Bigfoot Ventures LLC of New York, New York, represented by Morton & Associates LLP has just been found guilty of Reverse Domain Name Hijacking (RDNH) on the domain name slized.com
The one member panel of Matthew S. Harris decided a pretty interesting and rare type of RDNH case especially where he found the version of event stated by the domain holder were “highly implausible”
However the panel found “the Complaint in this case was totally inadequate..The Complainant was also professionally represented and as such should have been aware of the requirements of the Policy.”
Ouch for the Complainant’s lawyers
For the Trademark holder the panel “reached the unfortunate conclusion that the Complainant misrepresented the nature of its use of the SLIZED mark. In particular, the claim that there has been “extensive advertising and commercial use across the global marketplace” of that mark is at best exaggerated. Obviously, this is something that was highly relevant to the question of whether the Respondent was aware of that mark at the time he registered the Domain Name.
The decision also contains a very a good discussion on Reverse Domain Name Hijacking in general.
Here are the highlights:
The Complaint had a Benelux trademark for the word mark SLIZED filed on October 10, 2006
The Domain Name was registered by the Respondent on January 28, 2016.
It has since its registration been used to display a parking page generated by the Registrar.
The key issue in this case is the extent of the Respondent’s knowledge and his intentions when he registered the Domain Name on January 28, 2016.
So far as the Respondent is concerned, the version of events he gives is highly implausible. The Respondent would have the Panel believe that (a) he was aware of the use of the Domain Name back in 2007, (b) in January 2016 he decided he wanted to register a different domain name for a new business; i.e.
Nevertheless, this does not absolve the Complainant of the requirement to demonstrate on the balance of probabilities that the Domain Name was registered in order to take unfair advantage of the trade mark rights of the Complainant.
It is this part of the Complainant that is totally lacking.
In particular, there are assertions as to use of and goodwill in a Benelux trademark but these assertions are neither properly explained nor evidenced.
No attempt has been made to explain the exact way in which the Complainant’s mark has been used and the extent of that use, whether that be in terms of the territories in which it has been used and the magnitude of the economic activity in those territories under that mark.
Instead there are simply bare assertions that it has been used in “global commerce” in respect of each of the classes of goods in respect of which the Benelux mark has been registered and that there has been “extensive advertising and commercial use across the global marketplace”. That is wholly inadequate.
However, this is not just a case where a complainant has failed to file an adequate complainant.
First, the Complainant’s contentions are of themselves commercially implausible. Why would a business based in New York that had (if the Complainant is to be believed) since 2007 continuously used the term “Slized” as a mark in “global commerce”, only seek to register that mark as a trade mark in the Benelux states? Second, the Respondent has brought forward evidence, by reference to websites and social media pages controlled by the Complainant or associated companies, which suggests that this mark has not been used by the Complainant at all.
In the circumstances, the Panel has reached the conclusion that the Respondent’s claims that the trade mark has not been used (at least to any significant degree) are correct. Given this and even though the Panel has disregarded the Respondent’s own claims as to why the Domain Name was registered, it accepts that the Respondent was unaware of the Complainant’s mark when the Domain Name was registered. Consequentially, the Panel is not convinced that the Domain Name could have been registered in order to take unfair advantage of the trade mark rights of the Complainant.
It follows from this that the Complainant has failed to show that the Domain Name was registered by the Respondent in bad faith.
Reverse Domain Name Hijacking
WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant’s lack of relevant trademark rights, or of the respondent’s rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g., in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances.
WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP; the complainant failed to notify the panel that the complaint was a refiling of an earlier decided complaint [see further discussion regarding refiled complaints in paragraph 4.4 above] or otherwise misled the panel; a respondent’s use of a domain name could not, under any fair interpretation of the reasonably available facts, have constituted bad faith; the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights [see further paragraph 3.1 above with respect to bad faith and complainant trademark rights which post-date domain name registration].
The fact of default by a respondent does not necessarily prevent a finding of Reverse Domain Name Hijacking in appropriate cases, and WIPO panels have on occasion entered such findings on their own initiative, especially where the complainant has intentionally attempted to mislead the panel by omitting material evidence.
WIPO panels have declined to find Reverse Domain Name Hijacking in circumstances including where: the complainant has succeeded in establishing each of the three essential elements required under the UDRP; the complainant’s argument under a required element of the UDRP fails, but not by such an obvious margin that the complainant must have appreciated that this would be the case at the time of filing the complaint; there is a question of clean hands or factual accuracy on the part of both parties; the respondent’s website contains commercial links explicitly referable to the complainant for the purpose of generating revenue, providing a basis for the complainant to be aggrieved; or there appears to be another relevant factual basis for filing the complaint.”
