1.1 The Complainants are Aubert International SAS and Aubert France SA, both of Cernay, France, represented by Casalonga Avocats of France.
1.2 The Respondent is Tucows.com Co. of Toronto, Ontario, Canada, represented by Adorno & Yoss LLC, United States of America.
2.1 The disputed domain name <aubert.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
2.2 The similar names of the Respondent and the Registrar and the fact that they share the same address in Ontario would suggest that the Registrar and Respondent are connected. In its Response, the Respondent at one point asserts that it is Tucows Inc. However, as is explained later on in this decision, there is evidence before the Panel that suggests that although the Registrar and Respondent may be under common control, they are nevertheless separate legal entities1.
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2008. On December 29, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 29, 2008, the Registrar transmitted by email to the Center its verification response confirming that “Tucows.com Co” was the Respondent.
3.2 On January 12, 2009, the Center notified the Complainant that the Complaint was administratively deficient in that it sought a three member panel but did not identify three candidates as panelists as required by paragraph 3(b)(iv) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).
3.3 The Complainant filed an amendment to the Complaint on January 13, 2009 addressing that deficiency. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
3.4 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced January 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response February 3, 2009. The Response was filed with the Center February 3, 2009.
3.5 On February 12, 2009, the Complainant filed a supplemental submission with the Center.
3.6 The Center appointed Matthew S. Harris, Martine Dehaut and Diane Cabell as panelists in this matter on February 27, 2009. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
3.7 On March 4, 2009, the Complaint forwarded a further submission to the Center, which sought to bring to the Panel's attention certain email correspondence between the parties and in particular an email from the Respondent's representative dated February 17, 2009 which inquired whether Complainant wished to explore settlement options and suggested suspending the proceeding if that were the case.
3.8 On March 5, 2009, the Respondent filed a supplemental submission with the Center which in large part responded to the assertions to be found in the Complainant's supplemental submission of February 12, 2009. The Respondent asked that this additional submission be considered by the Panel “[t]o the extent that [the] Complainant's submissions are accepted by the Panel”.
4.1 The Complainants are two French companies within the Aubert group. Aubert International was founded in 1957 and is the parent company of the group. Aubert France SA was created in 1994 and it is this company that conducts the relevant business for the purposes of these proceedings.
4.2 In particular, Aubert France SA operates 220 stores throughout Europe. It is engaged in the sale of various goods, most of which have some association with children, babies or maternity.
4.3 Aubert France SA also has since October 1997 had an online presence using the domain name <aubert.fr>, and currently operates a number of other domain names that incorporate the “Aubert” name; e.g. <aubert.mobi>, <aubert.eu> and <aubert.asia>.
4.4 Aubert International is the owner of various trade marks that comprise or incorporate the “Aubert” name. They include:
(i) International registration No. 459193 registered on March 11, 1981 for the word mark AUBERT in classes 12, 18, 20, 24 and 28, designating various countries including Germany, Switzerland and China;
(ii) French registration No. 1,615,427 filed on September 11, 1990 for the word mark AUBERT in classes 3, 5, 8, 12, 14, 18, 20, 21, 24, 25, 28, 29, 30 and 32; and
(iii) Community Trade Mark Registration No 000980838 filed on November 9, 1998 for the word mark AUBERT in classes 3, 5, 10, 11, 12, 20, 21, 24, 25 and 28.
4.5 The Domain Name was initially registered by Mailbank Inc. (trading under the name “NetIdentity”) on August 26, 1996.
4.6 The initial registration of the Domain Name was part of a broader business model adopted by Mailbank Limited, which involved the registration of domain names that equated to the surnames of individuals. Other examples given by the Respondent include <smith.net>, <schafer.org> and <aubert.com>. How exactly these have been used is an issue that is explored in greater detail later in this decision. However, it seems clear that these domain names were used to offer personalized email, blogging and webhosting services. For example, a Mr. John Smith could in return for a registration and ongoing rental fee obtain the email address “[email protected]” (provided that this email address had not already been allocated to some other customer).
4.7 In or about October 19992, the Domain Name (absent the addition of any further third level domain) resolved to a web page that advertised these sorts of “surname” emails and other related services that operated from that Domain Name. The page also included an advertisement for Dell computers. There is no evidence before the Panel of any other use of the Domain Name at that stage.3
4.8 As has already been stated above, the Respondent asserts that it is Tucows Inc (i.e. the Registrar for the Domain Name), even though the WhoIs details for the Domain Name gives a somewhat different name for the Respondent; i.e. “Tucows com.Co”. The true position would seem to be that set out in a Statement of Claim filed by the Respondent in the Ontario courts in September 2008 and appended to the Response. This states as follows:
“Tucows.com Co. ... is a corporation incorporated under the laws of the Province of Nova Scotia, and has its head office in Toronto, Ontario. Tucows.com Co. is a wholly owned subsidiary of Tucows, Inc., a Pennsylvania, USA corporation with its principle place of business in Toronto Ontario.”
In any event, even if the Respondent was to be regarded as (or as including) Tucows Inc., and the latter was to be regarded as having registered the disputed domain name on its own account, the Policy would still be applicable here.4
4.9 On or about June 15, 2006, Tucows Inc. acquired Mailbank Inc. and its extensive domain name portfolio5. At some point thereafter the WhoIs details for the Domain Name changed to reflect the Respondent as the registrant.
4.10 As at the time of the acquisition, Eliot Noss, the CEO of Tucows Inc. described the NetIdentity as generating its cash flow from two sources6. One source was the offering of web based services associated with the surname properties of its domain names, whilst the other was the generation of “pay per click” revenue through domain name “parking”.
4.11 As at July 2008, and subsequently up to the date of the Complaint the Domain Name (absent the addition of any further third level domain) resolved to a web page for the most part generated by a “pay per click” or domain name “parking” service. In particular the page displayed the domain name and beneath the domain name was the tag line. “What you need when you need it”. Below that were a series of “sponsored searches”. Those sponsored searches (at least in France and perhaps elsewhere) included links such as:
- Poussettes (English translation “Strollers”)
- Chambre Enfant (English translation “Baby room”)
- Autour De Bebe (English translation “Around baby”)
- Baby bath
- Sac pour nager (English translation “Swim bag”)
- Lit de couler (English translation “Bed colour”)
- Sac de notation (English translation “Swiming bag”)
- Barrieres pour les enfants (English translation “Barriers for children”)
4.12 The page also displayed sponsored searches in English under the headings “Finance, Travel and Home”.
4.13 However, an unusual feature of the pay per click page was there was also a banner at the top of the page that took the following form:
Get your own aubert.com email address
4.14 When that link was clicked upon it would take the Internet user to the “NetIdentity” webpage from which “Mailbank Inc” offered personalized email, blogging and webhosting services associated with the Domain Name.
4.15 The Complainant gave no prior warning of these proceedings to the Respondent. Subsequent to receipt of the Complaint, the Respondent altered the advertising algorithm for the website with the aim of preventing the display of links in relation to goods or services in the same line of business as the Complainant.
4.16 Thereafter a pay per click webpage continued to operate from the Domain Name, but the nature of the related searches links had for the most part changed so as to include predominantly show “sponsored searches” in relation to topics unrelated to children. However, the links changed dynamically and on occasion there would still appear the odd link to baby related products and services (for example “baby stroller” and “haute chaise”)7.
5.1 The Complainant describes its business and refers to its various trade mark rights. It contends that the Domain Name is identical to its trade marks.
5.2 On the question of rights and interests it acknowledges the previous use made of the Domain Name by Mailbank Inc. but claims that the issue of rights or legitimate interests is to be judged not by reference to the initial registrant, but instead by reference to the Respondent.
