Navigating the Legal Labyrinth: Domain Mastery With John Berryhill and Homage to Howard Neu | Saw.com

Speaker 1: 0:00

I'd like to call this episode the life and times of John Berryhill, with a tribute to Howard New. John is an industry domain name attorney and we have worked together for about a decade. We started working together while I was at Uniregistry and in the beginning it was a little bit rocky and you get to hear the story about it. But since then we've certainly become close friends, and that also includes his wonderful wife, MJ. They are certainly a pair that beats four of a kind. But I have to say I'm a little disappointed in John as he didn't wear his Christmas present, which you can see in the picture of this episode. But on this episode we go over his beginnings. Then we start talking about our history and some interesting domain name disputes, and if you are a domain investor or someone that is considering purchasing a valuable domain name, or if you own one, you should listen to JB and pay close attention. Now, despite not recording a second part yet, we'll certainly be doing that with some more interesting disputes and goings on in the domain name legal world. Thanks for listening. Have a good week.

Speaker 1: 1:04

Today on the Uncomfortable Podcast you have industry veteran and patent and intellectual property attorney, Dr John Berryhill, who was also a very active participant, ICANN, being part of the Registrar Constituency Representative as well as the Treasurer the ICANN Nominating Community GNSO Working Group, who is a member of the ICANN Community and the ICANN Community. He's been a speaker at countless important events in the domain industry and a member of the Internet Commerce Association. John has a Bachelor's of Engineering with a Physics minor, Masters in Engineering, a Doctorate of Philosophy in Electrical Engineering we're going to talk about that all earned at the University of Delaware, and he's also a member of the ICANN Community. So he's a member of the ICANN Electrical Engineering. We're going to talk about that. All earned at the University of Delaware and he graduated law school from Weidner University or Weidner is it Weidner Weidner?

Speaker 2: 2:08

I hardly even know her.

Speaker 1: 2:12

Oh God, he was also born in a log cabin he built himself. John, welcome to the show. We're here, so our listeners now worked at Universtry together. He was our legal counsel there. We worked there together for about seven years and while working with me on the brokerage side of the business, he also helped with the registrar and the registry. He assisted with domain brokerage terms, contracts, contract negotiations and my favorite part trademark threats or just threats in general and interesting situations that appeared at the registrar too, and while I was trying to sell the names in Frank Shilling's portfolio of 350,000 domains, he was tasked with trying to protect it on a daily, weekly, yearly basis. So we've definitely had a lot of great situations that we can talk about.

Speaker 1: 3:06

But before we really get into John and into our experiences together and some of our stories, I would say something about Howard New.

Speaker 1: 3:16

A couple of days ago we heard some very unfortunate news of his passing and one of the things that I've noticed over the years of being in the domain industry of 14 years, I'd say that there's probably between 10 and 15 really active lawyers that really specialize in domain name law in our industry on a regular basis, that attend the conferences you know are writing articles or are part of helping with ICANN or doing all kinds of different things, and Howard was certainly one of those people, and he was not only a domain name attorney, but he put on conferences and as longer that I got to know him, he became even more of a unique person to me, because he was the mayor of a town at one point and he was also in a movie or two as well one with Dan Ackroyd I forgot the name of it and he was also just a genuinely nice guy and I'm really sorry to hear about his passing.

Speaker 1: 4:14

And I know, john, you've probably worked with him on countless occasions. I like to hear what you think about that and the relationship with some of the other lawyers in the business in this tight little industry.

Speaker 2: 4:26

Yeah, actually Howard was one of the teachers in Porky's too and he was a traffic court judge in one of the Smokey and Bandit franchise movies. Which is funny because he had one of his early legal engagements was that he was a municipal judge and went on to become the mayor of North Miami. But there is now a domain lawyer community that I'm always afraid to list names because I know how to leave somebody out, but turn back the clock to when the industry was really just in its infancy and it was a much smaller list of names and there are so many industry stories that start with. Well, when I went to the original traffic conference in Delray that Rick Schwartz and Howard put on and Rick was extremely blessed to have Howard as his attorney that was a seminal event in the domain industry and Howard could have said, hey, I am the lawyer to the industry. He very graciously invited Ari Goldberger and myself to a joint. Here are the domain lawyers. Of course there were more. We were the only three there at that time. Ari was a real pioneer in domain name litigation and Ari got one of the first I think the first UDRP decision that clearly said, hey, these things do have value and can be resold and can be used in connection with relevant advertising. And Ari had done some of the early litigation and Howard had also been dealing with domain name disputes and domain name issues back when people were saying what was a domain name, and he brought us together for a fun session and I didn't realize that it would be sort of the touchstone of so many domain career stories and Howard really kicked that off and he was.

Speaker 2: 7:07

I tend to be pretty direct and pretty blunt about things.

Speaker 2: 7:14

If there are different styles that lawyers have and if you come to me, I'm not going to spend 30 minutes kissing your ass and some people get really turned off by that and I rub people the wrong way and I get that.

Speaker 2: 7:29

But what you do get from me is an honest, blunt, to the point of opinion. Howard always had a way of making you feel special, no matter what he was saying to you. He could be saying to you to me, john, you're absolutely full of crap and I would feel like I'd just gotten the best compliment one could ever be given. Nobody was excluded. He was a very just, welcoming, happy guy and very satisfied with who he was as a person and able to take that satisfaction and draw in other people, and I know that Barbara was a big part of really who he was and why he was so happy and my condolences go out to her at this time. He was just a real giant of a man and he's going to leave a hole, a Howard-sized hole that can't be filled really in the profession and in our hearts.

Speaker 1: 8:36

I agree and I really do feel bad for his wife because at the conferences I went to and I went to him a little bit later on I started going in 2010,. She was a huge part of that and interviewing a lot of these successful folks that I've had on here. There's always a common denominator that behind these successful people is usually a very supportive husband or wife and she obviously was a big part of that and probably did a lot more things behind the scenes and was there helping him to do a lot of the little stuff as well and keeping him grounded and making it a great show and a great place for people to, like you said, help their careers and grow their careers and really make the industry as strong as it is today and I went on to gain years of experience and wisdom, much of which Howard shared.

Speaker 2: 9:33

He had news news and we also, among the people who do domain law, there's sort of an informal which has actually become a little bit more formalized, but an informal email circle that's been going on for years and Howard would always share his tips and observations and things that he'd been picking up, and so over the years I gained so much wisdom and experience, and working with Frank Schilling was a real interesting adventure as well. And then when he started his registrar, he brought in this sales guy who I never heard of. The guy I didn't know him from Adam, but I think he had asked me some question and then, like within a few days, was saying you know, well, I asked Barry Hill this question and he hasn't gotten back to me yet, and that guy was such a prick. How did it seem from your end, jeff? Oh well, that was our. You know what?

Speaker 1: 10:32

we got off on. Okay, so let me back up here. So you just went from Howard into this.

Speaker 1: 10:38

I was like wait a minute what happened here. Okay, so I was a domain broker with my own business and Frank was one of my clients and we worked together for a number of years. And then Frank I'm going to do the very abridged version because this show isn't about me Frank made an offer that I couldn't say no to and in a very short period of time he wanted me to report to the Cayman Islands. I think I accepted working for him like mid-December, and I was there on January 3rd. So I get there and I'm like I need this, this, this and this, and some of those things were legal related documents, one being a purchase and sale agreement so we could sell domain names properly, and some other random stuff.

Speaker 1: 11:29

I don't remember what it was. And so Frank's like John Barry Hill is at your disposal, you can email him for anything you want. I pay him monthly to handle my domain issues and whatever. And I thought that when you work for any company, that usually you're told someone tells you, you know, tells the people that are working there, especially when the company, I think, was five people that a new person would be joining, you know. So I sent an email to John and I said hey, john, you know how are you. I'd like to find that email because I'll bet you I introduced myself as working for Frank and you didn't even read that part.

Speaker 2: 12:11

That happened. That did happen a lot with new fighters. They, you know, get introduced around the office and came in and I was like, oh, and here's our lawyer. Who the hell are you? Yeah?

Speaker 1: 12:23

who the hell are you? Oh, I've been here for six months and then, and then I'm Frank's like what's going on with these like three deals? And I'm like, well, these people want an agreement and this guy, john, isn't getting back to me and and I'm like I need these agreements, I need it done, like soon. And then I remember it, cause I was in the apartment that I was renting that like a night, like I was just there like a couple of weeks, and I remember I get the phone call from Frank and then he brings you in and then you start yelling at me like who the fuck is this guy? Who the fuck does he think he is?

Speaker 1: 13:00

You and I telling me to do this.

Speaker 2: 13:03

Frank set up the call I remember it now and you and I were on the call and Frank wasn't there yet, right? And by the time Frank got on the call, we were at each other's throat and I was reading either I had act.