As has already been described in this decision, the Complaint in this case was totally inadequate. It seems likely that the Complainant is not unfamiliar with the UDRP.
In this respect, the Panel notes that a company with the name “Bigfoot Ventures Ltd” was the unsuccessful respondent in Compania Mexicana de Aviacion, S.A. de C.V. d/b/a Mexicana v Bigfoot Ventures LLC,NAF Claim No. 1195961.
In any event, the Complainant was also professionally represented1 and as such should have been aware of the requirements of the Policy.
Further, the Panel has also reached the unfortunate conclusion that the Complainant misrepresented the nature of its use of the SLIZED mark. In particular, the claim that there has been “extensive advertising and commercial use across the global marketplace” of that mark is at best exaggerated. Obviously, this is something that was highly relevant to the question of whether the Respondent was aware of that mark at the time he registered the Domain Name.
In the circumstances, the Panel has reached the conclusion that the Complaint was speculatively filed with no real belief that the Complainant could satisfy the requirements of the Policy. The Panel has also expressed scepticism as to the Respondent’s contentions in this case. However, this does not excuse the Complainant’s conduct. The Panel, therefore, finds that there has been Reverse Domain Name Hijacking in this case.
7. Decision
7.1 For the foregoing reasons, the Complaint is denied.
Matthew S. Harris
Agree with the decision, I’ve already mentioned on DomainInvesting, for the Zero.com UDRP (http://www.domaininvesting.com/udrp-filed-against-zero-com-which-sold-for-over-329k/), that the Complainant is being ill-advised …
Zero.com UDRP was terminated … and here they have cut anther poor figure, with a RDNH …
Registering TMs somewhere to grab premium names is not a good idea … Mr Morton is really doing a bad job …
Told you … 🙂
P.S.
When I refer to “premium names” I was not talking about Slized.com, but about Zero.com and many others involved in this TM/UDRP strategy.
Hasn’t BigfootVentures gone after some other domains using this approach?
I see that Michael Gleissner is the managing partner.
Hasn’t his name come up a couple times this year?
In another post I made mention to a UDRP we just won regarding GREENFORT.com brought by a law firm in Germany.
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-0796
Panelist Matthew Harris was considered by us with high regards – but we opted for another panelist at that time a few months ago. I my opinion Mr. Harris’ opinions are beginning to change on “strength of trademark” and US constitution 14th Amendment in favor of the domain holder – as this SLIZED.com opinion reveals.
And in reading the dissenting opinion from Panelist, Stephanie Hartung in our GREENFORT.com case, she should be avoided in all cases by domain holders because she has no regard to the US Constitution 14th amendment of equal access -meaning she has no regard for the small business domain speculator nor the small business that might buy the domain at a different time than when the domain was purchased – i.e. she does not believe in the secondary market and free enterprise in general.
Bri
“I my opinion Mr. Harris’ opinions are beginning to change”
Harris has some of the most interesting, academically dense UDRP decisions out there. I agree with some, disagree with others, but he certainly lays out his entire thought process in detail. You can be more than halfway through reading one of his decisions and still not know where he’s going to end up.
Totally independent of what his UDRP decisions have been, I have had the pleasure of meeting him, and he is really one of the most brilliant people I’ve ever met. Easily in the top ten. He’s not someone you want to argue with, since he has a quick and playful mind and immense knowledge. He’ll draw you in with a “simple question” and then spend the next 15 minutes dissecting your answer and guiding you into some paradoxical trap.
But, yeah, his UDRP decisions have sort of been all over the map for the same reasons.
I am the guy who made points for the respondent in this case. I am afraid you have not read the full report and never knew the whole reality.
I saw the complainant file and for me it was a simple case of URDP denial along with the RDNH. We prepared the response in just two hours and that too with only two cups of coffee…:).
For of all in order to determine the” strength of trademark” you have take many points in consideration. The foremost is that weather the Trademark is being used for global commerce and the proper brand exist. In both of these cases the complainant was misleading the panelist.
1) As a respondent we gave the enough proof that the slized brand never exists in the first place and the complainant is lying.
2) Secondly we focused on the point that The complainant was misleading the Panelist by claiming it to be a brand and copyright holder. We gave enough evidence to validate the claim that apart from the copyright no brand or commerce activity exists for this brand.
For the RDNH we focussed on many points as well. But the most damning was that Complainant harassed the respondent by sending threatening email before filing UDRP. The Complainant gave a deadline to the responder to transfer the domain within some days or face server legal consequences. The Complaint even used the word “Law Beeaker” and “Cyber Squatter” for the respondent without any further provision of any evidence.
So the Respondent argued that this method of harassment will continue if the Complainant ( Who is known for such tactics in the past as well ) will not be stopped.