5.3 It claims that the Respondent has no trade mark rights in the “Aubert” name and is not commonly known by that name and has not sought or received permission from the Complainant to use the name. It contends that:
“The disputed domain name is used to provide access to a website featuring pop-up advertisements, a commercial search engine and sponsored links to various third parties, most of whom offer goods and services in competition with those offered under Complainant's mark. The fact that the website is in French, that the prices are in Euros and that the links resolve to major French companies (La Redoute, Verbaudet) cannot be a coincidence. Even the websites of worldwide famous trademarks are French: <nivea.fr> for NIVEA, <bebe.nestle.fr> for NESTLE. The public concerned by the website is clearly the French public, i.e. the public of the country where the Complainant is domiciled”
5.4 The Complainant also contends that the Respondent has engaged in similar activity in the past and cites in this respect the decision in Weidner Investment Services, Inc. v Tucows.com co, NAF Claim No. 1080246.
5.5 In the circumstances, it alleges that the Respondent has no rights or legitimate interests for the purposes of the Policy.
5.6 On the issue of bad faith the Complainant contends that the Respondent's business model is to generate advertising revenue, and that in this case it does so “by taking advantage” of the reputation of the AUBERT mark. It claims that the Respondent is engaged in a pattern of such conduct (citing once again the Weidner Investment Services case) and contends that such activity falls within the scope of paragraph 4(b)(ii) of the Policy.
5.7 The Complainant also contends that the Respondent's activities fall within the scope of paragraph 4(b)(iv) of the Policy. In particular, it claims that the Respondent “has deliberately chosen to insert links related to the exact kind of goods commercialised under the Complainant's [AUBERT] mark” by the Complainant's competitors. It also contends that the Respondent is using confusion between the Complainant's AUBERT mark and the Domain Name to generate “pay per click” revenue.
5.8 In its Response the Respondent gives details of its business. At times it appears to claim that it registered the Domain Name back in 1996 and it has conducted the “NetIdentity” business since that date. However, it nevertheless seems clear (as is described under the heading “Factual Background” above) that it is in fact part of the group that purchased this business in 2006.
5.9 After explaining the services offered but the “NetIdentity” business it describes the nature of the page operating from the third level domain “www”. It claims that this page is operated by “NetIdentity's” “business partner”, Oversee.net. This is said to “provide advertising revenue for Net Identity and is parent Tucows”. Reference is made to the description of “the Oversee.net service, through its service DomainSponsor” that is provided in The Eye Academy of America Ld. and Total Vision Case group, P.C. v. Ashantiplc Limited, NAF Claim No. 644205. In particular:
“DomainSponsor has automated technology that places links on a webpage associated with the contextual meaning of the word in a domain name and also places additional links based upon what users search for after arriving at the domain name page”
5.10 The Respondent contends that the Domain Name was acquired by NetIdentity “almost twelve years ago, on or about 26 August 2006”. However, this is clearly a typographical error and what is intended is a reference back to the date of initial registration i.e. 26 August 1996.
5.11 The Respondent admits that the Complainants' AUBERT mark is “for present purposes” identical to the Domain Name, but then proceeds to make a number of submissions as to the scope of the Complainant's trade mark rights in terms of geography and products.
5.12 On the question of rights and legitimate interests the Respondent contends that “long established case law and numerous UDRP decisions” support the proposition that a domain name identical to a user's surname is “a legitimate and non infringing” use of that Domain Name and that this is also so when the service is provided by a third party service provider such as the Respondent. Reference is made in this respect to Raccords et Plastiques Nicoll v. Tucows.com Co., WIPO Case No. D2008-1322; Markel Corporation. v. Tucows.com Co., WIPO Case No. D2007-1750 and Ancien Restaurant Chartier v. Tucows.com Co., WIPO Case No. D2008-0272. The Respondent also refers to Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999) which it says supports its case and claims that “national law is typically given great weight in the disposition of UDRP complaints”.
5.13 On the issue of bad faith, the Respondent asserts that the Complainant has failed in its submission to take into account the “surname” use made of the Domain Name. This use is said to show that “[t]he allegation that Tucows is not making any bona fide use of the domain name is demonstrably false”. It claims that “[b]y looking only at the advertisements on the bottom of the page, [the Complainants] ignored the large banner on the top of the website that would have led it, or any normal Internet user to the NetIdentity landing page, where it would have been able to learn about the NetIdentity business”.
5.14 The Respondent denies that the Complainant's trade mark has the degree of fame that the Complainant claims. The Respondent relies in this respect on the Complainant's own evidence that shows that the use of the term “Aubert” in a search engine results in a large number of links associated with the surnames of prominent persons (although it claims that links related to the Complainant feature more prominently if the search is conducted in France). This Respondent exhibits Google search results as evidence of this.
5.15 The Respondent also refers to a large number of cases involving the NetIdentity business which are said to show that that the Respondent's activities do not involve bad faith registration or use. In particular, reference is made are to International Raelian Religion and Raelian Religion of France v. Mailbank.com Inc., WIPO Case No. D2000-1210; Buhl Optical Co v. Mailbank.com, Inc., WIPO Case No. D2000-1277; Bosco Products, Inc. v. Bosco E-Mail Service, NAF Claim No. 94828; José de Jesús Velázquez Jiménez v. Mailbank.com Inc., WIPO Case No. D2001-0341; Puls Elektronische Stromversorgungen GmbH v. NetIdentity, WIPO Case No. D2002-0205; Dong A/S v. NetIdentity, NAF Claim No. 250240; Walls Industries, Inc., Cleburne, Texas v. Tucows.com Co, NAF Claim No. 824361 and Ken Batchelor Cadillac Company, Inc. v. Tucows.com Co c/o Admin Domain, NAF Claim No. 1126742.
5.16 So far as the Weidner Investment Services, Inc. v Tucows.com co, NAF Claim No. 1080246 cited by the Complainant is concerned, the Respondent states this is one of only two cases that have been decided against the Respondent or its predecessor in business in relation to domain names used in the NetIdentity business. The other case is Pernod Ricard, supra, WIPO Case No. D2008-0789. The complainant contends that neither case should be given any weight by the panel. In the Weidner case the Respondent claims that it filed proceedings in the Ontario Ontario Superior Court of Justice which is said to have held that “Tucows.com Co. did not register the domain name <weidner.com> in bad faith or without legitimate purpose.”The Pernod Ricard case is said to be also currently the subject of legal challenge.
5.17 In support of its case the Respondent also exhibits a declaration “signed under penalty of perjury” from a Mr. Bill Sweetman. He describes himself as the “General Manager” of the Respondent's Domain Name Portfolio and the individual at the Respondent primarily responsible for the management of domain names registered to and managed by the Respondent “for its own account”. In that declaration Mr. Sweetman asserts that:
(i) Tucows had no knowledge of the AUBERT trade mark prior to being contacted by the Complainant;
(ii) the Domain Name has been used continuously for the last twelve years in conjunction with a vanity email service;
(iii) the Respondent currently has 10 customers using the Domain Name for email purposes;
(iv) prior to acquiring the NetIdentity business the Respondent conducted due diligence on that portfolio of Domain Names to be acquired “to [e]nsure that [the Respondent] was acquiring domain names that could operate as surnames”. He states that as a consequence of that review the Respondent “believed that ‘Aubert' was a surname and had the intention of using the word ‘Aubert' in its capacity as a surname”; and
(v) after receiving the Complaint, he “altered the advertising algorithm for the AUBERT.COM website to attempt to remove any possibility that ads for goods or services in the same lines of business as those operated by the Complainant[s] would appear”.
