Dynadot

2023 UDRP roundup and one more for luck?

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jberryhill

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John Berryhill, Ph.d., Esq.
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The end of the year is a convenient time to look back and ask, "What on earth did I do all year?"

I never used to keep count of these things, because I've been afraid to jinx myself, but to promote Nat Cohen's fantastic UDRP.tools database, I thought I would plug in my name as Respondent representative and take a look in the rearview mirror, including one case that started in 2022, but I'm including because the response was filed in 2023. The UDRP cases I defended, and which went to a decision were:


Domain Case Date Decision
livingedge.comWIPO D2023-41332023-12-11Complaint denied
demoji.com WIPO D2023-40982023-11-16Complaint denied
beds.com NAF 20621682023-11-02Claim Denied
viben.comWIPO D2023-21082023-07-13Complaint denied
healthyr.com WIPO D2023-18022023-06-26Complaint denied
vbg.com NAF 20463272023-06-22Claim Denied
websec.com WIPO D2023-08132023-05-01Complaint denied
gotohale.com WIPO D2023-00842023-04-20Complaint denied
mundonatural.com WIPO D2022-49582023-04-14Complaint denied
gaggle.com WIPO D2023-05452023-04-03Complaint denied
iloveart.com WIPO D2022-46322023-02-22Complaint denied

The ones in bold were RDNH decisions. Cases in which I represented a respondent where the case was settled and did not go to a decision are, of course, confidential.

Sometimes, people get annoyed when they don't like my opinions on trademark issues, and accuse me of being "paid off" or working for moneyed interests, but you'll notice that all of the disputes I defended in 2023 were for individuals against large companies (with the exception of livingedge that involved a very strange individual complainant). Some of them are names you might recognize, like DomainSherpa Ammar Kubba or longtime domainer Stanley Pace. But quite a few weren't "domainers" at all, but just ordinary domain registrants who registered names in the course of their ordinary business (websec, gotohale). Some were difficult, some were easy, and one of them - as I do for at least one case every year - was defended free of charge. Nobody is getting rich doing these things.

On the complainant side, I do take a couple of those on referral from the firm that I left back in 2005 to work on my own, and from others who are referred to me by other clients.

Domain Case Date Decision
chai-app.comCAC 1059002023-11-21Accepted (Transfered)
tailwinduikit.comNAF 20579702023-09-14Transferred
quickcpu.net NAF 20522932023-08-15Transferred
goodnaturedselects.comWIPO D2023-08102023-04-20Transfer
newstreamlight.com WIPO D2023-00702023-02-22Transfer

So, the overall UDRP combined offense/defense score for the year 16 for 16. Some years are better than others, but this one was pretty good.

Of my currently-pending cases, I believe there is one more which is ripe for a decision and I'm hoping that WIPO will manage to get it out before the end of the year, because of all the cases I defended this year, it is absolutely the most fun one. So, we'll see if the holiday elves can find one more present under the tree. If my general luck is any guide, there's a good chance it hits my inbox as soon as I hit "post" on this one. We'll see if this shakes it out...
 
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The views expressed on this page by users and staff are their own, not those of NamePros.
Thanks for sharing these. I don’t really know why but you attaching the dictionary definition of gaggle as an exhibit per the decision made me laugh.

I guess because it has nothing to do with children’s strollers/toys. Not that it has to. The fact that people think they alone have a right to a domain when multiple marks exist is always fascinating.
 
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Got a giggle from gaggle, did you?

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Shame on the tools who went after beds.

Thank you for your service, sir.
 
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I do enjoy reading the UDRP complaints and decisions. Trouble being is once there often means an all night job Bloody Hell it's 5am.

For pure humour it has to be the claims of the blatant chancers on generic single word terms. I'm glad I've kicked the habit. My long deceased wife complained my outbursts of laughter at 3am weren't helping her sleep patterns.

That's the problem with domains and ownership, Many think they can have a justifiable right in an area of business legalities that they know less about than Squirrel illnesses.
 
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I see the name Adam Dicker here.
Is it the same Dick that we all know or it's a different Dick?
 
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Yes, the footnote indicates that eighteen years ago, in 2005, he prevailed in a UDRP dispute over elephant.com. Sixteen years ago, in 2007, he prevailed in a UDRP dispute over pig.com.

As noted in this Namepros thread, a decade after those UDRP decisions, a number of people came forward with information about unpaid debts and unethical business practices: https://www.namepros.com/threads/is-adam-dicker-a-criminal-you-decide.883579/
 
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The end of the year is a convenient time to look back and ask, "What on earth did I do all year?"