Thanks.
I am shocked and saddened that a fellow domainer who does buy regularly from the forums and elsewhere is involved in these disputes. Ill advised indeed, not like BFV cannot afford to just buy what they truly want. Very odd events from them the last several months.
I agree JP i have done a lot of business with Bigfoot over the years and never saw any of this kind of behavior.
Isn’t he the one that sold TAO recently for over $ 1mil. ?
It is amazing how someone can make some dump moves and tarnish a good reputation that was built up over many years.
Maybe it’s easier to throw morals out the window when it’s been done to you in the past.
“In a more recent example, Bigfoot Ventures, a company with far-flung media interests, purchased several three-letter dot-com domains from BuyDomains in May 2008. BuyDomains had owned many of these domain for several years prior to the sale. At the end of May 2008, the same month that Bigfoot had acquired the domains and before it had even switched the hosting for the domains, Bigfoot was hit by a UDRP Complaint. The Complainant was a Mexican Airline known by the initials VTP and the domain the airline wanted was vtp.com. The arbiter found that the presence of advertising links on the webpage that predated Bigfoot’s purchase of the domain was evidence of Bigfoot’s bad faith. Shortly after Bigfoot spent $40,000 to acquire vtp.com, the panelist ordered its rights to the domain canceled and the domain transferred to the Mexican airline.”
http://www.domainarts.com/2014/02/04/the-udrp-a-problem-at-the-core-of-the-internet-reposted/
Unfortunate but I doubt a case that happened 8 years ago gave reason for todays actions.
That was a different story, Compania Mexicana de Aviacion, S.A. de C.V. d/b/a Mexicana Airlines v. Bigfoot Ventures LLC for VTP.com: http://www.adrforum.com/domaindecisions/1195961.htm
In that case IMHO bad faith in registration is questionable, since in 1998, when the domain was originally registered, the Complainant had only a TM registered in Costarica … but Respondent made the key mistake of parking the name with ads related to the Complainant’s business, providing Respondent also the proof of bad faith in use they needed …
Bigfoot learned from that, as you can see they are not parking anymore with ads their precious names. 🙂
“providing Complainant” (not “providing Respondent”), typo, sorry.
You’ll note the domain name is still registered to Bigfoot, since that dispute was taken to litigation.
Todd, that is precisely one of my theories.
The guy got screwed in a UDRP decision, and figured, “oh, so this is how it works.”
I could buy that as an explanation if it wasn’t for the fact that he’s got attorneys doing this stuff, and they should certainly know better. I realize there are some colleagues in my profession who, when told “I want you to do X” will go ahead and do X, no matter what it is, but that’s really not the way the profession is supposed to work.
Full disclosure: I was hired years ago as an expert witness in the litigation that followed the vtp.com decision (and stalled when Mexicana declared bankruptcy), but only on issues of how the UDRP works, and never had any actual contact with anyone in the company. That engagement gave me no access or insight into anything relating to this steaming pile.
Morton & Associates’ (a law firm named after attorney Jonathan Morton) relationship with Gleissen is more complicated than a standard attorney-client relationship. Morton and Gleissen are probably in business together. There appear to be a lot of facially shady things going on with Gleissen and Morton concerning trademarks and domain names.
It’s worth pointing out the denial of another complaint brought by Bigfoot Ventures on the same day:
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-1330
Clearly they have hired someone who has utterly no idea what they are doing.
We know that Benelux TMs are as easy to get as candy.
But, the TM go back to 2006. That is a long time to wait to take action.
Did he recently buy this TM on some kind of trading site?
Or, did he really plan that far ahead?
There is some extremely unusual activity going on associated with Mr. Gleissner’s companies.
If you search USPTO TESS for applications filed by a Jonathan Grant Morton (search (grant and morton) in “attorney of record”)), then you will see a huge number of US applications filed on generic words, and a large number of supposed .com “marks” – a good many for which the domain names are owned by other people.
For example, they have an application pending on “contor.com” for “perfumery”, predicated on a foreign filing, while contor.com, the domain name, directs to a Contor Manufacturing company which makes shipping containers and steel enclosures.
Likewise they have an application pending on “xero.com” for “perfumery”, while the domain name is used by a New Zealand accounting software company.
I’m trying to figure out if they are crazy, stupid, evil, or some combination. But it certainly appears they are up to no good.
John,
Totally agree, that’s what I was talking about … IMHO a mess of epic proportion … 😀
Oh, and you are going to have to stop using the confusingly similar name “Andrea”…..