5.18 So far as the alteration to the advertising algorithm is concerned, the Response uses a slightly different form of language. It asserts that “[a]s soon as [the Respondent] received notice of [the Complainant's] concerns, it promptly attempted to remove any advertisements for goods or services in [the] Complainan[ts'] line of business”.
5.19 For the reasons that are explained later on in this decision it is not necessary to set out in any great detail the submissions contained in the Complainants' Supplemental Submission. It is sufficient to record that the submission:
(i) reiterates that the assessment necessary under the Policy should be by reference to the Respondent and its acquisition of the Domain Name in 2006 and not the initial registration of the Domain Name in 1996;
(ii) claims that the Respondent “could have very easily identified that AUBERT is a protected trademark in Europe when it acquired the Domain Name”;
(iii) makes reference to the fact that the Respondent's self confessed commercial rationale for the acquisition of the NetIdentity business was not only email and hosting services that depended upon the surname significance of the Domain Names, but also the generation of click-through revenue;
(iv) claims that the Respondent's claims about the use of its algorithm show that the Respondent had “technical control [of] the commercial links displayed [on the pay per click page operating from] the disputed domain name”; and
(v) claims that the Respondent's use of the Domain Name involved trade mark infringement.
5.20 Again it is not necessary to set out the contents of the Respondent's Reply in any great detail. It is sufficient to record that in this document the Respondent primarily seeks to refute the Complainant's assertion that the relevant assessment is the assessment of the Respondent and that it is the Respondent's actions that are important rather than that of its predecessor in business. It makes reference in this respect to the United States law of corporations which is said to show that when a corporation merges with another corporation the merged corporation acquires the “rights, franchises and property” of the merging corporations.
5.21 The Reply also provides a further elaboration of the Respondent's intentions in sending the email to the Complainant dated February 17, 2009, which is described at paragraph 3.7 above. In short, it asserts that whilst the Respondent was willing to explore settlement options with the Complainant it would not have been prepared to transfer the Domain Name to the Complainant as this would involve breach of contract with those of its customers that had subscribed to “Aubert” surname related web services.
6.1 The Complainant must make out its case in accordance with the requirements set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these issues in turn. However, before doing so it will briefly deal with the procedural point, whether or not the Panel should take into account the supplemental submissions filed by each of the parties in this case.
6.3 It is also necessary to note at the outset that on the issues of rights or legitimate interests and bad faith, all the panelists have not been able to reach agreement. Therefore, what follows in this respect represents the views of the majority of the Panel. The dissenting panelist sets out the reason for her dissent in a separate opinion at the end of this decision.
6.4 Absent exceptional circumstances a supplemental filing will rarely be considered. In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers,WIPO Case No. D2003-0780, the panel stated as follows:
“As is by now well-established, the Rules do not provide any right of reply. Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938 (November 3, 2000). Although supplemental submissions may be accepted to address new legal developments, see, e.g., Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105 (April 13, 2000), or to rebut unexpected factual assertions, see, e.g., Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237 (June 11, 2001), they should be allowed sparingly.”
6.5 In this case the Panel is unconvinced that the supplemental submissions filed by either party in this case fall into either of the categories identified in the Digital Kitchen case. For the most part they take the form of arguments that were made or could reasonably be expected to have been made in the underlying submissions. Nevertheless the Panel have decided to review and consider the material filed by the parties in this respect. At times it clarifies each party's case (which although of limited use to the Panel may nevertheless have been of some assistance to the parties themselves). Further as will be apparent, the additional arguments and the material filed by the parties have not had any practical impact on the outcome of this case.
6.6 There is, however, one new fact that is addressed in the supplemental submissions that could not have been addressed in the Complaint or Reply. That is the fact that on February 17, 2009 the Respondent approached the Complainant with an inquiry whether the Complainant wished to enter discussions concerning a settlement in relation to the Domain Name. The Complainant clearly thought this to reveal something of significance when it came to the assessment of the Respondent's motives and therefore sought to draw this to the attention of the Panel. As has already been described, part of the Respondent's Reply deals with that offer and seeks to explain what was intended by it and why it was of limited significance. However, it is not necessary for the Panel to discuss this issue any further, since ultimately it has placed no reliance on either the initial email or the parties submissions in relation to the same, in coming to its conclusions in this case.
6.7 This aspect of the case is very straight forward. The Complainant is clearly the owner of various registered trade mark rights around the world that either incorporate of comprise the word “Aubert”. The Domain Name simply comprises the word “Aubert” combined with the “.com” TLD. In the circumstances the Domain Name is essentially identical to at least those marks that comprise the word “Aubert” alone.
6.8 Indeed, the Respondent appears to accept this when it states that it accepts “for present purposes” (i.e. proceedings under the Policy) that the Complainant has a mark that is identical to the Domain Name.
6.9 Further, the Panel finds that the Domain Name is also confusingly similar to those registered marks of the Respondent that take the form of a device in which the word “Aubert” forms a predominant part.
6.10 In the circumstances, the Complainant has clearly made out the requirements of paragraph 4 (a)(i) of the Policy.
6.11 The Respondent then goes on to make certain observation about the scope both in terms of geography and specification of the Complainant's registered rights. However, these are not relevant to the assessment that is required under paragraph 4(a)(i) of the Policy. As is recorded in paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview”), the long-established consensus view amongst panelists is that:
“If the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights. The location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark.”
6.12 As is also recorded in the WIPO Overview, paragraph 4(a)(i) of the Policy provides a “threshold” test. It is there to ensure that a Complaint has sufficient interest, standing or locus under the Policy to bring a complaint. It is easily satisfied in this case.
6.13 There is no suggestion in this case that the Respondent has its own trade mark in the term “Aubert”, or in any meaningful fashion trades under that name. What it does is quite clear. It uses the Domain Name, which incorporates the “Aubert” term, simultaneously to do two things.
6.14 The first of these things is to offer web services to those who might be interested in using an email address or URL that incorporates the term “Aubert”. The Respondent contends, and the Panel is quite prepared to accept, that this is intended primarily for use by those who are interested in the Domain Name “Aubert” because it is used by some as a surname. According to the Respondent, United States Census data shows that it is the surname of “over 1,250 individuals in the United States alone” and it the 22,507th most popular last name in the United States. The Respondent would appear not to restrict its services to individuals and entities in the United States, and “Aubert” is perhaps more common as a surname in other countries.
6.15 There is nothing illegitimate in the intended use of the Domain Name for these purposes and the Panel has no doubt that if this were the sole usage that the Respondent was making of the Domain Name, this would provide the Respondent with a legitimate interest in that Domain Name for the purposes of paragraph 4(a)(ii).
6.16 However, the second of the things that the Domain Name is used for is to generate pay per click revenue. Whilst, perhaps understandably, the Respondent somewhat down plays the significance of that activity in its Response, it has not sought to hide or disguise that this is a significant part its business operations. It freely admits that it obtains revenue from the Domain Name through the use of Oversee.net's pay per click services8 and exhibits evidence in the form of an interview with the CEO of Tucows Inc that clearly shows that this was one of the drivers for the acquisition of the portfolio of domain names of which the Domain Name forms a part.
6.17 Pay per click advertising has long been a feature and driver of domain name registrations. It has also been a feature of a very large number of cases under the Policy and as a consequence it has been considered in numerous decisions.
