally (in the case of Name Administration) there has never been a malevolent desire to capitalize on marks, just a wish to administer a great portfolio of meaningful, resonant Internet real estate.

    This is a World record the company would rather not hold. It’s an unfortunate reality that running a big-box store brings you great customers and less desirable people who think they can walk in and take your stuff for free.

    • Steve1 says

      What is your ballpark for costs defending all of these? It seems ridiculous this far into the game that there’s no penalty for trying to steal someone’s domain.

  3. Michael Berkens says

    Frank

    As you know every domain holder benefits as you continue to fight these UDRP’s, every win for you is a win for all of us.

    For the record I have defended 10 UDRP’s lost 1 ridiculous case, that we took to federal court and got paid for the domain.

    Also a shout out to Nat Cohen who successfully defended 16 cases.

    Combined just us three have 62 UDRP wins that I would estimate cost us somewhere over $300K to defend.

  4. Steve says

    @frank @michael

    I appreciate your fighting and winning these UDRPs, which should never have been filed. It’s a shame you had to pay legal costs to defend your properties.

    My companies own over 20 trademarks, but we also know owning a trademark doesn’t allow the registrants to file lawsuits and UDRPs as a fiat to seize another party’s assets.

    The losers of cases like this should have to pay the legal costs of the defendants.

    • Steve1 says

      Mike,
      So let’s just say $5k each x 37 = $185k and he “won” them???? Doesn’t seem like Frank won anything. It seems like he keeps getting ripped off by a system setup to assist in domain theft. With no penalty or deterrent for fishing expeditions this nonsense will continue. Could Frank pursue the complaintant in a real court to recover these costs?? Thanks for the info!!

  9. Steve says

    @Michael

    If TM holders win about 85% of the cases, what are approx. the % wins if the defendant/respondent requests a 3 member panel. Thnx