Word Mark ANDREAS
Goods and Services IC 018. US 001 002 003 022 041. G & S: Leather; trunks and suitcases; travelling cases; handbags; purses; wallets; umbrellas; parasols; walking sticks; whips; harness; saddlery
IC 025. US 022 039. G & S: Clothing; footwear; headgear; swimwear; sportswear; leisurewear
IC 043. US 100 101. G & S: Hotel services; hotel reservation services; rental of temporary accommodation; business catering services; bar services; cafés; restaurants
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 87001595
Filing Date April 14, 2016
Current Basis 44E
Original Filing Basis 44E
Owner (APPLICANT) CKL Holdings N.V. naamloze vennootschap (nv) BELGIUM Leeuwenstraat 4 Antwerpen BELGIUM
Attorney of Record Jonathan Grant Morton
LOL@ “Word Mark ANDREAS” … nice one John! 🙂
What about Michelle, Alexander, Anna, Jessica, Julia, Kevin, Alan, Carmen …
Those are only a few of the MANY other terms/names that CKL Holdings NV has recently registered TMs for … ?
I’ve done a quick search and there are approx 400 generic terms on which CKL Holdings has registered a TM, in various countries: https://www.tmdn.org/tmview/bookmark?q=anm:%22CKL%20Holdings%20N.V.%22
Jessica
(210)/(260)Application number 01310451
(270)Application language en
(220)Application date 2015-05-15
Trade mark office Benelux – BOIP
(190)Registration office BX
(111)Registration number 0975270
(151)Registration date 2015-07-29
(141)Expiry date 2025-05-15
(550)Trade mark type Word
(551)Kind of mark Individual
(511)Nice classification 16,25,38
Current trade mark status Registration published
Status date 2015-07-29
(511)Nice class number 16
List of goods and services Printed publications, books, music sheets, music scores, magazines; printed matter; photographs; stationery.
(511)Nice class number 25
List of goods and services Clothing; footwear and headgear; swimwear; sportswear and leisurewear.
(511)Nice class number 38
List of goods and services Internet protocol television (IPTV) transmission services; simulcasting broadcast television over global communication networks and the Internet; television broadcasting.
Applicant identifier 2804685
Name CKL HOLDINGS N.V.
Address country BE
Address Kaasrui 12
2000 Antwerpen
Some cray filings:
including “MADOFF”, as in Bernie Madoff, filed in 9 classes? Talk about a brand that’s lost some value over the last 7 years.
kinda reminds me of that “trademark king guy” who filed multiple trademarks, including Sony.com, Google.com, Facebook.com, a few years back — burning over $50 K
Yes, but the Trademark King was apparently a deeply confused and misguided individual.
At first I thought the Trademark King was funny, but in retrospect it’s really kind of sad. I feel badly for making fun of him, because he genuinely didn’t know any better.
This nitwit, however, used to work for the USPTO. Granted, it was on the patent side, but still.
Update
I just did a USPTO tess search on the “Trademark King” filings.
169 filings — most are dead (abandoned), including HolyBible.com, Elvis.com, Twitter.com.
Wouldn’t it be better to just take a briefcase filled with $50 K in 20 dollar bills and set it on fire, and maybe record it and hope it goes viral and maybe someone will claim it “art” as in”Money to Burn”, etc — and sell it to the same kinds of art buyers who pay $30 million to acquire a rotting shark in a glass tank, titled, “Dead Shark” ?
“Wouldn’t it be better to just take a briefcase filled with $50 K in 20 dollar bills and set it on fire”
…and why do none of these crazy people never call me up to help!
(well, okay, except for Berkens)
@johnberryhill
Indeed they should have called you.
As far as the “trademark king”, I agree. Have no idea what he was thinking. It’s sad when someone throws away so much money.
@andreas
I have a friend whose name is Jeremy and he owns Jeremy.com.
I see this group also has a “jeremy” mark filing.
Jeremy is way too smart and well-connected (legal and more) to let anyone take away his own name domain.
They haven’t filed for Steve or Steven yet.
Since I am the one who made the points for my friend, so i want to list some of the points here. We focused on many points. The salient ones are:
1) Slized brand does not exist in the first place.
2) Slized brand is never used by Bigfoot ventures or any of its subsidiaries.
3) The respondent never put his domain name on sale.
4) The respondent never contacted the complainant to do any sale.
5) The Complainant misled the Panelist by claiming it to be a global brand ( When the brand does not exist in the first place).
6) No website or any online evidence exists that the Slized brand of Bigfoot ventures ever exists.
7) The respondent never developed any landing page to do any type of sales activity regarding to the assumed trademarked ” Goods and Services”.
8) The domain is registered in Good faith and no intentions of any “Bad Faith” exists.
9) The respondent never ever benefited from the (assumed) Slized brand of the Complainant.
10) The respondent Goods and services are different from the complainants. So again respondent is not benefiting from the assumed brand as well.