Speaker 1: 13:18

I was like who is this asshole? Oh hi guys.

Speaker 1: 13:23

You were trying to do was saying all right, I'll write you your agreement when I have time. But you're also trying to make it that it was like an Adobe that I could only do drop downs in certain sections and you're going to lock the contract. And I was like I can't do this and have to deal with this like traffic, like jam, every time we have something and then have to beg you and wait two weeks for you to finally get back to me. So I remember arguing with Frank about saying you're getting in the way.

Speaker 2: 13:54

The negotiations on the contract either. That's the thing is. You know we don't want you issuing a thousand different contracts. We want to know what every one of them says without having to look it up, because God knows where Gabriel is putting them after they get signed. Don't worry about it no.

Speaker 1: 14:12

So Frank said let him try it without all the restrictions and get him the get him the damn contract. And he did, and we never had a problem regarding that contract in the seven years I was there. Right, Right.

Speaker 2: 14:26

Yeah, that's, true actually.

Speaker 1: 14:29

Yeah, or the other 20 variations we use. You know what happens, though. What can happen, though, in Brokerage in general and it did happen at Uniregistry, and I never told you this but what can happen is like some buyer changes things in the agreement and then someone, and then you're done with that agreement and you forget about it and the sale happens and everybody's happy. And then, like a month or two later, like you, someone says, hey, do you have a copy of an agreement? And someone's like, oh, you could use the you know sawcom agreement. You know, just use that one, and then that becomes one that someone uses, and now you have changes in it that you don't know about. And then it's like you come, it comes back like six months later and you're like, oh, what the? You're looking at it Like, oh, not good, but hey, you know it is what it is.

Speaker 1: 15:18

But to give some people some more background, so when I got there, one of the main things that we had was Frank's portfolio of 350,000 names, and on a daily basis it had over a thousand people inquiring to purchase his domains.

Speaker 1: 15:34

It could be from anyone around the world, it could be political people talking about politics, it could be confused people like he had subwaycom people looking to fill their subway cards, subway sandwich people complaining about sandwiches, all kinds of stuff. And then when people would come in, everything would be put into a CRM and John had an account in the CRM and the leads were distributed to each of the salespeople and then, on top of Frank's, we also had all of the other hundreds of clients that were using our brokerage and we would have all of these leads coming in and we would save all of the communication. All of the inbound, all the outbound communication was all logged in this CRM and John had an account of his own and that if there was any kind of threats or issues or questionable thing going on, whether there was like illegal activity, we could click like ask lawyer button and then there was like a dropdown of options, you know like trademark threat, other I don't remember what they were, but it was like DEF CON one, two and three, right, yeah.

Speaker 2: 16:39

And then, we would go ahead. Yeah, questionable targeting. Check the targeting on the name.

Speaker 2: 16:48

Yeah first inquiry on a name, do a quick background check on the name, suspicious inquiry, direct trademark threat, yeah that kind of thing. It was such a cool feature too Cause. And what was kind of unfortunate is we had kind of talked about had that the Uniregistry system going on, making that a feature that could be rolled out where people could add their lawyer to their account, whoever that lawyer might be, and have a you know. Oh, this conversation's gone south, I want a lawyer to check it out, or you know have, so that lawyers could say, oh, okay, well, I'll set up an accounting here and do that for my clients. But yeah, that was a lot of fun. It was kind of the secret weapon of you know, part of Uniregistry success was that little you know backend where it was.

Speaker 2: 17:42

You know, you'll see things in some of the UDRP decisions. For example, there's a decision on PuketPuketcom, which is a variant spelling of a destination in Thailand, and if you read that UDRP decision right, it says well, the trademark inquirer inquired to purchase the domain name and then the domain broker came back and said, well, this is a very valuable domain name because it's a travel destination in Thailand, and so forth. So you could tell by the fact that you know the broker said this, that you know this domain name was registered with that in mind. You know and it was beautiful because you know it would be here's they're making a suspicious claim, you know. It's like respond to them this way. You know, yeah, they didn't know that there was a lawyer, with the strings, the puppets.

Speaker 2: 18:34

They're obvious UDRP was pushing them. Writing.

Speaker 1: 18:37

Exhibit A. Writing Exhibit A in the first message to them, and they're just setting them up for a real situation.

Speaker 2: 18:45

Yeah, and that was that was one of the lessons we also had an orientation course from for all the brokers, and that was one of the. What you just said was, when you are responding to a sales inquiry, you are writing Exhibit A in a UDRP complaint, and you know so it should reflect the reasons why the name is valuable and things like that. So you're a really good student I was.

Speaker 1: 19:11

But I was also interested in it because we also had, you know, our situations, that we had companies that might, if the broker didn't respond the right way or the targeting for parking was wrong, then they would have really had a legitimate claim of taking the domain as theirs because it could be causing damages or whatever it is. But then we also had a lot of people who filed for the trademark yesterday and Frank owned the domain for 20 years and it was a generic word and or they would you know say well, you get to give it to me you know, and us having a deal with people like that or people threatening lawsuits in general.

Speaker 1: 19:53

You know you brought up the. You brought up the call that we had when we met each other and argued with each other. But for the record, frank and John lugged through the Cayman Airport a stuffed animal banana the size of himself through customs to bring to us as a gift, because you thought it was funny that this guy spent like all of his life savings at a carnival to win this banana. So John bought the same banana and then brought it and brought it into the office for us as a Christmas gift. So what we used to do is, after we had this giant banana would be when we'd get like some people would send in writing threats to the Cayman Islands and find our company address and it would be letters of you know, like cease and desist or whatever, and sometimes it wasn't even from a law firm, it was just in general from a person. So we used to laugh and say, all right, just feed it to the banana. And so it would be like a pile of these that we would just throw at the banana because the banana was in the corner of the room.

Speaker 1: 20:54

And we also got a remember when the woman sent us her underwear she tried to return them. She said they weren't up to her standards or whatever. And then she mailed a pair of underwear to us to the Cayman Islands. And it must have cost her 50 bucks to mail the $10 pair of underwear to us. That was interesting.

Speaker 2: 21:12

Oh well, and to incentivize the brokers to send me the best examples of you know idiotic ravings of trademark attorneys and people who believe they have trademarks, there was, of course, an award. The John Berry Hill Award of Excellence would go to the most recent broker who bought me the best bozo, and we'll leave it at that.

Speaker 1: 21:38

Yeah, we sure will do that, john, but that was definitely. We had a lot of fun. I mean, we also had the situation I'm sure lots of people are really tuning into our old war stories but I remember that we had a situation where a lawyer was threatening Frank in one of his names and you reviewed the name and then you decided which I wouldn't even think about this, because I would just assume that someone saying they're a lawyer is actually a lawyer. So this person was threatening you in a lawsuit and not you but Frank in a lawsuit and saying you take the name. And then you decided to look into this lawyer and it turned out she wasn't a lawyer but she was actually still in law school and I remember your response was telling her that it was actually a crime in the state of Texas for you to be pretending to be a lawyer when you're not. And then I think you cited some other things and mentioned you were gonna let the Bar Association know and then you could never. I will end your career before it begins.

Speaker 2: 22:44

I didn't say that. I said I probably said it could end your career before.

Speaker 1: 22:50

Yeah, no, no, you didn't do it. You were threatening that you could do this if you don't leave us alone. And then, when that was done, she asked you if you were hiring interns. So you beat her so bad. You know she wanted to become your pupil, so that was one of the funny ones that sticks out.

Speaker 2: 23:11

That's a funny one, john Barry. He'll threaten to some kid.

Speaker 1: 23:15

That's freaking hilarious, I know right.

Speaker 2: 23:19

All right.

Speaker 1: 23:19

So for our listeners, that a lot of people are domain investors, are thinking about purchasing domain names in general, and we're talking about what our relationship was like and working with domains. You know I wanna ask you before we really get into this is your resume having a bachelor's in engineering and a physics minor, so you must have been a lot of fun in college. Then a master's in engineering right so in and of itself.

Speaker 1: 23:50

That in and of itself okay, is something that is pretty impressive as it is and a lot of work to accomplish right and getting a master's you all is it. And then I don't understand what the doctorate of philosophy in electrical engineering can you actually? Explain what that means.

Speaker 2: 24:11

Usually you say that the PhD stands for pile high and deep, but I was seduced as an undergraduate into a research program at the University of Delaware that kept me engaged, kept me employed and paid, and I just continued to stay within this research program that I had gotten into thus working through, and I had a very, very good thesis advisor who I think the SEC might allow him to work in a public corporation these days, but he's a very, very dynamic guy. Yeah, and actually it was during the course of my doctoral work. I was working in semiconductor electronics the physics of dirt, just making rocks and electrons do happy things together and we applied for a patent on the thing that I ended up making and it kind of got me exposed to this idea where I'd always had this conflict between well, yeah, it was a lot of fun in college doing all this technical stuff, but I also enjoyed talking about stuff. Anybody that knows me knows I enjoy words and I enjoy playing with words and putting them together, and I found out there was this whole field where those two things really come together. If you like to explain things, if you're fascinated by new stuff, you know patent law was a good field to get into for someone who enjoyed talking about technology.