I never used to keep count of these things, because I've been afraid to jinx myself, but to promote Nat Cohen's fantastic UDRP.tools database, I thought I would plug in my name as Respondent representative and take a look in the rearview mirror, including one case that started in 2022, but I'm including because the response was filed in 2023. The UDRP cases I defended, and which went to a decision were:


Domain Case Date Decision
livingedge.comWIPO D2023-41332023-12-11Complaint denied
demoji.com WIPO D2023-40982023-11-16Complaint denied
beds.com NAF 20621682023-11-02Claim Denied
viben.comWIPO D2023-21082023-07-13Complaint denied
healthyr.com WIPO D2023-18022023-06-26Complaint denied
vbg.com NAF 20463272023-06-22Claim Denied
websec.com WIPO D2023-08132023-05-01Complaint denied
gotohale.com WIPO D2023-00842023-04-20Complaint denied
mundonatural.com WIPO D2022-49582023-04-14Complaint denied
gaggle.com WIPO D2023-05452023-04-03Complaint denied
iloveart.com WIPO D2022-46322023-02-22Complaint denied

The ones in bold were RDNH decisions. Cases in which I represented a respondent where the case was settled and did not go to a decision are, of course, confidential.

Sometimes, people get annoyed when they don't like my opinions on trademark issues, and accuse me of being "paid off" or working for moneyed interests, but you'll notice that all of the disputes I defended in 2023 were for individuals against large companies (with the exception of livingedge that involved a very strange individual complainant). Some of them are names you might recognize, like DomainSherpa Ammar Kubba or longtime domainer Stanley Pace. But quite a few weren't "domainers" at all, but just ordinary domain registrants who registered names in the course of their ordinary business (websec, gotohale). Some were difficult, some were easy, and one of them - as I do for at least one case every year - was defended free of charge. Nobody is getting rich doing these things.

On the complainant side, I do take a couple of those on referral from the firm that I left back in 2005 to work on my own, and from others who are referred to me by other clients.

Domain Case Date Decision
chai-app.comCAC 1059002023-11-21Accepted (Transfered)
tailwinduikit.comNAF 20579702023-09-14Transferred
quickcpu.netNAF 20522932023-08-15Transferred
goodnaturedselects.comWIPO D2023-08102023-04-20Transfer
newstreamlight.comWIPO D2023-00702023-02-22Transfer

So, the overall UDRP combined offense/defense score for the year 16 for 16. Some years are better than others, but this one was pretty good.

Of my currently-pending cases, I believe there is one more which is ripe for a decision and I'm hoping that WIPO will manage to get it out before the end of the year, because of all the cases I defended this year, it is absolutely the most fun one. So, we'll see if the holiday elves can find one more present under the tree. If my general luck is any guide, there's a good chance it hits my inbox as soon as I hit "post" on this one. We'll see if this shakes it out...

I recognize one of the cases. It's from a good friend of mine (not a domainer) whom I passed your contact and suggested to call. (y)
 
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Thank you. I hope your friend was pleased by the result.
 
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What is the penalty for being found guilty of RDNH and do you think its severe enough to deter frivolous claims?

Do you think most of these cases are brought by people who genuinely believe they have a right to the names in question or are they just trying their luck because it's relatively cheap compared to the sellers asking prices and there is little other consequence?
 
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What is the penalty for being found guilty of RDNH and do you think its severe enough to deter frivolous claims?

Well, the penalty for cybersquatting under the UDRP hasn't been severe enough to deter that either, so...

What I've seen is that both the proportion of bad UDRP claims has gone down, and the likelihood of bad claims being called out as RDNH has gone up. I'll have to dig out the numbers I ran a while ago, but the overall trends were that the proportion of transfer decisions has increased and the proportion of denials has decreased, BUT the share of denials being called out as RDNH has increased dramatically.

My takeaway from that data is that UDRP complaints are falling into primarily two baskets - normal cybersquatting cases for which it was designed, and a few folks at the back of the class who didn't understand the material.

Within RDNH complaint filers, there are also two baskets - attorneys who genuinely don't care, or inside marketing employees who simply doesn't understand. As an attorney, I have to go easy on that second group, because having Muhammad Ali get into the ring with PeeWee Herman is not a good look.

Personally, if I filed a complaint that was deemed to be RDNH, I would be embarrassed. Like every lawyer, I've had my share of things that didn't go as hoped, or unfortunate errors, but I don't know how one explains to one's client, "You're going to pay me X thousand dollars to do this thing that will get you the thing you want" and then have a decision come back saying "You not only lose, but you should not have done this." How do you explain that to your client?

It's probably even worse when it comes at the tail of of a scheme where the lawyer talks the client into pursuing a trademark registration, then trying to buy the domain name anonymously, then files a UDRP on the basis of the answer to that inquiry and, after months of screwing around is told by a UDRP panel that it was a dumb plan.

But, sure, it is fashionable these days to have no sense of shame, and there are plenty of folks who can sleep fine at night knowing they basically ripped off their client. It seems to me the legal profession attracts a disproportionate share of psychopaths and narcissists, and a good many of my colleagues really don't care about that.

Their client might not be as happy about it. That's why some lawyers need to aggressively market their services or have websites going on about how great they are. Those lawyers don't get referrals from satisfied clients and need a constant supply of new money at the table. I was recently just blown away by the website for the attorney that filed this piece of crap: <https://www.wipo.int/amc/en/domains/decisions/pdf/2023/d2023-4411.pdf>

There are always going to be people doing inadvisable things because they don't care or don't know any better, but the overall trend in the last couple of years makes defending UDRP cases pretty slim pickings, to be honest, because there are a lot fewer "interesting" cases and a lot more that get called out as stinkers. I would like to imagine that is the result of the hard, years-long slog to establish case-by-case, some principles around what is, and is not, a frivolous UDRP complaint and when a panel should say so. I would also like to imagine that is the reason for the polarization of UDRP outcomes mentioned above. Maybe I'm just kidding myself. Who knows.
 