6.18 From these cases it is now reasonably clear that whether or not a respondent has a legitimate interest in a domain name used solely for pay per click purposes depends substantially upon assessment of that respondent's intention in acquiring the disputed domain name which may be informed by how exactly that domain name is used. If a respondent intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a complainant's rights and reputation in that term, then it may have a legitimate interest in the domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2). On the other hand, if the domain name in question was chosen because of the similarity to a name in which a complainant has an interest and in order to capitalise or otherwise take advantage of that similarity, then such registration and use does not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decisions of the three member panels in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267 and Bacchus Gate Corporation d/b/a International Wine Accessories v. CKV and Port Media, Inc. WIPO Case No. D2008-0321).
6.19 Therefore, in a domain name parking or pay per click case the rights or legitimate interests assessment often boils down to the questions: did the respondent register the domain name with the complainant's mark in mind, and has it deliberately used it to take advantage of the reputation of that mark? These are also precisely the questions that have to be addressed in assessing the question of bad faith registration and use and a detailed separate assessment of the question of rights and legitimate interests would seem to add little of real substance.
6.20 The Panel believes that these are the same questions that need to be asked and answered in this case. This is so even though, as has also been described, the domain name is also being used for a separate purpose that the Panel accepts if conducted in isolation could provide a legitimate interest. Where a respondent claims that it has a right or legitimate interest that arises out of its actual use of a domain name then that use or conduct needs to be considered in the round. It cannot escape a finding of abusive registration by merely pointing to an aspect of its activities that are unobjectionable if there are other significant aspects of its use that are not.
6.21 On occasion this may require a panel to consider difficult questions of degree. Perhaps there will be case where the wrongful activity is so minor or fleeting in comparison to the registrant's legitimate activities that it can be discounted. However, the point for present purposes is that the test of rights or legitimate interests is closely entwined with that provided by the assessment of bad faith. The Panel believes that to be so in this case.
6.22 The Respondent has cited three decisions under the Policy and one United States court decision which it claims show that it has a right or legitimate interest in this case. Having considered each of these decisions the Panel is unconvinced that they suggest it should follow a different approach to that outlined above.
6.23 First, there is the decision in Raccords et Plastiques Nicoll v. Tucows.com Co., WIPO Case No. D2008-1322. That case involved the domain name <nicoll.com>. It would appear that the only evidence before the panel was the respondent's vanity email use. Indeed, it contrasted the facts of the case before it with those in Pernod Ricard v. Tucows.comCo.,WIPO Case No. D2008-0789, stating:
“The panel [in Ricard] also found that the website operating from that domain name contained third party sponsored links which offered competing products to complainant's products. This does not appear to be the case in the present dispute before the Panel.”
6.24 In the circumstances, the finding of the panel in Raccords et Plastiques Nicoll that the Respondent did have a legitimate interest in the relevant domain name, makes perfect sense.
6.25 Second, there is the decision in Markel Corporation v. Tucows.com Co., WIPO Case No. D2007-1750. That case involved the domain name <markel.com>. The panel's findings of fact were very similar to those in Raccords et Plastiques Nicoll supra. In particular the panel stated:
“The Respondent is using the Disputed Domain Name for a ‘vanity email' service which in any event has 7 users and which does not appear to display links to competitors of the Complainant or Complainant's business”
6.26 Third, there is the decision in Ancien Restaurant Chartier v. Tucows.com Co., WIPO Case No. D2008-0272, which involved the domain name <chartier.com>. The panel in that case declined to make a finding on the issue of rights or legitimate interests given its separate finding that the registration was not in bad faith. However, as already explained, the Panel is of the view that in a case such as this the question of bad faith and rights and interests are intimately entwined. Again it is sufficient for present purposes to note that the case was somewhat different from those in the Ricard decision. The relevant pay per click page web page to which the Domain Name resolves, appears to have shown “links concerned with topics such as travel, finance, chat, or insurance”. There does not appear to have been the extensive display of links that when looked at as a whole suggested that some reliance was being placed on the trade mark significance of the domain name in question. In the circumstances, it seems likely that this Panel would have reached the same conclusion as the panel in the Ancien Restaurant Chartier case.
6.27 This, therefore, leaves the Respondent's reliance on the United States court decision in Avery Dennison corp v. Sumpton 189 F.3d 868 (9th cir 1999). It is a case which the panel in Raccords et Plastiques Nicoll, supra appears to have found of some assistance. As a consequence the Panel has examined the content of this decision (a copy of which was provided by the Respondent) with particular care. However, having done so it has not found it of any real assistance in this case.
6.28 Avery Dennison was not a case under the Policy. It was a case in which the plaintiff brought proceedings in the United States courts against the Respondent's predecessor in business in respect of the registration of the domain names <avery.net> and <dennison.net>. The plaintiff alleged that these registrations offended against the laws of trade mark infringement, trade mark dilution and unfair competition. These claims were rejected by the court.
6.29 The first thing to notice about Avery Dennison is that the facts were somewhat different to those currently before the panel. It was yet again a case where the only use of the domain names was for “vanity” email addresses and the like (see in particular the description of the facts in that case at 189 F.3d 872 and 873). Nowhere in the decision is there any suggestion that the domain names were also used for pay per click revenue generation. As such the Panel does not accept that one can draw from that case the conclusion that when a domain name is used for “vanity” email purposes, then a registrant will necessarily have a “legitimate interest” in the domain name regardless of the other uses to which that domain name is put.
6.30 The Panel also has a number of other problems with any reliance on the Avery Dennison decision. There is no real explanation offered as to why a decision of the United States courts is relevant to a dispute between Canadian and French companies. As the panel in Ancien Restaurant Chartier v. Tucows.com Co., supra, stated:
“In this case, the parties are domiciled in France and Canada respectively, and the Panel does not think it necessary or appropriate to rely upon any propositions of law articulated by the United States Federal Court of Appeals in the Avery Dennison Corp v. Sumpton case (supra).”
6.31 A more fundamental problem (even if it is accepted that the parties are in some way bound by United States law) is that there appears to be an inherent assumption in the Respondent's submissions that if a national court decides that use of a domain name does not offend against domestic law that means that a registrant must have a “right or legitimate interest” in the domain name. If so, that is an assumption that in the Panel's view is highly questionable. It was questioned in Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206 and in turn was criticised in great detail and at great length in the decision of 1066 Housing Association Ltd. v. Mr. D. Morgan,WIPO Case No. D2007-1461. The criticism of the local law approach was further endorsed in Fundación Calvin Ayre Foundation v. Erik Deutsch, WIPO Case No. D2007-1947.
6.32 The Panel is aware of one decision that has considered and declined to follow the reasoning in the 1066 Housing case so far as local law is concerned. That is the case of Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647. In that decision the distinguished panelist suggested that a local law analysis could still be relevant to an assessment of rights or interest. That, however, raised the question whose law should apply9. The fact that this problem arose was indeed cited in 1066 Housing as one of the reasons why citation of local law was unlikely to be of assistance in cases of the Policy. The solution offered to that problem where parties were (as here) located in different jurisdictions was as follows:
“where there is some question about the laws that may apply, then a Panel should also consider the location of mutual jurisdiction, and the conflict of laws principles that would be applied by courts in that jurisdiction, since that is the jurisdiction in which the courts may be asked to consider the parties respective rights if a challenge is filed under Paragraph 4(k) of the rules”
6.33 The Panel is skeptical that either the analysis or the solution offered in Sermo, Inc. to the local law problem is wholly convincing. The Policy is of international scope and the framers required it to be capable of practical application by a panelist that might be drawn from any jurisdiction (and more often than not a panelist who would not be drawn from the jurisdiction of either of the parties to a dispute). This fact alone strongly suggests that any interpretation of the Policy which requires legitimate interests to be assessed by a consideration of conflict of laws rules and then the local law that those rules prescribe, has at some point gone awry. However, it is not necessary to consider this issue any further in this case. The fact is that the Respondent has failed to persuade the Panel why the decision of the courts in Avery Dennison is of dispositive relevance (whether by reference to conflict of laws rules or otherwise) to the circumstances of this case.