Speaker 2: 26:01

I had briefly worked in a small laser company out west in a very interesting couple of months where I lived in Northern Utah for a little while, completed a project out there, came back and then got a job with a Philadelphia law firm where I had first I had responded to an ad in the IEEE spectrum it's like the electrical engineering nerd monthly, right, you know the centerfold of the transistor, that kind of thing.

Speaker 2: 26:39

And I saw a New York law firm was advertising for what are called patent agents, because in the US you can represent people in the patent and trademark office and in patent applications without having a law degree, as long as you have a technical degree and pass a patent bar. That's administered by the patent office. And there are law firms that hire technical people and make patent agents out of them. And I had gotten this interview. They said like 200 people responded to the ad. They were gonna end interview seven people for one physician and I was one of the seven people they interviewed and I thought, well gosh, you know, maybe there's law firms that are just looking for this kind of thing anyway. And if I was seven out of 200, if I just do. You know cold calls your favorite thing, right, you love cold calls that's your favorite, yeah.

Speaker 2: 27:29

Cold letters to law firms. I had an interview with a prestigious law firm in Boston I could have ended up up there and a few more and I got a rejection letter from this dinky little law firm in Philadelphia and it only had like seven people and I was an accident that I wrote to them. But after sending me the rejection letter they called me back for an interview, ultimately hired me. I remember my first day of work. I go to, you know, center City, philadelphia, glass Tower, market Street, a block from the you know that wedding cake city hall that you always see of Philadelphia city hall. Well, that was the view from our office. You could, you know, look up William Penn's coat. We were at the right angle. He's holding the deed to the state of Pennsylvania. I don't know if you're familiar with William Penn at the top of the city hall, but he's holding the scroll right about waist high. So if you see him from the right angle, it's a really interesting statue. But they put the Phillies cap on him in the World Series. They put the Phillies jersey on. Yeah, that kind of thing. And you know, really happy go to work and had the same experience. I walked in and the receptionist looked at me and goes what do you want? I'm like I got hired. She's like nobody told me.

Speaker 2: 28:47

And funny thing, the firm Dan Dorfman, harold and Skillman was started by Marshall Dan, who was the commissioner of patents in the Ford administration and in a long time Philadelphia lawyer. He had in fact been the head of the patent department at the DuPont Corporation, which is very important to people who live in Delaware. I grew up in a DuPont engineer family, you know kind of thing here, and they had just moved into their new offices because the office tower they were in had a fire and they didn't have a place to put me. So they put me in Marshall Dan's office because he didn't really come in. He just kind of had an office to have an office, but he was winding down and retiring and so I had this huge office with the actual plaque from his time as commissioner of patents and trademarks, you know, behind me. So that was how I started off. But that's you know Did you?

Speaker 1: 29:48

steal the plaque when you moved on to your next job. I think I can see it behind you.

Speaker 2: 29:57

I know you don't you know Is it over your right shoulder? You don't see it behind me? Well, when Marshall passed away, I had gotten in touch with various people in the family and so forth, and actually no one had any particular interest in it. So, yeah, I actually do still have that plaque, do you really?

Speaker 1: 30:21

Yes, I do so it wasn't that I said you deny it. They let you have it. That's what you tell people.

Speaker 2: 30:28

I keep donating it to something. I mean maybe like the National Hall of Fame of Inventors or maybe there's a USPTO museum down there in Arlington I haven't been lately, but yeah, it should get somewhere.

Speaker 1: 30:41

I guess. So you were the engineer working on the project applied to some law firms. This one of seven people which was a mistake hires you, You're practicing, they paid for law school or you're paying for yourself at the same time. What happened there?

Speaker 2: 30:58

Well, I had. Actually, in order to improve my chances of getting hired by a law firm, I took the LSAT. What did you get on it? I got a very high score and that qualified me for a half tuition scholarship. And what was entertaining was because I was working full time and it was about two, three years after I started working that I actually applied to law school. My score was still good, but I had applied to in the Philadelphia area. I was living in Wilmington, delaware, so the Delaware Law School campus is near one of the one of the commuter rail stops, and so on the application form, they said why did you choose to apply to the Widener Delaware Law School? And I said it's convenient to mass transit and they gave me a half tuition scholarship.

Speaker 1: 32:01

So and that's where you met your current wife. So what are they like?

Speaker 2: 32:09

Yes, that's where I met Mary Jo. A lot of people hear me talk about MJ and some people don't know Mary Jo. I think I'm referring to something else, but she is the light of my life. And the other important thing was that she finished fourth in our class. I finished sixth in our class and I thought, well, I never want to have to yeah, I never want to have to argue with her. So I married her. But after the first actually actually my first semester in at Widener Delaware Law School, I was first in the class and finishing the first, finishing first in, like the first or second semester. They then gave me a full tuition scholarship for the rest of it. Just keep going. You know what I love is that? Yeah, I think I said that actually my second semester in Widener Church.

Speaker 1: 32:58

When you go to a college or a law school, they always talk about the rich history of like my dad went to Suffolk Law School and my grandfather went there, and it's like you go in there and there's like a building of all these donors and they're talking about the rich history and the people and the community. And then the Dean is gonna give his remarks and he's wearing a purple robe with all these things on it and then they're talking to you all about that and you're like, yeah, it's only like a half mile from my house, so that's why I wanna come and I'm like nothing to do with all of the things that they talk about in, like the prestige and like what's gonna happen with your career if you come here.

Speaker 2: 33:36

Well, a lot of things can happen Now. I went to the University of Delaware and I think on the internet side, a lot of people know that the University of Delaware was a very interesting place to be during the development of the internet because we had Professor David Farber who was one of the fathers of the internet. We had Dr David Mills who recently actually just last, also last month passed away the inventor of the network time protocol that makes sure your clock works right on your computer. And also at the University of Delaware at the time I attended. Well, during the long time I attended for years and years and years, new Jersey governor and presidential candidate, chris Christie was a graduate of the University of Delaware.

Speaker 2: 34:26

The McCain campaign advisor, whose name escapes me now, steve, whatever his name, he studied for a time at the University of Delaware. Joe Biden is a graduate of the University of Delaware, so occasionally he would do the commencement speeches, because he's probably the only thing that comes out of the University of Delaware that people are familiar with other than our mascot, the fighting blue hens. Delaware is one of the few schools where the mascot is served in the dining halls. The fighting hens, the fighting cocks. Delaware was famous for its fighting cocks. So you need a fighting cock, we're the place to go. And then, of course, when I got accepted to Widener Widener is not the most prestigious law school, I will say that it is kind of a I needed a place that was convenient to go to get a law degree at night Of course.

Speaker 2: 35:28

Because I had a full-time job and there's only you can go all the way out to Rutgers, you can go all the way up to Temple or Villanova and then get home at night. It's just not happening. Wider was convenient to public transportation, but Widener and when I got a, the partner, the managing partner, the law firm when I got accepted I'd been working at this law firm for three years and I was their star patent agent and I got accepted to Widener and the managing partner said you know, widener's not the most respected law school that there is. And I looked at him. I said you think I'm gonna have a hard time finding a job when I get out. And he's like oh, no, no, no, no, no, no, no. You know, in the news Now Widener has two campuses, the Delaware Law School and the Harrisburg Campus, and one of our distinct graduates from the Harrisburg Campus is Alina Hava, who many know as Donald Trump's trial lawyer, who has concluded several recent trials with her client.

Speaker 2: 36:36

So she is a graduate of Widener University. The other thing that is inescapable in, of course, the state of Delaware was that during the time I was there, there was a small seminar class every semester that would accept like 12 students for Saturday mornings from nine to noon to, and it was a writing course, so you had to do a paper for advanced topics, selected topics in constitutional law, and the topics were selected topics because it was whatever Joe Biden felt like blowing off steam about for three hours on a Saturday morning back during the Clinton impeachment. There was some rules around it because you're gonna spend three hours every morning with a US Senator who's been the head of judiciary committee, the head of Senate Foreign Relations Committee, worked with many presidents, democrat and Republican alike, back when that was possible, and he there was a kind of you can't go off and say, hey, guess what Joe Biden said the other day, but I will, yeah, yeah, yeah well there's no blue smartphones either, right?

