OnlineDomain.com Domain Name News & Opinions
A company from Belgium named ‘CKL Holdings N.V. naamloze vennootschap (nv)’ has applied for about 68 trademarks at the United States Patent and Trademark Office.
Most of the applications were made in the past few months and the trademarks are not yet registered.
I got the tip from John Berryhill, an Intellectual Property Lawyer, that posted about the company’s applications on Twitter.
Many of the 68 applied marks are for first names like Kevin, Ashley, Ryan and Paul. My favorite is “F.” that was applied for “Provision of business and commercial information; business consultancy services; assistance and advice regarding business organization and management; advertising; market research and marketing studies; office functions; compilation of computer databases”.
The 68 trademarks include 10 domain names like rome.com, tokyo.com, hongkong.com, munich.com and other major world cities. Some of the domains are owned by major domain investing companies like Reflex.com and Telepathy.com (owned by Nat Cohen).
CKL Holdings N.V is the company that filed for a UDRP for the domain name zero.com that was and is still owned by Google. The UDRP was terminated a few days later. I guess they got scared when they found out they were going up against Google. They still have 2 active complaints for the domains: flammea.com and gerodi.com. (BTW gerodi.com is expired)
CKL Holdings N.V. is owned by Michael Gleissner. Michael Gleissner is also the CEO of Fashion One. General Counsel – Intellectual Property Attorney at CKL Brands LLC & Fashionone Inc. is Jonathan Morton. Fashion One Television Limited also filed a UDRP for the domain name apollo.com that was also terminated.
The company has also applied for 24 trademarks (including flammea and gerodi) in Europe. Some applications have been registered since 2003 and later. A couple of 2016 applications have been opposed. (for Anna and Mugamera)
These people are ill advised and are up for some very expensive lessons. There will certainly be much more on this story in the next few months.
Here is a list of the recently applied for marks in the US:
HORO
INGER
HING
JEREMY
IVAN
TONG
WENG
HANG
KEVIN
WANG
WAI
WILLIAM
ISABELLA
MARIO
RICHARD
DANIEL
ASHLEY
BLUE
BOND
F.
ROME.COM
SEOUL.COM
ANTWERPEN.COM
JAKARTA.COM
HONGKONG.COM
MUNICH.COM
KUALALUMPUR.COM
SINGAPORE.COM
TAIPEI.COM
TOKYO.COM
PETER
PAUL
JEFFREY
LOOPLER
ELIZABETH
RYAN
HOWARD
BRANDSTER
SUSAN
ANDREAS
CHRISTOPHER
SARAH
MING
EVELYNN
CARMEN
CHRISTINE
CTK
MICHAEL
JANET
FLAME
DIAMANTE
GLORIA
HHM
ALAN
JULIA
TRAX
JESSICA
NERD
VIOLET
MISS KITTY
FAST CLICK
ROBO
ALEXANDER
ALAN
RAV
GUY
MICHELLE
ANNA
Look at the tm application for Tokyo.com at the USPTO.
Current basis: 44D. That means the application is based on a foreign trademark, in this case, Pakistan.
Happy digging: https://register.boip.int/bmbonline/intro/show.do
I didn’t search for trademarks outside the US and EU. I bet their trademark kingdom extends to other countries like you showed.
This case is huge. It deserves a book…
Strange because Mike is a domainer himself owning names like FO, UI.com and many more gems. He should know better!
What are you up to, Mike?
I wonder how he got these names…
Odd story for sure. He sold Tao.com this year if I recall correctly for over a million.
Kostas,
He purchased FO.com through Domain Advisors in 2012 for 245k USD, while UI.com was acquired on Afternic for 275k in 2007.
It’s larger than that, Konstantinos.
Do a TESS search for “grant and morton” in the “attorney of record” field. All of those UK companies are shells owned by Gleissner.
I bet.