6.34 Ultimately, therefore the question of rights or legitimate interests turns upon the Panel's assessment of whether or not there has been registration and use in bad faith. For the reasons given later on in this decision, the Panel believes that there has been such registration and use. Accordingly, the Complainant has here made out the requirements of paragraph 4(a)(ii) of the Policy .
Identification of the date of Registration
6.35 To succeed under the Policy a complainant must show that the domain name has been both registered and used in bad faith. This double requirement is one that has in the past been subject to criticism. If a domain name is registered in the absence of bad faith and then used in bad faith, a complainant may have no remedy under the Policy no matter how objectionable or egregious that subsequent bad faith use might be.
6.36 It is an issue that has led the devisers of many of the Domain Name policies that are based upon the Policy to drop this double requirement. Examples, include the policies that now apply in relation to <.au>, <.eu>, <.nl> and certain <.uk> domain names. However, the two fold test is well-established under the Policy, and in practice this is not as big an issue as might first appear. The reason is that the way in which a domain name is used is often the best evidence of the motives of the registrant at the time of registration.
6.37 Of course if the requirement is one of both bad faith registration and use, that then immediately raises the question, what is a registration for the purposes of the Policy? One possible answer would be to say that the domain name is registered when it is first created no matter through how many hands that domain name subsequently passes. However, it is an answer against which panels have almost universally set their face.
6.38 When a domain name changes hands the WhoIs database for that domain name will usually still record the original creation date. However, the recording of a new name in the register will usually constitute a fresh registration for the purposes of the Policy. In contrast, mere renewal of a domain name in the name of the same registrant does not constitute a new registration. Paragraph 3.7 of the WIPO Overview records this to be now a consensus view amongst panelists. It states the position to be as follows:
“While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name does not amount to registration for the purposes of determining bad faith. Registration in bad faith must occur at the time the current registrant took possession of the domain name.”
6.39 The point is of particular significance in this case. The Complainant's position in this respect has always been quite clear. In particular, in its Complaint it alleges that the Domain Name was “acquired” by the Respondent in bad faith and expressly declares that the issue is not whether the “Respondent's predecessor registered and used the domain name in bad faith”. Initially, the Respondent's position on this issue was unclear. It asserted that it was carrying on the business that had previously been conducted by Millbank Inc prior to the June 2006 acquisition. However, it was not clear from this whether the Respondent was asserting (a) that it was continuing the business of its predecessor in business, and insofar as that previous use was not in bad faith, then its registration could not be in bad faith (a proposition with which the Panel would agree); or (b) that somehow bad faith registration was to be judged by reference to the initial registration of the Domain Name in 1996.
6.40 With the service of the Respondent's Reply, it would appear that the Respondent was indeed alleging that bad faith should be judged by reference to the initial registrant's registration. However, the argument was somewhat more subtle than a simple assertion that it could rely on another company's motives for registration. Instead it asserted that the Respondent had succeeded to the original registrant's business. It was by reason of this fact (rather than transfer alone) that registration could be judged by reference of the motives of the initial registrant. It then supported its assertions by reference to an extract from Chapter 61 of Fletcher's Cyclopedia of the Law of corporations dealing with the effects of the “Combination, Consolidation and Merger of Corporations”. It then claimed that this was a “principal of law [...] so basic to the law of corporations that Tucows has difficulty believing it was not known by the Complainant and not also the law in France or in whatever other jurisdictions Complainant does business”.
6.41 Notwithstanding the Respondent's claims in this regard, the Panel considers the Respondent's argument to be unconvincing in the context of this dispute under the Policy. The starting point is always what is recorded on the WhoIs register for the Domain Name. This records the registrant as the Respondent “Tucows.com Co”. This was obviously not the name in which the Domain Name was initially registered. Therefore, prima facie this is a case where there has been a new “registration” for the purposes of the Policy. Of course, a new name in the register may not be determinative. For example, the mere fact that a company has changed its name and the register is amended to reflect that change is unlikely to result in there being a fresh registration for the purposes of the Policy. However, it is the party who claims that the change of name in the register does not reflect a new registration that bears the burden of proof of showing this to be the case (see for example the comments of the panel in Axelion GmbH v. Eric H. Schunk, WIPO Case No. D2008-1701).
6.42 In this case the Respondent has failed to convince the Panel that there was not a new registration for purposes of the Policy in or about June 2006. There is a marked lack of precision in the Response itself as to exactly how “Tucows” acquired the NetIdentity business and how the Respondent came to be listed as registrant. At times it is referred to an acquisition at other times a merger. However, insofar as the process involved a transfer of domain names into a different legal entity, then the Panel sees no reason why this should not trigger a fresh registration for the purposes of the Policy even if this was part of a broader acquisition and continuation of a pre-existing business. The test is not one of whether some new registrant succeeds to the rights or obligations of a previous registrant. It is simply whether there is a new registration; and where there is a new registration, that is the point in time at which the new registrant's intentions vis-a-vis a domain name are typically assessed.
6.43 Insofar as a domain name comes into the ownership of a registrant by reason of a merger, matters may be more complex. There may well be a new registration in this case as well, but the Panel appreciates that there may be good arguments that this is not the case depending upon the exact way in which the law that governs that merger operates. However, in this case insufficient evidence was brought before the Panel in this respect.
6.44 Further, such material as the Panel has seen would suggest that the Respondent Tucows.com Inc. is a company registered under the laws of Nova Scotia (see paragraph 4.8 above) and that although the NetIdentity business was acquired by merger, that was a merger between two Nevada corporations: i.e Tucows (Nevada) Inc and Millbank Inc (see footnote 4 to paragraph 4.9 above). The Respondent cannot be treated as the same legal entity as the previous registrant of the Domain Name solely by reason of that transaction.
6.45 Therefore in summary, the issue of bad faith registration must be assessed at the date of the transfer of the Domain Name into the name of the Respondent in or about June 2006.
6.46 The Panel's conclusion as to a new registration is not necessarily fatal to the Respondent's case. As has already been stated, if the Respondent can show that it has simply been carrying on the legitimate business practices of its predecessor in business, then that new registration will not have been in bad faith. This in turn raises the question what exactly was happening in June 2006.
6.47 The evidence that exists in this respect is not as full as the Panel might have wished. Nevertheless, on the material that is before the Panel it seems more likely than not that the position was as follows:
(i) The Domain Name was being used for the combined purpose of pay per click advertising and “vanity” email services.
This seems to be reasonably clear from the statements made by the CEO of Tucows Inc at the time of the acquisition.
(ii) The sponsored links appearing on the pay per click advertising page were (at least in some jurisdictions) of the same sort as those subsequently shown by the Complainant to be appearing on that page in July 2008, i.e. they in large part involved links to sponsored searches that were in some way connected with products similar to those offered by the Complainant, i.e., for babies, infants or children.
The Panel believes that this conclusion is justified by reason of the fact that the Respondent's own evidence is that it did not seek to influence the nature of the sponsored searches that appeared on that page until it had notice of the Complaint. It states that at only that point did it then change the settings of the algorithm that was used to choose those links. The Respondent has also not brought forward evidence, nor even sought, to suggest that the links that appeared on the webpage operating from the Domain Name were in some manner aberrant or atypical of the sorts of links that appeared prior to the time that the Respondent intervened to change the algorithm.