Speaker 2: 37:51

My favorite Joe Biden story is that the most dangerous place on the planet for a number of years was between Joe Biden and a camera. Okay, it's not somewhere you wanna be, because any media opportunity, any speaking opportunity, any place he could flash this brilliant smile he had, he would go. And so during our class he was recounting the Robert Bork nomination. Robert Bork was a nominee to the United States Supreme Court who was one of the first nominations in modern history to have really gotten hung up over deep political issues and Robert Bork was refused by the Senate and ultimately Joe Biden is head of judiciary and Ronald Reagan did get together consult on kind of a short list of who would make it and who would make it, and we moved on from that. But there were so a lot of remaining deep bitterness between Judge Bork and Senator Biden and one of the students in the class said you guys should go on Celebrity Deathmatch and I remember that it was an MTV show, it was a claymation show, celebrity. And so he said you should go on Celebrity Deathmatch.

Speaker 2: 39:26

And Joe Biden is like Celebrity Deathmatch, what's that? The guy says, oh, it's a show on MTV. And then Biden's like oh, a TV, you can see him. You can see him light up. There's a TV show. I should go on that I haven't been on yet, right, because I mean Of course, politicians are politicians. There are-.

Speaker 2: 39:48

Any chance he gets Any politician right. So he's hearing about this and he goes. So what goes on in the show? And this guy says, well, celebrities come on and they fight to the death right, and Biden's like, to the death. Really, it's not like he spends a lot of time watching TV, god knows no probably not. He's like to the death really, and the guy's like it's claymation and Joe Biden's like what's claymation?

Speaker 1: 40:23

He goes what's claymation?

Speaker 2: 40:24

And you could just see him go like oh okay, well, let's get back to the topic.

Speaker 1: 40:29

Disappointed.

Speaker 2: 40:30

I know right. Otherwise he would have been happy to go on TV and fight Robert Bort to the death over a judicial nomination. That was, by that point, already you know pretty old, so-.

Speaker 1: 40:43

All right, well, let's get back to you instead of talking about the Bidens and gossip. So then you're there, you finished law school you're at the patent place. So then let's kind of get the more of a bridged like when did you have this idea that you wanted to get into more of like intellectual property and get away from the patents?

Speaker 2: 41:03

Oh yeah, more broadly speaking, I was going to continue on in patents and since I had started at this firm in the early 90s, I was sort of there when the internet bloomed and became a thing, and because I was commuting on the train, I actually also was on the train with people from the University of Pennsylvania that were involved in some internet stuff at that time as well, and yeah, so it found me more than anything else.

Speaker 2: 41:37

There were some early domain disputes. That sort of caught my attention, and one of the things I had kind of hoped to be as a lawyer is being able to do things for people that deserve justice. Every now and then you do like to think that you're doing some good, and a lot of these times are coming out of people being bullied. And before the UDRP, network solutions had this very sort of draconian sort of thing where if somebody had a trademark, they'd show the registered trademark to network solutions. Network solutions would come to you and say do you have a trademark? If you didn't have a registered trademark, they would suspend the domain name and that would be that and when they suspend the domain name, but the trademark holder wouldn't end up with it.

Speaker 2: 42:31

No, no, to get it transferred the trademark holder would have to jump through some other hoops.

Speaker 2: 42:35

It was a mess.

Speaker 2: 42:37

It was one of the things that ICANN was chartered to solve was this sort of weird network solution policy that created bizarre incentives because people found out that you can get a registered trademark in 24 hours from the Tunisian trademark office.

Speaker 2: 42:58

You send in a application and a big check to a lawyer in Tunisia who runs into the Tunisian trademark office and runs out the next day with a registered trademark that you could then say to network solutions I have a registered trademark. So people were getting, and in fact, if you look at one of the early UDRP cases Madonnacom, involving Dan Parisi, who was one of the early demanders, among the factors discussed in there is the fact that he has a Tunisian trademark registration and that was sort of one of the early UDRP cases that set up a double standard where we pretty much take it face value any piece of garbage that the complainant comes up with with a government stamp on it as evidence of rights. But if the respondent does the same thing, we're going to critically evaluate. Well, he didn't have any genuine intention to conduct any sort of bona fide commerce in Tunisia. Obtaining a Tunisian trademark registration was just an artifice designed to protect the domain name.

Speaker 1: 44:05

But how do they know that? Why do you? Well, why do you? We've been considering opening an office there for two years, Of course, right, yes, yes.

Speaker 2: 44:18

Who wouldn't want to market? I think it was like email services or something to Tunisians for Madonna.

Speaker 1: 44:24

You start up Capital of the World you know.

Speaker 2: 44:25

Yeah, there are many, you know how much money's coming out of? There Big Catholic country, Madonna's a big thing. Actually I have a few of my own, so there we go. Sorry, my lady.

Speaker 1: 44:41

Sorry, lady. So the thing is so the UDRP, I can kind of created WIPO, or WIPO was created, or how did that work out?

Speaker 2: 44:52

WIPO. This was another funny thing coming in from the bizarre angle that I came in on. Wipo is a UN treaty organization. There exist a number of intellectual property treaties that govern the international processing of trademarks. There's an international patent process where you can apply at the blah blah, blah blah, whatever it is.

Speaker 2: 45:12

Anyway, wipo was created to administer certain multilateral treaties that relate to intellectual property and trademarks and patents and so forth. So they've existed for quite a long time and WIPO became interested in emerging intellectual. They've always been interested in emerging intellectual property issues. So WIPO had convened the original panel of experts that developed the thing which became the UDRP. Wipo likes to tell a story slightly differently. Actually, wipo produced a draft that went into the ICANN process and was further modified to become the UDRP. And there are these conspiracy theories about WIPO and so forth. And really to put things in perspective, if you look at the things WIPO does international trademarks, patent applications, so forth in terms of volume, revenue, personnel, complexity the UDRP is a minor, minor piece of either the larger world of WIPO, but an interesting one for them because they like to be engaged in cutting edge issues of international and electoral property issues, which the internet is an abundant source of.

Speaker 1: 46:41

Do you think some of their UDRP findings spill over to their other work and their other parts of the company and their other decision making?

Speaker 2: 46:50

It's very compartmentalized, actually. What's kind of funny, and I don't know if I haven't been there for a while but at one point you go to Geneva and there's this beautiful gleaming glass building up the street from the United Nations Geneva headquarters, just down the street from the Red Cross. If you want to go to where the UDRP operation takes place, you leave that building, go down around a corner, down another little street into a little squat building made of. It looks like a holding thing for the Geneva Police Department. It's this little city block building that's just jam-packed with legal interns from around the world who are there on a two-year stint to manage cases. When you say WIPO decisions, they aren't. Wipo administers the UDRP. The people that decide them are independent panelists who are chosen from by WIPO from among the intellectual property profession around the world and having expertise in this particular area.

Speaker 1: 47:57

So can a panelist also be someone who represents people in a UDRP? Can you offer your services and be kind of a double?

Speaker 2: 48:09

agent, the best law school exam question. I'm going to tell you how to answer this question all the time. Any sentence that begins with can a judge? The answer is yes, civil procedure courses get hung up by people. Can a judge yes, yes, a judge travel faster than the speed of light. I don't care what it is, yes, a judge can do it. It's like, well, how can a judge travel faster than the speed of light? It's like, well, go ahead and say you didn't take them to court and guess who gets to decide. But in fact, that is an interesting question because many, yes, many they are trademark experts with leading firms around the world. They practice trademark law.

Speaker 2: 48:58

By and large, they're in large, most, if not many, of the UDRP panelists represent parties in UDRP proceedings. There is a couple of interesting things that have arisen of that. There is, for example, a UDRP panelist who decided a case involving a particular complainant and then they show up two, three years later as that complainant's attorney in UDRP proceedings. So yeah, those things happen. Very few UDRP panelists have defended a UDRP proceedings at this point, but when I say UDRP panelists, udrp providers, there's more than Waipo. So, for example, zach Moskovich from the ICA he is an accredited UDRP panelist with the Canadian arbitration or Canadian internet something, dispute resolution, whatever they do.

Speaker 2: 49:55

A couple of UDRPs. And Gerald Levine, a very highly regarded recipient of the Lonnie Bork Award, is a UDRP panelist, I believe, with the National Arbitration Forum and one of the leading intellectuals in the area of domain name dispute. He actually he has a forthcoming book come out which I would suggest anyone interested in the subject buy as soon as it is available. He's had a bunch of people looking at this thing. It's going to be clash of the clash of trademarks and domain names or something like that, and when it comes out it'll be worth buying at any price. We're ripping off. You know, get a, get a, make a PDF and pass it around.

Speaker 1: 50:43

Yeah, you can get it off Pirate Bay or somewhere like that would probably be the best place to get it right. Right, of course I'll set up a website. Yeah, it's totally fine to go get it at the library, as long as you renew it every week, but to download it off the internet, that's just ridiculous. Yeah, all right. So let's talk about UDRP real quick, the mechanism of it, and then let's talk about some really interesting ones that you and I find to be extremely comical and what happened in them for some people listening with nine minutes left in the hour for anybody who isn't asleep yet.