I spend a lot of time on this… I will probably write a follow up after you all dig up some more dirt. 😉
Exactly, there are also shell companies based in Namibia … 🙂
Kostas,
Actually TMs registered by CKL Holdings NV aka Michael Gleissner are much more than 68, as I wrote also on TheDomains: http://www.thedomains.com/2016/08/15/bigfoot-ventures-of-nyc-found-guilty-of-reverse-domain-name-hijacking-in-unusual-opinion/#comment-215947
I’ve done a quick search on TMview (Europe + US TMs) and there are approx 400 generic terms on which CKL Holdings has registered a TM, in various countries: https://www.tmdn.org/tmview/bookmark?q=anm:%22CKL%20Holdings%20N.V.%22
And that number exclude TMs registered in Asia (and Oceania), where Michael is currently based … 🙂
I’ve firstly uncovered this TM/UDRP strategy, and the role of Mr Morton, on DomainInvesting, when we were talking about the UDRP on Zero.com: http://www.domaininvesting.com/udrp-filed-against-zero-com-which-sold-for-over-329k/
Have a look also here: http://tmsearch.uspto.gov/bin/showfield?f=toc&state=4808%3Ak5r92m.1.1&p_search=searchstr&BackReference=&p_L=100&p_plural=yes&p_s_PARA1=grant+and+morton&p_tagrepl%7E%3A=PARA1%24AT&expr=PARA1+or+PARA2&p_s_PARA2=&p_tagrepl%7E%3A=PARA2%24ALL&a_default=search&f=toc&state=4808%3Ak5r92m.1.1&a_search=Submit+Query
As Acro noted, many are 44d:
44d (Foreign Application) – Within 6 months of filing a foreign application, you can use that filing as a basis for filing a US application. You can only claim priority in a US application for those classes filed in the foreign application. To add classes to a US application that aren’t covered in the foreign application, these additional classes must be filed under an “Actual Use” or “Intent to Use” basis. Once the US application has been examined, it is suspended pending receipt of the foreign registration certificate. If the foreign registration fails (or is going to take years to process), the 44d basis can be substituted with a 1a or 1b basis. This means that you are no longer using the foreign application as the basis for approving your trademark… you will have to show US based use. A big advantage to a 44d/44e approach is that you don’t have to show use in the US to get your initial registration (you do have to show use for the Section 8 and Section 8/9 renewals). Once a foreign registration certificate is filed, the mark is re-examined to make sure that the classes claimed on the foreign registration match the US application. If they don’t match, an office action will be issued.
Love the Tweet!!
It’s hard to see this as anything but a massive campaign of harassment and attempted theft. And it’s mind-boggling that a domain investor who has already made millions and who owns a portfolio worth millions more would feel the need to be this greedy and stoop so low, targeting his own peers.
Normally this kind of unscrupulous behavior comes from novices or domain-industry outsiders. So I’m honestly shocked.
Has anybody written to this fellow, asking for an explanation of what he thinks he’s up to?
Joseph,
Michael Gleissner is one of our clients, so I’ve contacted the guys in Singapore letting them know that this strategy of registering TMs to get premium domains through UDRP is a big mess, also in terms of reputation with the domain investors community, and that Mr Morton is doing a very poor job, wasting a lot of money …
I guess they probably decided to terminate the UDRP on Apollo.com and Zero.com after I explained them a few things.
Still in talks with them, I think we can definitely assist and advise them better than those who have created this epic mess …
@Andrea,
We’d all prefer to view this as a case of bad advice – of not really thinking things through. And if Michael Gleissner says “whoops” and doesn’t proceed, then I’m sure most domainers will cut him some slack. If he were to file UDRPs on these domains, he’d probably end up being the most reviled name in the industry – not to mention subjecting himself to numerous lawsuits.
It’s unlikely that he’s really a bad guy. Maybe he just got excited by the prospect of acquiring premium domains by means of a cheap TM + UDRP and forgot to put himself in the shoes of the owners who cumulatively paid millions of dollars to purchase their own property – property he’d be confiscating from them based on the flimsiest of pretexts.
If we criticize this person harshly now, then he may react obstinately and pursue a very foolish course of action. So let’s suspend judgment long enough to give him a chance to change course. Let’s see what he’ll do.
Andrea,
These nitwits have filed US registration applications for “BAIDU” and “THE HOME DEPOT”
That’s not “ill advised”, that’s sheer insanity.
When Home Depot gets wind of this (and a little birdie tells me they have), they are going to want to leave a smoking hole in the ground where your client used to be.
If the means are available there will always be people willing to take advantage. The system that allows this type of behavior is the real issue.
@Joseph,
As I mentioned many times, IMHO Michael has been ill-advised.
I’m not judging him for that, actually I think he’s a nice guy.
Advisory is our job, and I’m sticking to that. 🙂
Meaning no disrespect, Andrea, are you sure you want to announce that this guy is 1 of your Advisory clients? At least wait until you’ve talked some sense into him.
Joseph,
In this specific case it wasn’t us who suggested him to start that mess, actually we are advising him to change that. 🙂
If this is the result of being “ill-advised” then I’d say he’s been robbed. What have these shenanigans cost him?
