1.1 The Complainant is Marden Group B.V. of Amsterdam, the Netherlands, represented by N.V. Nederlandsch Octrooibureau, the Netherlands.
1.2 The Respondent is Tucows.com.co of Toronto, Ontario, Canada, represented by Alvarado Smith, United States of America.
2.1 The disputed domain name <marden.com> (“the Domain Name”) is registered with Tucows Inc.
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2011. On June 23, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Domain Name. On June 23, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 27, 2011. 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 for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced June 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2011. The Response was filed with the Center July 18, 2011.
3.3 The Center appointed Karen Fong, Matthew S. Harris and G. Gervaise Davis III as panelists in this matter on August 10, 2011. 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.
3.4 The Respondent had omitted to file the appendices to its Response. At the Panel’s request, the Center notified the Parties of this on August 12, 2011, giving the Respondent until August 16, 2011 to submit the appendices. The Respondent did so within the deadline set.
4.1 The Complainant is a limited liability private company based in the Netherlands. Its trade name, Marden Group B.V. was registered on April 16, 2008. The Complainant owns a Benelux trade mark registration for MARDEN under trade mark registration number 0844874 which was registered on May 9, 2008.
4.2 The Domain Name was registered on July 12, 1996 in the name of Mailbank, Inc. (doing business as NetIdentity (“Mailbank”)). The registration of the Domain Name by Mailbank was part of its business model of providing personalised email services, blogging and webhosting services through the registration of domain names that equated to the surname of individuals. The thousands of surname domain names registered included names such as “smith.net” and “schafer.org”. For example, a Mr. Bill Smith could in return for a registration and rental fee obtain the email address “[email protected]” so long as the email address is available. If Bill Smith also purchases website-hosting services, he will be given a third level domain name corresponding to his own first name and surname and would have a website at the address “BILL.SMITH.NET”.
4.3 On June 15, 2006, Tucows, Inc. the owner of the Respondent, acquired all the assets of Mailbank including the personal surname service which is also referred to as vanity email services. The Respondent calls this service the “Personal Name Service”. The domain names that formed part of the Personal Name Service (including the Domain Name) were transferred to the Respondent some time in 2006.
4.4 The Domain Name was connected to a website “www.marden.com” (“the Website”) which offers the Personal Name Service in connection with the Domain Name as well as pay-per-click links to websites related to college courses. The Website as it currently stands does not have these pay-per-click links.
5.1 The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy have been met and the Domain Name should be transferred.
5.2 The Domain Name is identical to its trade mark registration for MARDEN as well as its trade name.
5.3 The Complainant has exclusive rights in the trade mark MARDEN because of its Benelux trade mark registration. It has not licensed or authorised the Respondent to use MARDEN. The Respondent is not affiliated with the Complainant. It has no trade mark rights to MARDEN, has never been known by the name MARDEN nor has it run any commercial business under the name MARDEN.
5.4 The Respondent uses the Domain Name for two purposes – to offer its Personal Name Service and for pay-per-click advertising. The Complainant relies on the case of Aubert InternationalSAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986 for its contention that the use of a domain name which includes a third party’s trade mark for vanity email services will give rise to a legitimate interest in the domain name only where this is its sole usage. If such use is also accompanied by use of the domain name for generating pay-per-click revenue, then it will be necessary to assess the respondent’s intention in acquiring the domain name which may be informed by how the domain name is being used. The Complainant contends that in this case the Respondent’s pay-per-click services does not give it any legitimate interest as the links from which the Respondent offers click through revenue include third-party websites offering services competitive with that offered by the Complainant. The advertisements on the Website appear to relate to studies and courses. But when clicking on the links the visitor will be referred to a website with advertisements on annuity, retirement income and loans. These offerings compete with the Complainant’s financial services offering. The objectionable use overrides any legitimate interest the Respondent may have in the Domain Name.
5.5 As surnames are often business names and trade marks, a large part of the domain name portfolio acquired by Tucows Inc in 2006 from Mailbank are trade marks belonging to third parties. Such acquisition and registration of the domain names consisting of surnames must therefore constitute registration and use in bad faith.