Speaker 1: 51:15

Yeah, exactly, but I think I think some people are going to find this interesting. We're definitely going to spill over one hour, so we can potentially make this a two part series, but a UDRP in general. There's three things you got to. You have to prove is the domain is identically similar to your, to the person's trademark Yep. The opposing party has no legitimate rights to the domain. They have registered Yep. Number two and number three the domain name has been used and registered in bad faith.

Speaker 2: 51:44

Yes, those are the three things that somebody needs to prove All three of them this, that and this right. Yes, and you know so. There are common misconceptions around. You know around what kind of things I think on the domain or end. You know. The first thing you said proved that it's identical or confusingly similar to a trademark in which the complainant has rights, the. There are registered trademarks. Governments issue registered trademarks. People apply for them. The governments have different rules for registering trademarks in the United States and in many countries around the world and broadly under the UDRP to some extent.

Speaker 2: 52:27

Where you get trademark rights in the United States is by running a business and using that name. All right, if you have a distinctive term that you've been using to sell your product, your service or whatever it is, and consumers recognize that as oh, that's that guy that does this thing. You have a trademark subject to, you know, maybe, some other conditions In the US and in other countries. If you want to enhance your rights, if you want to make them more enforceable, if you want to give public notice, if you can get all kinds of benefits by registering your trademark, okay, it's sort of like you can have a dog, all right, and and and it's a lovely little dog and it's got it. It wags its tail and it it. It poops on the carpet and you don't need anything else to own a dog, all right. But if you live somewhere where if you're going to walk your dog in the public park, you need to get a license for your dog, you know? Then you can go register your dog and get a dog license, all right.

Speaker 2: 53:33

Now if I want to know, if I'm thinking about okay, well, I don't know, if that guy has a dog or doesn't have a dog, all right, I and the dog license is good for five years, I go. I want to find out if Jeff Gabriel has a dog. I go to the whatever Swampland in Florida, you live in the county office and yeah, it's a Gatorville, usa, you know or you can't have a dog because it goes missing all the time. It's like alligator treats. Whatever I go to your county office, I look up your name to see if you have a dog license. Now, if it says, oh, jeff Gabriel has a dog license, okay, does that mean that Jeff Gabriel has a dog?

Speaker 1: 54:20

Most likely, but not 100%.

Speaker 2: 54:23

Yeah, they last for five years Maybe. Maybe the Gators got your dog in year two, so you've got three years.

Speaker 2: 54:29

You've got three years left on a dog license. Well, I look up and Jeff Gabriel is not in there, because I'm trying to rob your house, right, and so you're not in the dog license database. So I say aha, jeff, does that mean Jeff Gabriel does not have a dog? You know, no, it doesn't. You might have a dog, you might not have licensed your dog. Okay, trademarks are exactly the same thing, but without the dog.

Speaker 1: 54:52

Yeah. So what I always find interesting, though, is it seemed that that a buyer will call and say, or an email will say to you like I'm just pulling this name out of thin air, like you know johnsjohnscom and johnsjohnscom, and you've had johnjohnscom for a long time, and some buyer comes to us because they're representing you and they just go. They email you from a Gmail address. The Gmail address doesn't come up with anything and their name is, you know, johnjohnscom, and you can't find them on LinkedIn or find anything about them. And he's like we have a trademark, give us the domain.

Speaker 1: 55:35

And it seems like when somebody says that, a lot of the times, like domainers or people in general will get scared, and it's like they freeze, like they've done something wrong, and in reality, that's the guy could have a trademark, like you just said, somewhere in this planet, and people don't know what to do.

Speaker 1: 55:56

And you always taught us that when someone says that to you, you should probably ask some questions before you do anything else. And the first is who the fuck are you? You're inquiring from a Gmail address. What company? What company are you representing? What is your trademark registration number? You know who exactly are you? Can you identify yourself Right. Those are like the absolute most important things to do right off the bat, and it's always funny when it's someone from like a big company, but they're emailing you or inquiring from Gmail, and then they're they're threatening you. Even if they have a legitimate threat, it's just funny that you're supposed to know who these people are, because if it's a generic word other than them, there could be 10 other million people want the name for their own uses.

Speaker 1: 56:44

Sure you know what I mean and so sure, or it could be another, it could be another side and the spotlight turns on and we're like caught because someone says trademark, when in reality you're like okay, you have a trademark, Good for you. So what is it? Tell me more about it.

Speaker 2: 56:58

Yeah, and the letter said I had to respond in three days. Yeah, yeah, I had to get her to publish her sweepstakes clearinghouse by the deadline too.

Speaker 1: 57:11

My favorite is we were going to save you the time.

Speaker 2: 57:15

Right, you know I mean the thing. And then if you take, you know, if I want to know if Jeff Gabriel has a dog, because I want to ride at Rob's house, well, you know how, about, if I just, you know, go check out his house and see if I hear anything barking. Because what I said about a trademark is, you know, people got to know about it. It's the means by which you identify yourself, you know, and so you know people would. Well, if it's not a registered trademark, how do you find it? And it's like, well, gosh, you know, how would I know if somebody is using John's John's to sell things? It's been called the Google, right, that's the whole point. You know, is there is there a brand of shoes named John's John's? Is there, you know, some kind of sewage service called John's John's? You know it's a kind of a neat little rental thing. And also, you know, what else could the domain name mean? You know I'm, I'm named John, so so if they're asking someone you know named John, well, why do you have a domain name with John in it? You know it sometimes gets a little silly.

Speaker 2: 58:26

Where people go astray is they say, well, I just have a dictionary word, it can't be a trademark. You know, a lot of the best trademarks are dictionary words. Apple is a dictionary word. There's a popular soft drink, two of the ingredients, sarkoka and cola. All right, but it was, you know, they've been doing it for a long time. There's there's an airline in America called American Airlines and they've been doing that since 1937.

Speaker 2: 58:52

But so a trademark consists of two things it's, you know, the word, the term, the picture, whatever it is, in our case, usually a sequence of characters. And then there's the goods and services that it's used with. So if you know, apple for computers, you know, obviously is a not a descriptive word. Apple for apples is a descriptive word. So you know what frequently matters is well, so this guy has apples for salecom. Why does he have apples for salecom? All right. And if you know somebody says, hey, you know, I'd like to buy that domain name, and he comes back and says, oh, yeah, it would be great if you're selling, you know, computers, like because of Apple, you know. You know that's one thing you could say you know, or are you Apple corporation? I'll sell it to you for a million dollars. But if you have apples for salecom, you know there's probably more fruit apples sold than the computers themselves. It's probably collectively a larger market. I mean, look at, you know what's his name. What's his name? I'm really sorry.

Speaker 1: 1:00:04

Johnny Apples.

Speaker 2: 1:00:05

No, no, no, I I the Vidaliacom, the guy that sells the onions, or yeah, what? No, he's watermeloncom. Yeah, he's watermelon, yeah.

Speaker 1: 1:00:18

And I don't know.

Speaker 2: 1:00:19

This is why this is why I shouldn't do names. Can you, can you? Can you tell you know like I had Joe Biden as a professor?

Speaker 1: 1:00:25

I can't remember Jack, anyway so let's, let's go, let's turn it up a little bit here with that, though Like so you're John.

Speaker 1: 1:00:39

Johns or Vidalias or Vidaliacom or Applecom, right. So there was. There's an interesting UDRP that you and I said that we both always found was interesting and and a kind of a chuckle, is the story of bodacious-tatascom. Okay, in in the United States, all right, the Webster's Dictionary, for bodacious is outright mistakeable, remarkable, noteworthy, sexy, voluptuous. Okay, right, tatas is a slang and it's not in the Webster's Dictionary. However, tatas in Urban Dictionary, which I think if you ask any male in the United States what it is, they are breasts of the utmost quality. That's, that's what Urban Dictionary says as the as the definition, right. So bodacious-tatas, okay.

Speaker 1: 1:01:40

And a gentleman registered that in in the 90s and he put on that site adult related content, because what else would you do with a domain name having to do with something like that, especially in the 90s, because that was what was paying the most at the time.

Speaker 1: 1:01:57

And this person's in the United States. And then this company came along, which is a multi-billion dollar international corporation called Tata, which in the United States they own company Land Rover and other car brands, but they're not like, if you ask people on the street what Tata is as a car company, I bet you a lot of people wouldn't know that they make these cars or different, different brands, but they are a massive multinational company and they filed a grievance, or actually a lawsuit in India saying that this person, this domain name, was infringing on their trademark because they're an Indian based company. And that person, who owned bodacious-tatas, bodacious-tata with an Scom, lost the case in India. But it was a no show, we didn't go fight it, so he lost. Then, after winning the case, the Tata Corporation went and filed a UDRP with WIPO Right Not exactly, but keep going.