6.48 The sponsored links that appeared prior to the change of algorithm cry out for an explanation. “Aubert” is on the Respondent's own case a surname. It is not a term that is inherently descriptive or suggestive of babies' or infant's goods. In short, links to products of this sort only make sense by reason of the trade mark significance of the term “Aubert” and the association of that mark with the Complainant's products. In the absence of evidence to the contrary (and it must be the Respondent that bears the burden of proof of bringing such evidence), it would appear that someone or something has chosen those links because of that association10.
6.49 The Respondent may contend that even if this is the case this cannot demonstrate a bad faith registration. It has brought forward evidence in the form of Mr. Sweetman's declaration that no one at the Respondent (or perhaps within the Tucows group) was aware that the term “Aubert” was a term of potential trade mark significance. The Panel has no reason to doubt the evidence of Mr. Sweetman in this respect. The Complainant is based in North America and what evidence is before the Panel would suggest that the reputation of the Complainant's marks does not extend to the North American continent. Although the Domain Name was acquired as part of the purchase of a larger portfolio, this is not a case where it could be said that there has been “willfull” or “Nelsonian” blindness on the part of the Respondent in the sense that the Respondent deliberately refused to turn its mind to the nature of the domain names it was acquiring, and had it turned its attention to the Domain Name it would have been apparent from the Domain Name itself that it had trade mark significance.
6.50 The Panel further also accepts that knowledge (whether direct or imputed) is key when it comes to assessing the question of bad faith. While knowledge and intent may sometimes be inferred from use, the Panel is unconvinced by the recent line of cases that have appeared to suggest that an acquirer of a large domain name portfolio is under some form of positive duty to check by reference to Internet searches, trade mark searches and the like whether a third party has rights in that name. The first of these is Mobile Communications Service Inc v. WebReg, RN,WIPO Case No. D2005-1304. Arguably, Mobile Communications was a case of Nelsonian blindness in that the panel concluded that the respondent was amongst a class of registrants that “respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks”. The domain name <mobilcom.com> was not a dictionary word and if the complainant had turned its mind to the domain name then it may have realised that the domain name had trade mark significance. However, the panel went further and made the following statement:
“even a cursory search on search engines like Yahoo! and Google would have shown that MOBILCOM is a trademark”
thereby suggesting that registrants of this type had an obligation to conduct that sort of search.
6.51 The decision has been followed and even extended in a number of cases. They include mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448, HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062; Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666; 5B Investments Inc. v RareNames, WebReg,WIPO Case No. D2008-0146; and Artemides Holdings Pty Ltd v. Gregory Ricks,WIPO Case No. D2008-1254. So for example, the panel in the Terroni case stated:
“People who make a living from registering vast numbers of domain names must make reasonable efforts to ensure that they are not infringing on the rights of others”
6.52 However, this approach is not universally accepted. Cases where the Mobile Communications approach has been questioned include the three member panel in Promatic International Limited v. Name Administration Inc., WIPO Case No. D2006-0673. Further, if there is nothing per se inimical to the Policy in dealing in domain names or the creation of large domain name portfolios for the purposes of financial gain, it is difficult to see the logic or justification within the wording of the Policy of applying a different investigatory burden on the wholesale dealer in domain names than that which applies to a person who registered a single domain name. And if there is such justification, surely it must lie in the selection process adopted by such dealers in domain names (for example, blind acquisition of non-renewed domain names) rather than the scale on which that process is performed.
6.53 Further knowledge is only part of the equation. It is conceivable that a domain name can be registered with the knowledge of someone else's trade mark rights and the domain name has still not been registered in bad faith. What is also usually required is an intent to take advantage of those trade mark rights. Knowledge is important since without knowledge (and in the absence of wilful or Nelsonian blindness of the type described above) it will be difficult to show that a respondent has the necessary intent for bad faith. But the existence (or otherwise) of knowledge does not of itself prove intent.
6.54 For example, in this case the respondent has acquired a portfolio of domain names that represent surnames. Surnames are often used as business names and trade marks. The Panel therefore suspects that it is highly likely that many of the domain names in the portfolio will equate to at least one if not many trade marks. The Panel doubts that simple knowledge of that fact (even if specific trade marks had been brought to or came to the Respondents attention prior to or during the process of the domain names acquisition) would be sufficient by itself to justify a finding of bad faith if the Respondent's sole intention had been to use those domain names for “surname” related purposes. In such a case the Respondent would notwithstanding its knowledge not have the requisite intent.
6.55 However, the specific pay per click usage made of the Domain Name at the time of acquisition leads in this case to very different conclusion. Even if, as the Panel accepts, no one within the Tucows organisation knew of the trade mark significance of the term “Aubert”, the fact remains that it was being used in large part in a manner to generate sponsored searches and links that took advantage of the trade mark significance of the term. The links predominantly had an association with products for children or infants and as far as the Panel can tell are not explicable by reference to some “generic” or “descriptive” meaning of the term “aubert”.
6.56 How “pay per click” or “domain name parking” websites operate, is well known and has been set out in a number of cases. In summary, whilst an entity that takes advantage of these services does not typically choose the specific links that appear on a webpage, they are nevertheless able to influence the types of links that appear. This usually will take the form of the choice of “keywords” or “meta tags” that will in turn influence and guide the software or algorithm used by the pay per click provider to choose the links. Indeed, Mr. Sweetman of the Respondent makes indirect reference to this when he refers to his subsequent amendment of the relevant algorithm in this case.
6.57 The fact that a registrant can influence the form that sponsored links take and the additional financial advantage that a registrant can obtain where the links displayed take advantage of the trade mark rights of a third party (as opposed to more generic links) has on occasion led panels to infer that the registrant was aware of the trade mark associations of a domain name (see for example, Owens Corning v. NA,WIPO Case No. D2007-1143).
6.58 In this case it is not suggested that someone in the Respondent organisation took a positive decision to directly influence the links that were displayed, but in the circumstances it does not matter. It allowed the domain name to continue to be used to take advantage of the trade mark association of the term “aubert”. Maybe these links appeared because of “keyword” or similar choices made by the previous owner of the Domain Name. Maybe the responsibility can be laid at the door of the operators of the pay per click service. However, whomever it was and in the absence of any other explanation as to why these links appeared, this is evidence that at the time of registration at least someone who had been involved in influencing the links that appeared, had knowledge of the Complainant's mark and an intent to take advantage of the similarity of the Domain Name and that mark for the purposes of gaining a financial advantage. In circumstances where the Respondent allowed this use of the Domain Name to continue, that knowledge and intent can and should be imputed to the Respondent for the purposes of the Policy.11
6.59 One way of looking at this is by analogy with the concepts of agency that exist in various legal systems, whereby the principal is responsible for the actions of his agent. However, the Panel would approach this issue somewhat more simply. A domain name registrant is under the Policy responsible for the way in which a domain name has been and is used (at least so far as a website that is operating directly from the domain name without further addition is concerned). A registrant cannot avoid responsibility for the way in which that domain name is used by saying these are the actions of a third party. The registrant ultimately has control over the way in which a domain name is used and should he decide to cede control of the domain name to a third party (whether by contract or otherwise) he nevertheless remains responsible for how that domain name is used. Were this not the case the whole purpose and intent of the Policy could be undermined by the use of such contracts. That cannot have been the intent of the framers of the Policy.
6.60 There may be cases where the bad faith use in question is merely fleeting and so minor and incidental in comparison to the ordinary use of the domain name that it would be wrong to hold the registrant responsible. But that is not the case here. Pay per click advertising was apparently as much part of the Respondent's business model as the provision of vanity email and associated web services. Further there appears to have been systematic use of sponsored links in deliberate reliance of the trade mark significance of the term “aubert” for over two years (i.e. between acquisition and the Respondent being made aware of the Complainant's Complaint). It may be that this trade mark usage was more extensive in some territories rather than others (the Respondent seems to suggest that this may have happened more in Europe than in North America), but even if this is correct, the trade mark usage appears to have been significant.
