Reglikedomain industry desk

A fresh Trademark King? Domainers need to watch out.

A fresh Trademark King? Domainers need to watch out.

A number of firms owned my Michael Gleissner are filing questionable trademark applications, counting ones that match domain names he doesn’t own.

Back in 2014, I wrote regarding the Trademark King. Trademark King was an Indiana business that attempted to trademark the domain names of famous firms, such as Twitter.com and Porsche.com.

It was a hair-brained attempt by someone who clearly didn’t understand how U.S. trademarks work.

Now there’s a similar situation, and it hits a bit closer to home.

I started to look into this when UDRPs were recently filed on seemingly generic or dictionary words, like Apollo.com and Zero.com. George Kirikos sent some interesting information to me regarding these bizarre cases, and it came to a fore again this stretch when a couple of UDRP decisions were published.

The Apollo.com UDRP was filed by Fashion One Television Limited and Zero.com was filed by CKL Holdings N.V., and both UDRPs were subsequently dropped.

Both firms list Michael Gleissner as Director. Gleissner is a frequent domain name buyer through his firm Bigfoot.

CKL has two other UDRPs pending for domains. Two of Gleisnner’s other firms, American Franchise Marketing Limited and China Capital Brands Limited, have also filed UDRPs.

Bigfoot Ventures LLC lost two UDRPs that were published this stretch, which brought my attention back to this issue. The two UDRPs were for BubblingBeats.com and Slized.com. The panel in BubblingBeats.com considered reverse domain name hijacking, noting that Barefoot ought to have known that some of its arguments on “bare assertions” would fail. But the domain owner didn’t respond to the case, and the panelist didn’t find RDNH.

The panelist on Slized.com, still, found Bigfoot to have engaged in reverse domain name hijacking. He stated the complaint was “totally inadequate,” was “speculatively filed” and that the complainant misrepresented the nature of its use of the Slized mark.

As stated by the Slized.com UDRP decision, Bigfoot was represented by Morton & Associates LLP. Panelist Matthew Harris noted that Morton & Associates appears to have the same address as Bigfoot, and the LinkedIn profile for the attorney on that case was “In House Counsel for Bigfoot Entertainment”.

If you Google that term, you’ll find Roman Popov’s LinkedIn profile.

Does that name ring a bell? Look at the second entry on his LinkedIn profile:

roman-popov

Mr. Popov was one of the lawyers who represented Office Space Solutions in its egregious cybersquatting lawsuit against the domain name WorkBetter.com.

As stated by the LinkedIn profile, Popov joined Bigfoot in May of this year.

Another lawyer whose profile comes up on LinkedIn for this search is Jonathan Morton, who lists his position since June 2015 as General Counsel – Intellectual Property Attorney, CKL Brands LLC & Fashionone Inc. He notes that his role is to “Resolve intellectual property issues/disputes ahead of USPTO, WIPO, OHIM, Benelux IPO, UK IPO, Hong Kong IPO, Singapore IPO & ICANN.”

Just what are all of these IP issues he’s taking care of? If you search for Morton’s name in the USPTO database, you’ll see that he has been very busy with trademark filings.

Among the applications he’s listed on:

  • The Home Depot, filed on behalf of BNU Textiles Limited, claiming priority on a Pakistan trademark.
  • Room, filed on behalf of HBH Finance Limited, claiming priority on a Benelux trademark.
  • Breakfast, filed on behalf of Breakfast International Limited, claiming priority on a Benelux trademark.
  • Enron, filed on behalf of Enron International Limited, claiming priority on a Benelux trademark
  • US, filed on behalf of KPP Design Limited, claiming priority on a Benelux trademark

And then there are the domain names. Morton is the attorney of record for 65 trademark applications with .com in them. The full list is below, but here are some highlights:

  • Broad.com, filed on behalf of Broad Partners Limited, claiming priority on a Benelux trademark. Broad.com is owned by Broad Air Conditioning Co. Ltd in China.
  • Angle.com, filed on behalf of Angle International Limited, claiming priority on a Benelux trademark. Angle.com is owned by Digimedia.
  • Seoul.com, filed on behalf of CKL Citymedia Limited, claiming priority on a Pakistan trademark. Seoul.com is owned by Andrew Lee.
  • Antwerpen.com, filed on behalf of CKL Citymedia Limited, claiming priority on a Pakistan trademark. Antwerpen.com is owned by Nat Cohen.

All of the applications are linked to the same address in London (3rd Floor, 207 Regent Street). And UK government records for each of the firms show Michael Gleissner as a director. (There are many, many more firms with similar trademark applications, all with Gleissner listed as the officer.)

As stated by a blog post from last year, Gleissner is also trying to get some trademarks canceled through the Office for Harmonisation in the Internal Market (OHIM).

From the outside, it appears that Gleissner and his firms are trying to use trademarks and UDRPs to get their hands on domain names. The firms have filed three UDRPs that were later terminated and have lost at least three others. If nothing else, people who own domain names that match the trademark applications listed below ought to take note.

I reached out to Popov, Morton and Gleissner on August 17 via a combination of email and phone messages. I informed the receptionist at Bigfoot Headquarters that I was writing a story regarding trademarks that Gleissner’s firms have applied for, and I wanted to give him a chance to respond.

I heard back from Morton Wednesday evening and he requested that I email my questions. Among the questions I asked via email:

1. Why are these firms filing trademarks in the form of something.com when the TM applicants in some cases do not own the corresponding domain names?

2. Why are these firms filing UDRP complaints against domain names and then withdrawing them?

3. Do you plan to continue filing UDRPs in light of the recent reverse domain name hijacking decision?

Even though I told Morton I was publishing my story Thursday afternoon, he had not responded by Friday morning.

So, perhaps Reglike readers can speculate regarding the answers to these questions.

Below: complete list of domain name trademarks listing Morton as the attorney. There are many other trademarks that aren’t domain names. Keep in mind that Gleissner or his firms own some of these domains, but not all of them.

host.com insider.com cosu.com NITROGENE.COM SPONK.COM TELEKA.COM MICK.COM SEOUL.COM ANTWERPEN.COM JAKARTA.COM HONGKONG.COM MUNICH.COM KUALALUMPUR.COM SINGAPORE.COM TAIPEI.COM TOKYO.COM ziro.com tudy.com dego.com bert.com lemmon.com contor.com cacadoo.com broad.com angle.com sponk.com xero.com teleka.com broad.com PESOLA.COM REMINE.COM DANFI.COM VERNOLA.COM CURANI.COM TEVISI.COM DANOVA.COM SARDANI.COM SAMELE.COM FIDATI.COM RIDOLA.COM RONZANO.COM BELTRAMO.COM RESTINI.COM RASOLI.COM RANITO.COM POTERA.COM POLEMIO.COM PITEO.COM MORESE.COM MANUTO.COM LUPORI.COM LAVOPA.COM LAUDO.COM LAPESARA.COM GAUDIANI.COM FURINO.COM DENTUTO.COM DEMERICO.COM DELMATI.COM DANERO.COM CARRANTE.COM CARMONE.COM GALLONINI.COM CALABBRESE.COM CAMMERIERI.COM

Also on the wire

Other reporting from the domain desk.