Speaker 1: 1:03:06

What happened. Okay, I'm gonna keep going with my own version of the story.

Speaker 2: 1:03:09

And then you can go after it later. No, I'll make you look smart, so anyway, all right, correct, please. It's a tough job, but somebody's gotta do it.

Speaker 1: 1:03:18

Somebody's gonna do it. Please enlighten us as to what really happened, rather than my own warp mind. No, no, no, no.

Speaker 2: 1:03:25

The procedural background of these things is one of the things that makes lawyers' law stories just like oh okay, all right, but yeah, no, you're right. The term bodacious Tata's became popular in American culture after the release of the movie An Officer and a Gentleman. It was, of course, everyone recognized it for what it was, but that movie in particular, involving All right.

Speaker 1: 1:03:58

So it's a well-known term or phrase in the United States the registrants in the United States. They're putting something that Americans love on there that is absolutely legitimate to do and not against the law.

Speaker 2: 1:04:08

Right, yeah, guy, in New Jersey, and the Tata Corporation is, yeah, one of the largest industrial companies in India, big multinational company, and so this was they filed a lawsuit in India. The thing is, lawsuits in India take forever, all right, but they filed the lawsuit so that network solutions would lock the name. Okay, cause when a lawsuit independent of there are other things besides UDRPs when various kinds of lawsuits get filed, some registrars lock the name. Whether they should do so, depending upon the jurisdiction, is a great topic, but anyway they locked the name. And then, because the lawsuits took so long at that time I don't know what it's like at this point they also filed a UDRP and the UDRP got assigned to a panelist who was from India.

Speaker 2: 1:05:09

The guys in New Jersey had no idea what was going on but weren't really necessarily interested in responding to all these crazy packages of things they were getting from overseas. So they just let it go and the arbitrator assigned to the case very prominent Indian intellectual property attorney felt that well, you know, is it? And this was early days? We had to reason is this confusingly similar to the trademark? And it's like? Well, tata's is certainly, you know, a reference to the Tata's, the family, the brothers, the empire, so that part is and bodacious, like you said, it means grand or large or prominent, and so it's like the prominent Tata's. Well, that could only be a reference to the bodacious Tata's of the Tata corporation.

Speaker 2: 1:06:05

And so he transferred the name, or he ordered the name to be. I think he ordered the name to be canceled. I'm trying to remember, but he might have ordered it. Yes, he ordered the name, I think, to be canceled, and the name was never canceled. And there is an option in the UDRP because the people that wrote it didn't understand that if a registrar deletes a name, anybody could register it again. Yeah, and I had. I developed a hobby early on of registering the ones that got canceled and putting funny websites there to make fun of the lawyers and the process itself, and so people stopped doing that, and I was waiting for this because this would have been the crown jewel of my collection.

Speaker 1: 1:06:45

Yeah, oh, yeah, yeah, yeah.

Speaker 2: 1:06:48

And I got contacted by the guys in New Jersey about this. I said, hey, do you want me to grab this and get it back? And they're like, well, we got this lawsuit in India. And I'm like, no, it's a lawsuit in India, who cares?

Speaker 1: 1:07:02

Don't put India on vacation.

Speaker 2: 1:07:04

Great legal advice. I'm not a journalist.

Speaker 1: 1:07:05

Other than that, you're good.

Speaker 2: 1:07:06

Right, and so they didn't care if I recaptured the name, but it never dropped. It never dropped, and I just thought it was an oddity that it just stayed that way. It stayed that way for years. All right, these tatas, they were never gonna the. I mean. Normally, over time, the bodacious tatas will drop right, but these bodacious tatas were staying where they were over a long period of many years. So so, but do you think?

Speaker 1: 1:07:40

do you think Actually?

Speaker 2: 1:07:41

I've found out.

Speaker 1: 1:07:43

Do you think that only because they had an Indian panelist that it went this way and that the Indian person did not realize how popular of a saying that was in the United?

Speaker 2: 1:07:52

States. Do you think that would go? He had no idea he wouldn't. You know there are weird slaying expressions all the time. I mean you worked with people from the UK. You know the funny stuff that comes out of your mouth.

Speaker 1: 1:08:05

I understand that but this is a pretty strong one, and if you say it to any male between the ages of like 25 and 65 years old, they're gonna know what it means in the United States at least that casual word that they throw around as an insult in the UK, that when someone in the US hears it goes oh my, what did you just say? Oh yeah, yeah see you next Tuesday is insane yeah.

Speaker 1: 1:08:31

To know, to know American slang, you know, is a lot to ask of you know an Indian trademark attorney, regardless of how well experienced he is, but but then, looking into it though, like as a panelist, he obviously went to the site and saw there was adult content and if he searched that, there was a term that was pretty common for adult related stuff.

Speaker 2: 1:08:55

Yeah.

Speaker 1: 1:08:56

You would probably see that that was, you know, made sense. So so that in the end, well, there's a lost the UDRP, he lost the name.

Speaker 2: 1:09:04

There was. There's also. There's also a debate about how much research should panelists do on their own. I mean, in normal adjudicative processes you have two sides arguing it out the judge in sort of English based US, then US legal systems. The judge is a neutral finder of fact, that you know. Things are brought to him, they satisfy the rules of evidence. He rules on that. He doesn't go off and look for stuff. All right, yeah, and you know so. There was no evidence to the contrary. And this reference to the bodacious Tata's was being used in connection with, you know, material that I mean in India, in Bollywood movies. You know, I don't even know if this is still the case, but they couldn't show men and women kissing in movies. All right, oh yeah. So the idea of you know, these kinds of websites being freely accessible is pretty, you know, pretty shocking to people's sensibilities.

Speaker 1: 1:10:08

If you got, if you had this UDRP right now and you noticed that the panelists being assigned to the UDRP is someone who is going to be totally out of touch with this situation, like this person seems like he was, could you ask for a different panelist? No, you just have to educate them.

Speaker 2: 1:10:27

I mean, I leave nothing to chance. I had a UDRP on the word squirrelscom, all right, in line in the argument I had a picture, you know, of a squirrel, all right, I mean, I had elkcom and I used a picture of elk. Right, I have the, the, the, the.

Speaker 1: 1:10:46

Sometimes you're a real wise guy in in some of these UDRPs and I think sometimes you put the picture in there to really try to make the other side look like a bunch of assholes. You know, like that's the, you know, exhibit A. This is an elk. An elk can be found, according to Wikipedia, in Maine. And then you know the tops of Maine and in the area and they migrate across. You know this long thing about what they eat in their you know lifespan and I'm sure you go on and on about it, Right.

Speaker 2: 1:11:15

Well, you asked about. You asked about my favorite like, like what have been my favorite cases and my problem is, my favorite case is always. You know one that I'm doing right now. Okay, there is a pending UDRP dispute. It'll probably be decided by the time this. This.

Speaker 1: 1:11:28

I can hold this episode until so, to make sure that it's out, so it doesn't cause any issues. I don't care. Okay, you don't care, there's no there's.

Speaker 2: 1:11:35

You can talk about these things, okay, and I do on my Twitter feed. I'll say you know, here's a nonsense. Udrp case the. The domain name is toroscom T-O-R-O-S. Toroscom Toros it is. It is registered to a, a person in Spain, and toros is the Spanish word for bull. All right, now, if I tell you that someone in Spain registered bullscom, like 30 years ago or whenever it was, what do you think they might've used it for?

Speaker 1: 1:12:20

Well they're obviously in right. Well, number one, they're infringing on someone's mark on purpose and and since they're not using it, they should probably give it up, Right, I mean? Those are the you know, those are the facts.

Speaker 2: 1:12:33

I said they're, they're, they're. You know, and I even said in the UDRP response you know Americans are pretty, you know, culturally ignorant. And you know there are probably two things that people know about Spain. Number one is Francisco Franco is still dead. Number two is there is in Spain something that goes on with bulls that attracts a lot of attention. Some people like it, some people don't like it. You know it depends on if you're Hemingway or if you're PETA but Gather around.

Speaker 1: 1:13:04

it's a big secret, yeah.

Speaker 2: 1:13:06

They, they ran. They for many years ran a bullfighting site which you know, obviously when people weren't gathering in large numbers didn't become much of a, you know, much of a thing to do. But many of them the complainant is a company in Turkey called Toros, which in Turkey refers to the. There they have actually a set of mountains. It refers to the asteriological sign Toros Vubble Cause it's- so it's even generic there.

Speaker 2: 1:13:32

I mean it's totally generic there, as well, and they're a fertilizer company, jeff All right Bullshit, right Cow shit Toros Guess what, yeah Guess what else made it into my response.

