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I
got a note from Frank Schilling
this
week letting me know about a favorable outcome
to a long running domain dispute centered around
one his company's many generic domain names - ChilliBeans.com.
Two years ago a Brazilian company, Balglow
Finance, that makes sunglasses called Chilli
Beans filed a UDRP
against Frank's company, Name
Administration Inc. (NAI) in an
attempt to take the domain without paying for
it, even though their trademark rights (like
all trademark rights) were limited to a specific
category of goods, not including the
more commonly known food use that most would
associate with this name and that NAI had in
mind for it.
As
happens way too often in UDRP cases the panel,
despite the evidence, ruled against the
domain owner even though Balglow Finance
themselves just admitted that "the
generic Chillibeans.com domain name violated
no enforceable rights of Balglow Finance."
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Frank
Schilling
Name Administration |
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Everyone
who knows Schilling knows he has always done
things the right way and he is not going to
knowingly violate anyone's legitimate trademark
rights. By the same token, he insists that his
rights be respected as well. Schilling has
never let anyone usurp those rights and, as one of
the most successful domain investors in history,
he fortunately has the resources to fight back.
Schilling has won close to 20 UDRP cases in the
past and if necessary he will take the fight
further than that to defend his assets. That is
exactly what he did in this case as NAI wound up filing
a lawsuit against Balglow that stopped
transfer of his domain name in its tracks.
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Having been
stymied in their effort to take NAI's
property without paying for it, and their
prospects for successfully defending their
actions in the lawsuit tenuous, the
company decided to settle and wound
up doing what I think they should have
done in the first place - negotiate a purchase
price for the name that was fair to its
owner. That has now been done and
the dispute settled once and for all with
the two sides mutually benefiting
from a fair transaction. A joint
announcement from the two companies
follows: |
“Name
Administration Inc. ("NAI")
and Balglow Finance SA ("Balglow
Finance") are pleased to announce that they
have come to a mutually beneficial agreement in
regard to the domain name ChilliBeans.com
and the settlement of the law-suit filed by NAI in
the Cayman Islands concerning the domain
name. Both parties have agreed that NAI’s
use of the generic Chillibeans.com domain name
violated no enforceable rights of Balglow
Finance. The settlement of this dispute will
see NAI transfer title of this generic name to
Balglow Finance to assist it in its online efforts
relating to Balglow Finance’s expansion of the
“Chilli Beans” brand of eyewear.
“While
it’s unfortunate that this dispute necessitated
a trip to the Cayman Court, we are most pleased to
have resolved the matter in such a mutually
beneficial way," said Frank Schilling,
MD for NAI. He continued, “NAI’s only interest
in the domain name was as a generic term.
Now that it’s been settled that NAI’s
registration and use of the domain name violated
no rights of Balglow Finance we are pleased to
facilitate the transfer, as the domain name is
beneficial in advancing the business of Balglow
Fianance, and while valuable to NAI, has less long
term value to our company."
It's
too bad it took two years to get there, but at
least this story closed with the appropriate
ending.
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