6.61 The Respondent provides evidence of the fact that it performed due diligence to ensure that when it acquired the NetIdentity portfolio of domain names, these names did indeed correspond to surnames. The Panel accepts for the purposes of this decision that this did indeed occur. Nevertheless, it makes no difference to the analysis.
6.62 Evidence of the fact that the Respondent conducted this due diligence analysis might have been important factual evidence if there was a real issue in this case as to whether the Tucows group intended to use the domain name portfolio only for surname purposes. The Panel accepts that this was indeed one purpose of acquisition and registration. The problem is that it does not address the issue of trade mark related pay per click usage.
6.63 The Respondent cites no less than eight cases under the Policy that involved either it or its predecessors in business and which the Respondent claims support for its claim that its registration and use in this case have not been in bad faith. The Panel has considered each of the cases cited by the Respondent, but is not convinced that any of them assist the Respondent in light of the reasoning set out above.
6.64 It is not necessary to go through the facts of each of the cases cited in any detail. It is sufficient to note that all of the cases save two involved Mailbank.com Inc, the Respondent's predecessor in business. There is no suggestion in any of these six cases that the domain name in question was being used for a purpose other than the provision of vanity email services and the like. For example in Dong A/S v. NetIdentity, supra, the panel expressly noted that “[the Respondent] ha[d] not attempted to trade on Complainant's name”.
6.65 The two cases that involved the Respondent are Walls Industries, Inc., Cleburne, Texas v. Tucows.com Co., supra and KenBatchelor Cadillac Company, Inc. v. Tucows.com Co, c/o Domain Admin, supra. In the Batchelor Cadillac Company case, the complainant failed because he failed to show that he had any trade mark rights for the purposes of the Policy. Accordingly, that case is of no assistance in the current case before the Panel.
6.66 That ultimately leaves the Walls Industries case, which involved the <walls.com> domain name. The Walls Industries case did not address the question of bad faith, coming to a conclusion solely on the question of rights or legitimate interests. However, the case cannot be dismissed on that ground alone since for the reasons already given the Panel in the current case believes that the issues of rights or legitimate interests and bad faith are intertwined. There is some suggestion in the Walls Industries case that the domain name was being used for links to competing products of the complainant. Unfortunately, it is not at all clear how extensive that use was. As a result it is unclear whether the facts were truly analogous to those currently before the Panel. Further, the Walls Industries case provides no analysis of the approach to take where a respondent is simultaneously using a domain name for more than one type of use. For these reasons, even if the facts of the Walls Industries case are comparable to those currently before the Panel, the Panel declines to follow the Walls Industries decision.
6.67 The Panel also believes its conclusions in this case to be in keeping with the decision if not quite the reasoning of Pernod Ricard v. Tucows supra. In that case the domain name was <ricard.com> and had been used in conjunction with a pay per click service to display sponsored links associated with alcoholic beverages. So this was another case where the nature of the sponsored links could not be explained save by the trade mark significance of the term. The panel decided the case on the grounds that the Respondent either had actual knowledge of the trade mark significance of the complainant's mark or should have made enquiries in relation to the term “Ricard” (citing the Mobile Communications case and some of the cases that followed it and which are discussed above). For the reasons already described above, the Panel declines to decide the current case on either of these grounds per se12, but nevertheless suspects that it would have nevertheless have come to the same ultimate conclusion.
6.68 The Respondent criticises the Pernod case. It first claims that the panel in that case erred by not analysing or taking into account the decision in Avery Dennisonsupra. However, for the reasons already given the Panel does not accept that the decision is of any dispositive relevance to the issues that arise in this case.
6.69 Second, the Respondent claims that another flaw with the Pernod decision is that the Panel failed to mention that the Respondent had a number of customers for the “Ricard” vanity email service. In the case now before it the Panel accepts the Respondent's contention that it has 10 customers for “Aubert” vanity email services. The Panel also is prepared to accept for the purposes of this decision the Respondent's contention that it contracts with its customers limits the nature of any settlement terms it can reach with the Complainant (although there is no supporting evidence on this issue before the Panel). However, again the Panel does not see why this makes a difference to the analysis in this case.
6.70 Of course, the fact that innocent third parties may well be adversely affected by any decision of the Panel to transfer the Domain Name to the Complainant, is something that has troubled the Panel in this case. However, by simultaneously permitting the use of the Domain Name for both legitimate vanity services and illegitimate pay per click revenue generation that was parasitical on the trade mark significance of the “Aubert” name, it was the Respondent that placed the interests of its customer's at risk. Ultimately, any difficulties and embarrassment that this may cause the Respondent (or any other relevant company in the Tucows group) with these third parties are of the Respondent's own making.
6.71 Third, the Respondent provides evidence that the Pernod decision has been challenged in proceedings commenced pursuant to paragraph 4(k) of the Policy in the Canadian courts. In particular, the Respondent exhibits a Statement of Claim dated September 12, 2008 issued in the Ontario Supreme Court of Justice. It is clear from that Statement of Claim that the Respondent seeks a series of declarations from the court including a declaration that each of the three factors that a complainant needs to prove in proceedings under the Policy (and which are identified in paragraph 6.1 above) do not apply in the Pernod case. However, whilst the Statement of Claim is detailed, it includes no additional submission or contention that leads the Panel to believe that its approach in this case is in error13.
6.72 Similarly the panel in the Weidner Investment Services decision , whilst providing far less detailed reasoning that the decision in Pernod , noted that the domain name in that case (i.e. <weidner.com>):
“resolve[d] to a website featuring pop-up advertisements, a commercial search engine, and sponsored links to various third-parties, some of whom offer services in competition with those offered under Complainant's mark”
6.73 The panel reached a decision in Weidner Investment Services without the benefit of a response having been lodged by the Respondent. Again the Respondent commenced proceedings in the Ontario courts. It would appear that the matter was resolved in the Respondent's favour with a decision of the court that the Respondent had not registered the relevant domain name in bad faith. However, the “decision” in this case is unreasoned and on closer examination turns out to take the form of a short order made with the consent of both parties in the proceedings. Again, there is nothing in the circumstances of the Weidner Investment Services case that would lead the Panel to a different conclusion in the case now before it.
6.74 In summary the Panel concludes that the Respondent in this case at the time that it acquired the domain name and for a period thereafter allowed the Domain Name to be used for pay per click sponsored searches. The sponsored searches were only explicable by reference to the trade mark significance of the term “Aubert” rather than any obvious generic or descriptive meaning of that term. This constituted registration and use of the Domain Name in bad faith. It does not matter here that the Respondent may not have had any direct (as opposed to imputed) knowledge of the Complainant's trade mark prior to the commencement of these proceedings. It is sufficient that the Respondent intended and permitted the Domain Name to continue to be used by a pay per click service provider in a way that obviously took advantage of the trade mark meaning of the “Aubert” term at the time that the Respondent became the registrant and for a substantial period of time thereafter.
6.75 Further, it does not matter that at the same time the Respondent also intended to use and did use the Domain Name in order to provide a vanity email service and similar services dependent upon the surname meaning of the term “Aubert”. These uses were not bad faith uses of the Domain Name. However, a domain name registrant engaged in the bad faith registration and use of a domain name cannot avoid the consequences of that use by pointing to the fact that the Domain Name has also been used for a purpose that is not use in bad faith.