Speaker 2: 1:13:46

So I'm, I'm, I'm waiting on this one, because you know there's a certain irony in a fertilizer company. You know going after somebody who had a website about bulls, when bulls make fertilizer all on their own, and you know, just to make sure, and, like I said, you'd never assume the panelists know what you're talking about. I explained. It's the stuff that you get when you find a north facing bull and wait at the south end of it and you can you must have had a good laugh about that one when you wrote it, huh.

Speaker 2: 1:14:17

Never assume any cultural knowledge. You know because you are in, you know, in an international situation and words, words will strike people differently. So Bodacious Tata's, you know, got transferred and but it or it got canceled and then it never dropped and the reason was, you know network solutions had been told a lawsuit was filed in India. But if they don't hear back, if the case is not dismissed, or you know they don't, you know automatically hear about legal goings on in India. And many years later, as many legal systems started to come online after many years, eventually I noticed one day hey, you can look up High Court, bombay deli cases. You know online what would ever happen with this case. And I found out the case had actually been dismissed for non-prosecution. You know, years ago I have an idea.

Speaker 2: 1:15:13

And so I got a copy of the decision dismissing the case and I said to network solutions you know you now have to implement the UDRP decision and I set up a back order for you know that domain name and you know, had a little, had a little fun with that one while it lasted, for a while too. I don't think I ever knew that.

Speaker 1: 1:15:35

You know these things, so let me ask you this question who paid the renewals during that time?

Speaker 2: 1:15:40

Isn't that a great question.

Speaker 2: 1:15:42

The, you know, for $6, I think most registrars if they have something on legal lock, it's just the cost that they eat.

Speaker 2: 1:15:50

There's a stupid rule.

Speaker 2: 1:15:51

If you want to talk about another stupid thing in the UDRP this is actually in the I can register accreditation agreement there is a rule that says that if a domain name is going to expire during a domain proceeding, the registrar has to let the parties know and give the complainant an opportunity to pay the renewal, you know, so that the name won't drop right, and if the respondent's not going to pay for it.

Speaker 2: 1:16:18

And when we worked on this policy, this was one of the stupid working groups I was in when we worked on this policy someone came up with this dumb idea and I said look, we'll just make the registrars pay the registry, the renewal it's a tiny fraction of domain names Instead of coming up with this stupid thing where oh, okay, I have my whole billing system and whatnot renewal system set up so that people can renew their domain names and now for an edge case that involves a fractional percentage domain names, I have to set up the system where I can bill somebody else for the renewal for this domain name that they don't own and do it manually and I'll tell you, I think-.

Speaker 1: 1:17:00

Then they lose the UDRP and they charge it back on their credit card. And then what are you doing? You know I mean, and what if you stick somebody with? Like withlink I'm investor inlink and we have like the highest tier.

Speaker 1: 1:17:13

I don't know what our highest tier charges, but let's say it's five grand Yep. So then you know, if the registrar is stuck paying for it, why not create frivolous lawsuits with really high renewal rates that somebody's gonna, you know, hold the bag? Obviously, we would never do that, it's just, you know, the times have changed based on that. So we were talking about bodacious tattas. We have another situation where someone came to me and asked me yesterday actually I was talking to the owner of the domain name gotmilf G-O-T-M-I-L-F dot com. Okay, he told me that when I looked it up I looked up the UDRP before this where did I put it? Where did I put it? Well, the gotmilf.

Speaker 2: 1:17:58

the Dairy Board has won a number of domain cases on their very well-known and highly regarded you know, gotmilf Gotmilf.

Speaker 1: 1:18:07

Yeah.

Speaker 2: 1:18:08

And you know that's not something that they necessarily want to have associated with. You know that kind of material.

Speaker 1: 1:18:18

And, but what I'm saying is, though, is that bodacious tattas in the United States? With a multinational Indian company that really the brands of that company are known in the United States but the parent company, tata, isn't very well-known, right, but the saying is well-known. And then the gotmilf campaign started, I think in the late 90s, early 2000s, and I remember Cindy Crawford with the milk under the lip, and I remember other people you know with a glass of milk and the gotmilf and posters everywhere and all that shit, Like it was a huge in the US.

Speaker 1: 1:18:59

And so gotmilf, the UDRP was filed against him and even in the UDRP the findings say that it is very similar to the mark and that the person who registered it knew when he registered it that it was similar to the mark. Yet they still found in his favor and they were even pointing out the panelists pointed out that he pretty much was doing all three things, yeah.

Speaker 2: 1:19:29

Well, well, well, well, well, well, well, well, well. All right, let me unwind that a little bit. And this is where the legal system and the nationality of the lawyer matters. Okay, because the seminal case in the US on this subject is there was a very popular poster in the 1970s early 1970s, you know when you would listen to Cheech and Chong on 12 inch vinyl records and so forth.

Speaker 1: 1:20:06

Dr Gemento, yeah.

Speaker 2: 1:20:07

There was a very popular poster that said enjoy cocaine. But it was the Coca-Cola script enjoy cocaine. And it was in the red type of script that Coca-Cola was in. All right and ha. Very funny, it takes a you know, a well-known American brand and turns it into this thing. Or there were these things called wacky packages that were basically takeoffs on different brands and things like that. Okay, there is a brand of dog toy called Chew-E-Waton all right, and they're little luxury purses and shoes and things that your dog can chew on, all right, and it's Chew-E-Waton. It's this high-fashion dog toys. And Louis Vuitton, you know, sued them, right, and in the US you are allowed to have fun, you're allowed to make comment. You know, you're allowed to satire. Oh well, this is a high-luxury brand and we've made dog toys out of it. It's, you know, you're playing with that association You're making fun of, you know, a product containing sugar and caffeine that's marketed to children and saying you know, enjoy cocaine. You know, and I guess you grow up right, this is the point.

Speaker 1: 1:21:34

Oh, cocaine in it at one point right.

Speaker 2: 1:21:37

So, yeah, it's still has a non-stimulating cocaine extract in it, which is why the Coca-Cola Company is also one of the largest producers of cocaine-based things like lidocaine, novocaine, all those things that ended cane.

Speaker 1: 1:21:50

Oh wow, did not know that yeah so, anyway, the I'm gonna do it.

Speaker 2: 1:22:00

I'm gonna do a Mitch McConnell here, yeah you're gonna stroke out on me.

Speaker 1: 1:22:04

What I was saying is that how is it that got milk? It's parody. It's parody.

Speaker 2: 1:22:09

For a parody to be effective, parody is legal. It's legal to talk about things. It's legal to say I hate Coca-Cola and have. I hate Coca-Colacom about how much you hate Coca-Cola. You are referring to the mark. A parody, in order to be effective, has to bring the subject to mind. That is Chewie Vuitton only works. You look at the dog toy it's a Chewie Vuitton. You go ha, because you are thinking that this is not Louis Vuitton. This is a joke.

Speaker 1: 1:22:39

Yeah, you know the moment you see it, they're not making fake person with leather, they're making dog toys, which Louis Vuitton doesn't make at all.

Speaker 2: 1:22:47

And sometimes these things work or don't work. There was another case, in contrast to the, and this was back when you'd have the black light and the posters on the wall, there was another popular poster that had a young woman dressed as a girl scout and she was visibly with child and it had the Boy Scout motto be prepared on it, okay, and it was, you know, a commentary on birth control, which at that time was well, actually, here we are again. It's a controversial topic, but anyway, it was at that time, you know, which we are returning to. You know, birth control was, you know, a legally interesting topic and they, actually the people selling that poster, actually lost because of the association of sexual immorality with the clean, living youth image promoted by the Boy Scouts, and so it was deemed to be, you know, parody.

Speaker 2: 1:24:00

That wasn't funny to the judge. All right, basically that you know you're, you're, you're, you know you're harming their reputation and it's like, well, yeah, you know, but parody real, you know, incisive commentary, does that. So, you know, got milk is probably years ago. You know, associating got milk, you know, which is an acronym that has a four letter word in it. You know, would be, would be kind of a scandalous you're. You're taking it too far thing where it. But you know it works so well and the panelists got it. But that's a you got to have a panelist. That is you know it understands you. You keep your US parody law and you know a lot of jurisdictions. You know just they do not get the joke.

Speaker 1: 1:24:54

Okay. Why on earth would anybody do apply when they do a UDR P can choose between one and three panelists. Why wouldn't you always go for three, knowing that one of the three will probably be an American who's going to say look, bodacious Tata's is, was in this movie and it's a very common saying, and really bring to light to people or educate them, for you, Like, you always have an advocate who or someone is an advocate from Europe, saying to the American guy like, look, this isn't, this isn't okay or it is. Let's get them like yeah, this is bullshit, you know, like, take the name away, Like. But the other thing is is that we have two situations here. One's parody bodacious Tata's is not parody at all.