Incidentally, the “F.” mark is a part of a long running feud between Gleissner and Michel Adam Lisowski, the founder of a fashion television trademark licensing business. Mr. Lisowski has something of a colorful legal history, which is a story for another time. The interesting part of it is that for a stretch of the relevant time involved, he was apparently under house arrest pending investigation of a criminal charge in Israel.
Quite a number of years ago, Gleissner was the Philippines licensee of Gleissner’s marks, notably including a diamond logo with “f.” in it. While a licensee, Gleissner developed his own plans to launch a fashion television network.
During this time, incidentally, the domain name fashiontv.com was apparently hi-jacked from Lisowski. Lisowski pursued a UDRP against the buyer of that domain name. Oddly, the UDRP itself didn’t mention anything about the domain name having been stolen. I was engaged to defend the buyer of the domain name on the premise that “fashion tv” was merely a descriptive term, and the UDRP complaint was denied. (WIPO D2005-0994)
Some months later, Fashion TV filed suit in New York, raising the issue of the name having been hi-jacked. There were a number of things that went on in that case which, to this day, have never added up for me. First, the circumstances of the purchase of the domain name became very murky on further investigation. However, one of the problems is that shortly after purchasing the domain name, the purchaser had been severely injured in a car accident and had suffered from cognitive and memory problems since the accident. So the accusation of theft boiled down to two defendants pointing their fingers at each other, which immediately conflicted me out from a joint defense. Eventually, they both settled out individually since, while it was reasonably clear that the domain name was the subject of an unauthorized transfer, there was no solid evidence which indicated that it was one or the other of the two defendants.
One of the things that always has bothered me about that case is that, without going into a whole lot of detail, some of the correspondence involved in the hijack contained information about certain internal details of the Fashion TV organization which neither of the defendants would have known about (they were both sort of knuckleheads without a great deal of sophistication anyway). Since then, I’ve always suspected that there was someone on the inside who either stole the name and passed it off to one of the defendants, or was acting in concert with one of the defendants who, for some reason, was never going to cough up the identity of whomever it was that actually facilitated the theft. Maybe it was one or the other of the two defendants, but I’ve always had a nagging suspicion that there was some other party involved, who had access to information about Lisowski’s organization that neither of the two defendants could have known.
typo. should be “licensee of Lisowski’s marks”
So much ambiguity. Adapted from a John le Carré novel? Were he still alive, Sir Alec Guinness could play you.
Oh it gets plenty weirder.
You’ll notice in the slized.com RDNH finding, that the specific lawyer being dressed down is not identified by name. The guy who signed off on the UDRP complaint is not Morton, but an unidentified “associate” of Morton’s. The slized.com decision describes him as:
“The Complaint was filed in the name of Morton & Associates LLLP by an individual who described himself as an “associate attorney” at that firm. Morton & Associates LLLP would appear to have the same address as the Complainant and this individual appears to have a LinkedIn profile in which he gives his job title as “In House Counsel for Bigfoot Entertainment”.”
Once you have warmed up your Google-Fu on that tantalizing tidbit, do a search for his prior domain name law experience. He’s only been at Moron Associates for a couple of months.
In the words of the 13th Century Zen philospher, Dogen:
Stealing domains,
a pattern emerges.
A lawyer shows us his ass.
Andrea,
They filed a UDRP against the domain name flammea.com which is registered to:
Registrant Name: Paul Flammea
If anyone knows Paul Flammea, please tell him that I will gladly take a $100,000 bite out of Gleissner’s stupid sorry ass at no charge whatsoever to Mr. Flammea.
I really don’t get why they are going after a last name that is not a popular one. (Let alone a domain that is owned by someone with the same name as the domain…)
@john
Yeah, I agree, there are a lot of “weird” things happening …
Agree that filing a registration application for “BAIDU” and “THE HOME DEPOT” is insane …
Thanks for the other details, let’s see what we can do to convince them they are doing the wrong thing …
Correct version below, typo, sorry.
“Thanks for the other details, let’s see what we can do to convince them to stop doing the wrong thing … and to fix the whole situation …”
This guy is a member of “SmartWeed.club” ???????
I want to remind everyone Mr. Thomas A. Brackey, The Minardos Group, their companies “What Box Holdings“, “Plan Bee LLC” and their 39 fake trademarks back from 2014:
http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-generic-domains-in-new-gtld-sunrises/
Here is one of their stars:
Marco Notarnicola: manipulation of TMs and common law marks to achieve UDRP “reverse domain name hijacking”