6.76 For the avoidance of doubt and given the comments of the dissenting panelist in this case, the majority of the panel wish to make it clear that they have come to their conclusion without consideration of the issue of whether the sponsored links displayed involved trade mark infringement. The majority do not consider the issue of trade mark infringement to be relevant to the question of abuse (see for example, Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule De Souza,WIPO Case No. D2003-0372).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <aubert.com> be transferred to the Complainant.
Matthew S. Harris
Dated: March 17, 2009
This panelist believes that Respondent has both a legitimate interest and a lack of bad faith. Respondent's business model registers domains that correspond to surnames. It derives revenue from the use of surnames to generate links that point to activity on the Internet that includes the surname somewhere in a corresponding website. The algorithm that generates the links takes into consideration where users go and what search terms they use to get there.
This can obviously lead to circumstances where links to a mark owner and to competitors selling similar goods will appear. Often a vendor's website will include the names of its competitors, as when it engages in legitimate product comparison. The Respondent's business model does not target any particular brand owner. When alerted to the existence of links to Complainant's competing goods, Respondent responsibly made adjustments to the software algorithm to minimize such a result. The majority of the panel believes this supports a finding that the Respondent could have done so in advance. Undoubtedly so, but this is not, in my humble opinion, a reasonable burden to place on Internet-based businesses. The majority would expect the Respondent to search every trademark database in the world each and every time that it registered a domain name. It would expect the Respondent then to generate a list of all possible goods and services offered under such brands and adjust the algorithm to block in appropriate combinations of brands and products. The majority would expect this to happen in each and every one of the tens of thousands of surnames in its portfolio. The majority concludes that such failure to do so supports a finding that this particular mark owner was selected especially for abuse.
The majority may see the pay per click revenue links as evidence of infringement. I would not dispute that observation here. However, there was clearly no attempt to target the Complainant. The targeting is a particular element of UDRP bad faith, hence I find no bad faith in this case.
Dated: March 17, 2009
1 See also the comments of the Panel to the effect that Tucows.com Co is a wholly owned subsidiary of the Registrar in Pernod Ricard v. Tucows.com Co, WIPO Case No. D2008-0789. The Panel also notes that in the Pernod case there is some discussion as to how a respondent can be bound by the terms of the Policy if it is also the registrar. A similar discussion is to be found in General Electric Company v. Marketing Total S.A.,WIPO Case No. D2007-1834. As far as the Panel is aware, neither the Registrar nor the Respondent has at any time suggested that their relationship is such that one or other of them is it not bound by the terms of the Policy. Both have at all times conducted itself in a way that is consistent with the Policy and (subject of course, to the exercise of any right under paragraph 4(k) of the Policy) appear to be willing to respect the decision of the Panel in this matter. Further, and in any event, any suggestion that the Registrar is not bound to comply with the terms of the Policy, would be somewhat difficult to reconcile with clause 3.8 of the ICANN Registrar Accreditation Agreement.
2 Exhibit 11 to the Complaint.
3 In the course of preparation of this decision one of the panelists
noticed that there were records in the “Wayback Machine” Internet Archive that would suggest that this remained the case up until at least February 8, 2005. However, after that date there no pages were recorded in respect of any website operating from the Domain Name.
4 See Pernod Ricard, supra, and discussion above under footnote 1.
5 In its Response the Respondent refers the Complainant and the Panel to copies of Tucows Inc's regulatory filings available on the Investor Relations section of the Tucows corporate website. The SEC Form 8 K document filed on June 21, 2006 gives a somewhat more precise description of how the acquisition was structured. In particular it states:
“On June 15, 2006, Tucows (Delaware) Inc. (“Tucows DE”), a Delaware corporation and wholly-owned subsidiary of Tucows Inc. (the “Company”), entered into an Agreement and Plan of Merger (the Merger Agreement”) by and among Tucows DE, Tucows (Nevada) Inc., a Nevada corporation and wholly owned subsidiary of Tucows DE (“Merger Sub”), Mailbank.com Inc., a Nevada corporation (“Mailbank”), Rawleigh H. Ralls, IV, as the representative of the Mailbank stockholders (the “Stockholders' Representative”), certain stockholders of Mailbank party thereto (the “Principal Stockholders”) and, solely with respect to Section 11.4, the Company.
On June 19, 2006, the Company completed the acquisition of Mailbank pursuant to the Merger Agreement. The Merger Agreement provided for a business combination whereby Merger Sub merged with and into Mailbank in accordance with the terms of the Merger Agreement, with Mailbank continuing as the surviving corporation and as a wholly-owned subsidiary of Tucows DE (the “Merger”)”.
6 The source for this is a transcript of an interview with Mr. Ness at Exhibit D to the Response.
7 For example when this webpage was accessed by a member of the Panel located in the United Kingdom on both March 2, 2009 and March 6, 2009.
8 The text of the Response would appear to suggest that this is an issue of to whom the Respondent has allocated the “www” third level domain. The Panel doubts this is actually correct. The relevant pay per click page can be reached simply by typing the Domain Name alone into a browser. Indeed, it is noteworthy that the evidence of Mr. Sweetman filed by the Respondent in support of the assertions in its Response does not talk about the site operating from the “www.aubert.com” website, but more generically the “aubert.com” website.
9 This is an issue that has arisen in previous cases involving the NetIdentity business. For example, in Puls Elektronische Stromversorgungen GmbH v. NetIdentity, WIPO Case No. D2002-0205 the complainant cited case law that it claimed showed that NetIdentity “surname” use was contrary to German law. The three member panel dismissed that contention with the words “the fact (if it be the fact) that as a matter of German and Austrian law what the Respondent is doing is unlawful is of no consequence in this administrative procedure”. In the Panel's opinion it was quite right to do so.
10 The majority of the Panel notes the comments of the dissenting panelist which seem to suggest how these links might have innocently appeared. However, no evidence was placed before the Panel in this case to support such a conclusion in the circumstances of this case.
11 The majority of the Panel notes the comments of the dissenting panelist that in this case the problematic sponsored searches may have been influenced by searches previously made by Internet users that had reached the webpage. The Respondent has put no evidence before the Panel that this is what actually happened in this case. As has already been stated, if a link cannot be explained away by reference to the descriptive content of the domain name and there is prima facie trade mark usage, a registrant bears the burden of explaining that usage away. The Respondent has not satisfied this burden. However, even if this is what happened in this case, the majority of the Panel does not think it helps the Respondent. If the trade mark usage of the Domain Name has come about by means of some sort of feedback from previous users of the site, this does not absolve the Respondent. The Respondent will still in these circumstances have permitted the Domain Name to be used both at the date of registration and thereafter by a pay per click service that “knowingly” takes advantage of the trade mark significance of the “Aubert” name. The fact that the service has effectively adopted the knowledge of the public as to the trade mark significance of the name is sufficient.
12 The Panel's decision here rests rather on an imputation of knowledge and intent to Respondent derived from the Respondent allowing a certain type of use. See further paragraph 6.58 above.
13 The Panel also has some difficulty in understanding the basis upon which the Respondent seeks relief from the Ontario courts. This is of course an issue of Canadian law and none of the panelists here are Canadian lawyers. However, the Panel notes that for the Canadian courts to find that the Respondent had a cause of action in the circumstances described would be in marked contrast to the finding of the English Courts in Patel v. EndoPharmaceuticals Inc (High Court, Chancery Division, November 30, 2006) and Pankajkumar Patel v. Allos Therapeutics Inc (High Court, Chancery Division, June 13, 2008). A copy of the later case is available at http://www.nominet.org.uk/disputes/caselaw/index/patelvallos/
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