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So, the overall UDRP combined offense/defense score for the year 16 for 16
That is a very impressive record.

The part about the squirrel 'hiding his nuts' made me rain coffee down on my keyboard!
 
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So, the overall UDRP combined offense/defense score for the year 16 for 16.
Congrats on the winning score Mr. Berryhill. And thanks for your valuable comments on this forum.
Your contributions always help everybody to better understand domain related laws. (y)
 
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I want to echo what @Sutruk just posted - thank you so much for being active on NamePros and all of your contributions through the years @jberryhill !

It is interesting to see this summary of your year, and congratulations for the incredible success record.

Best wishes for 2024.

-Bob
 
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Well, the penalty for cybersquatting under the UDRP hasn't been severe enough to deter that either, so...

What I've seen is that both the proportion of bad UDRP claims has gone down, and the likelihood of bad claims being called out as RDNH has gone up. I'll have to dig out the numbers I ran a while ago, but the overall trends were that the proportion of transfer decisions has increased and the proportion of denials has decreased, BUT the share of denials being called out as RDNH has increased dramatically.

My takeaway from that data is that UDRP complaints are falling into primarily two baskets - normal cybersquatting cases for which it was designed, and a few folks at the back of the class who didn't understand the material.

Within RDNH complaint filers, there are also two baskets - attorneys who genuinely don't care, or inside marketing employees who simply doesn't understand. As an attorney, I have to go easy on that second group, because having Muhammad Ali get into the ring with PeeWee Herman is not a good look.

Personally, if I filed a complaint that was deemed to be RDNH, I would be embarrassed. Like every lawyer, I've had my share of things that didn't go as hoped, or unfortunate errors, but I don't know how one explains to one's client, "You're going to pay me X thousand dollars to do this thing that will get you the thing you want" and then have a decision come back saying "You not only lose, but you should not have done this." How do you explain that to your client?

It's probably even worse when it comes at the tail of of a scheme where the lawyer talks the client into pursuing a trademark registration, then trying to buy the domain name anonymously, then files a UDRP on the basis of the answer to that inquiry and, after months of screwing around is told by a UDRP panel that it was a dumb plan.

But, sure, it is fashionable these days to have no sense of shame, and there are plenty of folks who can sleep fine at night knowing they basically ripped off their client. It seems to me the legal profession attracts a disproportionate share of psychopaths and narcissists, and a good many of my colleagues really don't care about that.

Their client might not be as happy about it. That's why some lawyers need to aggressively market their services or have websites going on about how great they are. Those lawyers don't get referrals from satisfied clients and need a constant supply of new money at the table. I was recently just blown away by the website for the attorney that filed this piece of crap: <https://www.wipo.int/amc/en/domains/decisions/pdf/2023/d2023-4411.pdf>

There are always going to be people doing inadvisable things because they don't care or don't know any better, but the overall trend in the last couple of years makes defending UDRP cases pretty slim pickings, to be honest, because there are a lot fewer "interesting" cases and a lot more that get called out as stinkers. I would like to imagine that is the result of the hard, years-long slog to establish case-by-case, some principles around what is, and is not, a frivolous UDRP complaint and when a panel should say so. I would also like to imagine that is the reason for the polarization of UDRP outcomes mentioned above. Maybe I'm just kidding myself. Who knows.
It seems to me the legal profession attracts a disproportionate share of psychopaths and narcissists, and a good many of my colleagues really don't care about that.

Not anymore than the domain profession attracts 🤭
 
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You've done outstanding work effectuating positive outcomes for your clients. Congratulations on achieving these results. You make your craft seem easy when it's not, sorta like Tupac. Thanks for sharing a lot from your cases and experiences this past year as well. Wishing you the best in '24.
 
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Easy to miss one when you win so many, @jberryhill! Udrp.tools search doesn't bring up the redfig.com win when searching for you as the Respondent Rep.
 
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Easy to miss one when you win so many, @jberryhill! Udrp.tools search doesn't bring up the redfig.com win when searching for you as the Respondent Rep.

Good catch.... Make that a dozen...

https://www.adrforum.com/DomainDecisions/2065116.htm

I found out more about figs than I ever knew. One of the weird things about doing patent and trademark law is that you end up learning about a lot of things.
 
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As an attorney, I have to go easy on that second group, because having Muhammad Ali get into the ring with PeeWee Herman is not a good look.
Hi Sir

it may not be a good look, but seeing the vision of it... is funny as hell :)

i also feel your expression/personification of yourself as the GOAT,
who can float like a butterfly and sting like a bee - with the logic and contrasting facts you bring to the ring

also noting that if RDNHs' are increasing, then does that signal a growing rationality among the panelists?

tks

imo...
 
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The one I've been waiting for finally showed up just a few days too late for the party....

Screenshot 2024-01-03 at 11.44.43 AM.png
 
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