By Zak Muscovitch.

The domain name, DJBLACKNMILD.COM was ordered transferred to cigarette company, John Middleton Co. by an NAF Panel in a decision dated, January 7, 2015.

The Respondent, was "j alvarez" from Alabama, USA. What caught my attention here, is the oddity of someone purportedly cybersquatting on a cigarette brand by supposedly adding "DJ" to it.

The Complaint was undefended and the Panelist noted that the Complainant had registered trademark rights for BLACK & MILD, including USPTO registration number 1,177,552, registered November 10, 1981.

The Complainant thereby met the identical/confusingly similar part of the three-part UDRP test, since the domain name merely added "DJ" to the Complainant's mark.

Secondly, the Complainant also succeeded under the 'Legitimate Interest' part of the test, since there was no evidence that the Respondent was 'known as DJBLACKNMILD' and the domain name was merely used for general advertising links.

Thirdly, the Complainant succeeded under 'bad faith registration and use' of the domain name, due to its 'non-use'.

But again, why would somebody add "DJ" to a cigarette brand? Well, I Google searched "DJBLACKNMILD", and I found that there is a Louisiana based DJ called, "DJ BLACK N MILD". He even has his own Facebook page apparently.

So, it could be that this "j alvarez" was cybersquatting, but not on the John Middleton Co. cigarette brand, but rather, on the DJ.

By Zak Muscovitch.

I took a look at NAF decisions so far, for this month of September, 2013, and have made some interesting, but not surprising, observations. When a Respondent defaults by failing to file a Response, the NAF nearly always appoints one of a very select group of panelists. That means that there is group of very experienced NAF panelists, nearly always gets the usually easy and lucrative cases.

NAF has 134 panelists on its roster, but has apparently focused its "active" roster to only a select few. With very few exceptions, it is these select panelists which get nearly every default case. So, if you are a complainant, you could nearly "count on" one of the following panelists hearing your case.

Sandra Franklin is the NAF's "go to" panelist these days, according to the September statistics. She decided a total of about 9 cases that were released so far in September. Terry F. Peppard (8 cases), John J. Upchurch (7 cases), and Paul M. DeCicco (6 cases) came in a very close second and third place, respectively.

After that however, the group's cases got a lot thinner, with James A. Carmody (4 cases), Carolyn Marks Johnson (4 cases), Debrett G. Lyons (4 cases), Tyrus Atkinson, Jr. (3 cases), Karl V. Fink (3 cases), David A. Einhorn 2 cases), Bruce Myerson (2 cases), Charles McCotter, Jr. (2 cases), Neil Anthony Brown (2 cases), and Darryl C. Wilson, Houston Putnam Lowry, and Bruce Myerson (each with 1 single case).

Accordingly, out of the 134 Panelists, it certainly appears that (at least currently based upon September, 2013 stats alone), about a dozen UDRP panelists do the lion's share of work for the NAF.

There is a good argument for using a handful of the most "experienced" panelists to decide cases, as ostensibly the most experienced panelists are the most "able" and "reliable". On the other hand, one cannot but wonder why having a roster of 134 panelists is then necessary at all, considering that most of these panelists are not usually selected at all, except when a case is defended and panelists are nominated by the parties.

Interestingly, two recent default decisions that have attracted some criticism recently, namely the case and the case, were of course decided by two of the above-mentioned select panelists, i.e. Terry F. Peppard and Carolyn Marks Johnson, respectively. Nat Cohen wrote an interesting piece, about the case, and Michael Berkins covered the case on

Under the UDRP, when a domain name registrant fails to defend the proceeding by filing a Response, the panelists are not supposed to give the complainant an automatic "win" or "default judgment", as is the case in many court proceedings. Nevertheless, when a party does not defend, certainly a panel is entitled to make adverse inferences and to rely upon only one side of the story.

"Default cases" are the most common type of UDRP case, and the panelists who hear these cases serve a very important function. I am always impressed by panelists who write thoughtful and comprehensive decisions in default cases, as it shows that they take their work seriously, and that they have avoided the obvious temptation to disregard a party since they have shown disinterest in the proceeding by failing to respond.

Below is a simple chart of the default case distribution so far this month of September, 2013.

# of Cases
Sandra Franklin
9 etc. etc. etc.
Terry F. Peppard
John J. Upchurch
7 etc.
Paul M. DeCicco
6 etc.
Carolyn Marks Johnson
James A. Carmody
Debrett G. Lyons
4> etc.
David A. Einhorn
Bruce E. Meyerson
Charles K. McCotter, Jr.
Neil Anthony Brown QC
2 etc.
Hon. Karl V. Fink
Darryl C. Wilson
1 etc.
Houston Putnam Lowry
Bruce Myerson