Speaker 1: 1:25:34

I think it's genuinely an accident. I guarantee you this guy didn't think I'm going to sell this to the Tata corporation and I'll bet you he was floored when he got the email or the letter in the mail, or whatever it was, or laughed at it, saying who are these jokers?

Speaker 2: 1:25:47

Oh yeah, I spoke with them. They, you know they, they were, they were just, they were just really confused by the whole process.

Speaker 1: 1:25:55

Oh, I'm sure totally like this isn't. Yeah, so, but yeah, I mean it's, it's definitely interesting. But now asking you this and then we can, we can move on to the next one. A real good one is can you cite previous outcomes of similar cases in the UDRP to the panelists?

Speaker 2: 1:26:19

Can you Could?

Speaker 1: 1:26:21

you say you know John, like you're John Barry, all the lawyer working on it. And you say the panelists say his names, like Tommy, tommy. This is the exact same situation as this one and you found this way on this one. And these are the exact same situations. Bang Like could you say that? Or are they going to just not even look at that?

Speaker 2: 1:26:40

That's actually, among other things, that that is. That is, that is a subject of of of debate among UDRP panelists itself. The extent to which why should I be bound by? You know what that other asshole said. All right, and the way that UDRP precedent works. It's not as rigid as you know, say a hierarchical court system.

Speaker 2: 1:27:01

But you know, in the US, for example, you have these, you know, district courts. They make all kinds of decisions. There's 12 circuit courts that make decisions and sometimes, you know, you get principles in law that disagree from you know it doesn't work that way in Alabama. So you know these things have a way of working themselves out over time. But in the UDRP there's just sort of like the weight of opinion you can at this point there are so many UDRP cases you can find a UDRP case that says whatever you want. So when you are making an argument and if you're going to use prior UDRP cases, which everyone does, it's good to see, it's good to pick cases that were, you know, that were contested cases, that were three-member panel cases, that involved particularly respected panelists. Some panelists have more experience and more influence within the UDRP panelists community than other panelists because some of them have, you know like, made it their thing. Every year WIPO conducts a seminar and UDRP panelists training sessions. There are certain panelists who are, you know, chosen on the basis of their experience and expertise to be instructors and they continue to act as panelists. So, you know, there are some that mean more than others.

Speaker 2: 1:28:20

But you know, when you get, you know, a bunch of decisions that say one thing, you know that becomes, yes, the precedent. Now, sometimes that changes. There was a period where it wasn't clear whether or not you could get a trademark. I could register the domain name later, and then we go on our merry way and then you file a UDRP and because of something I'm doing, now you know you could get the domain name, even though you know I think I got it backwards Reverse that I had the domain name before you had the trademark. There was a lot of debate about circumstances under whether it would or wouldn't fit the UDRP or, be fair to say, well, the guy's doing something so nasty now we don't care when he registered the domain name because when he renewed it he re-registered it.

Speaker 2: 1:29:13

Okay, every time you need to agree to that, you know. So there are these kinds of things that they would come up with. Or he used it in good faith for many years but now has changed the use and renewed it, so there's a change. And then the thing is, the UDRP doesn't involve testimony, it doesn't involve physical appearance. You don't necessarily know that people even got adequate notice of the thing it's. You know, here's a piece of paper, here's a piece of paper. There's no experts, there's a lot of due process mechanisms that don't exist here.

Speaker 1: 1:29:48

Well, it's supposed to be for speed though, because you always have testimony and things. That's going to drag on for months and months and months, right?

Speaker 2: 1:29:54

Right, right. Yeah, you know I'm immune from the UDRP because I was. You know I was once president or something like that. You know he's not had a good record lately in the UDRP either, no, he lost. Mar-a-lago. He lost two Mar-a-Lago cases, but anyway.

Speaker 1: 1:30:15

All right. So let me ask you this question while I have you All right. All right, I always want, I wanted to understand. So Nat Cohen, who is one of the board members of the ICA, he is an attorney, he's also a domain investor, keeps a website that tracks the reverse domain name hijacking findings, and there are others that write about it on a regular basis. When they happen, they'll be like our DNA is found for this company doing this and whatever. And I know that when you get those outcomes, you know you're really delighted because that means you really pulverized them in your outcome, right.

Speaker 2: 1:30:59

In the bullfighting analogy it's like getting. It's like in the bullfighting analogy. It's like getting the ear at the end of the, the end of the tournament, yeah.

Speaker 1: 1:31:08

Okay, so, other than everybody celebrating with each other this one term, what does it even fucking mean or matter? Like, like, who cares? You won the fight Right. So it's like what is it that matters to get that, and what does it actually do for the winner?

Speaker 2: 1:31:28

Well, you have to understand. You know the legal profession is not like sales. You know we have, we have standards, we have a reputation to uphold. Oh, we cannot be seen to have been you know, crassly abusing the levers of justice to just for commercial gain of our clients. You know we got a. You know we got a. We got a funny baloney business up hold here, you know.

Speaker 1: 1:31:57

So, like squirrelscom, reverse domain hijacking comes down after you explain to the panel what a squirrel is and that you actually feed them on your deck I've purchased a squirrel feeder for you with a chair and corn cobs and after you demonstrated that you win with reverse domain name hijacking, the registrant finds out, you save the day and you got a reverse domain name hijacking. And then what do you do?

Speaker 2: 1:32:24

Don't get me talking about my squirrel. We had an interesting time. I want everyone to know that Jeff Gabriel actually bought me a squirrel feeder, bought me a little, a little picnic table that holds corn cobs for the squirrel that I feed every day. I have. I have befriended some crows and I have a squirrel that come and visit me every day and keep me sane because people don't like me.

Speaker 1: 1:32:51

So is it a loss with precedent on our DNH? Oh, reverse domain hijacking.

Speaker 2: 1:32:58

It is. It is simply a way of of you know, the panel saying we don't really abide by what went on here. The complaint you know was filed without you know, due regard for you know, because you put somebody through some expense, threatened with their valuable domain name. You know, and and and you're a bad person. And no, there's nothing tangible that applies to that other than the fact that somebody paid an attorney a lot of money to do this. And the attorney said we're going to do this thing and you're going to pay me a pile of money, and the attorneys that file these things get paid a lot more than the attorneys that defend these things, because domainers are cheap.

Speaker 1: 1:33:48

You've been drinking and salt all your customers.

Speaker 2: 1:33:51

I just thought it'd be, I know right. All right, like I said, you know there's different styles. A lot of people don't like to work with me.

Speaker 1: 1:33:58

So, anyway.

Speaker 2: 1:34:01

That's. That's why my only friends are tooth crows and a squirrel.

Speaker 1: 1:34:05

Yeah, but oh the guy who needs and a guy who needs guests on a show you know that's smarmy asshole.

Speaker 1: 1:34:12

Whoever he or she was, has to go back to the client and say, well, we got the decision and you know, you didn't win and they said you know I'm a dick, you know so red, stamp it with our DNH across the whole thing and then they have to give it to their client. They just say, oh, we lost. But, like with the person who filed three UDRPs on the same name space, spa, sc, got reverse domain hijacking what? Twice or once? Yeah, you know, I mean and I don't even think that the owner responded the last two times right. They just didn't respond and they still won.

Speaker 2: 1:34:53

Yeah, yeah, I'm trying to be. I'm trying to be a nice, a nicer person. You know, not everybody you know was born with the same number of Legos in the box, and some people that got the right number of Legos, you know, may have lost a few along the way. We all have different, you know, pathways that we follow. I'm always trying to be a nicer person and I keep a picture of Zach Muscovich by my desk to say, you know, remind me, you know, what would Zach do? That's, that's kind of you know, and you know he might, he might, he might charge more. I don't know.

Speaker 1: 1:35:34

What would Zach do? Well, he is our. He is our illustrious leader of the ice.

Speaker 2: 1:35:39

Yes, zach Muscovich is the dear leader of us all now.

Speaker 1: 1:35:43

Yes, he is and he's great at what he does so.

Speaker 2: 1:35:47

And he's a very, very good lawyer. I have. I have a lot of respect and admiration.

Speaker 1: 1:35:51

I think he's great in every way. Well, we've we've reached a little further than we wanted to today and I think John and I have a lot more to talk about. So we have some other UDRPs and some other interesting cases and case a lot of go over in the domain business, but we'll do that another day. John, as always, I really appreciate your time and your friendship and until next time. Thanks guys. John, actually, before we go, how can our listeners contact you if they need some help?

Speaker 2: 1:36:21

That's. That's the first challenge, right? Okay, so you know how about John?

Speaker 1: 1:36:26

how about John Berryhillcom?

Speaker 2: 1:36:29

You can't find me, I probably don't want to talk to him. That's. I do that on the forums. I'm like send me an email. They're like what's your email address? I'm like figure it out. Go to John Berryhillcom, make an inquiry there.

Speaker 1: 1:36:40

You can probably figure it out All right, have a good day.