5.6 When a domain name changes hands, the recording of the new name on the register constitutes a fresh registration under the Policy notwithstanding the fact that the WhoIs database will still show the original creation date. The change of name to the Respondent would have been recorded in 2006. The purpose of the acquisition as stated by Eliot Noss, the CEO of Tucows, Inc in a Tucows podcast interview on June 15, 2006 is to generate revenue from providing vanity email services and pay-per-click revenue through domain name “parking”. These purposes constitute registration and use in bad faith.
5.7 In March 2009, the Personal Name Service was taken over by Hover which is also operated by Tucows. If this should also be considered a fresh acquisition and registration, then such registration would also be in bad faith as the purpose of such acquisition was the same as in 2006.
5.8 The Respondent is using the Domain Name in bad faith as its pay-per-click links on the Website are to websites offering services similar to those of the Complainant. Such use shows the Respondent to be intentionally attempting to attract for commercial gain, Internet users to the Website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Website or location or of a product or service on the Website or location.
5.9 The Personal Name Service generates revenue in excess of the Respondent’s out of pocket costs for registration of a domain name. As the domain names were registered or acquired for the purpose of selling or renting, or otherwise transferring to the owner of the trade mark or service mark (usually the complainant) or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the domain names, such use amounts to bad faith. In addition to providing clients with an email address corresponding to their names, the Respondent also leases and sometimes sells the domain names. Lease prices for surname domain names such as the Domain Name start at 750 USD per month. On the rare occasions that the domain names are sold, the price would be in the tens of thousands of dollars. Such use also amounts to bad faith.
5.10 Finally, because it is active abroad, the Domain Name is essential to the Complainant and the balance of interest should be in favour of the Complainant.
5.11 The Respondent denies that the Domain Name should be transferred to the Complainant for the following reasons:
5.12 For the purposes of the UDRP, the Respondent accepts that the Domain Name is identical or confusingly similar to the Complainant’s trade mark.
5.13 The case law and numerous UDRP decisions (e.g.Raccords et Plastiques Nicollv. Tucows.com Co., WIPO Case No. D2008-1322; Ancien Restaurant Chartier v. Tucows.com Co., WIPO Case No. D2008-0272; Lorenzo International Limitedv.Tucows.com Co / Tucows Inc, WIPO Case No. D2010-2254 and Avery Dennison Corp.v. Sumption, 189 F.3d 868 (9th Cir. 1999)) support the contention that the provision of the Personal Name Service in connection with a domain name creates a legitimate interest in relation to that domain name.
5.14 The Domain Name was registered 15 years ago on July 12, 1996 as part of the provision of the Personal Name Service because MARDEN is a common surname. Over 2,500 individuals in the United States has MARDEN as a surname and is one of the country’s top 15,000 most common surnames.
5.15 When the Complainant registered its trade mark in 2008, it knew or should have known that the “.com” domain name corresponding to its chosen business name was already registered and in use by the Respondent.
5.16 Prior to the filing of the Complaint, the Respondent had no knowledge of the Complainant’s trade mark. When the Complainant contacted the Respondent in an attempt to purchase the Domain Name, it did not reveal to the Respondent that it was the owner of a trade mark corresponding to the Domain Name. Within hours of the filing of the Complaint, as a precaution the Respondent removed all third party advertising from the Website. The Respondent understands that many businesses are named after their founders’ surnames and has a program in place to block advertisements in the same lines of business as those operated by owners of trade marks.
5.17 The Complainant has failed to understand the nature of the Personal Names Service and tries instead to isolate only the advertising on the Website. In any event, the mere fact of advertising, which is provided by third party advertising companies, is not sufficient for a finding of bad faith registration and use.
5.18 The Complainant has not provided any evidence to satisfy the non-exclusive circumstances in paragraph 4(b) of the Policy for a finding of registration and use of the Domain Name in bad faith.
5.19 The prompt actions of the Respondent in removing the advertising from the Website demonstrates its diligence and good faith in trying to operate the Personal Names Service as a good corporate citizen.
5.20 The Respondent requests that a finding of reverse domain name hijacking be made against the Complainant as the Complainant has brought this action in bad faith due either to its lack of diligence or by bringing this action under false pretences. The Domain Name has been in constant use for the Personal Names Service since 1996 whilst the Complainant was formed only in 2008. The trade mark post dates the Domain Name registration by 12 years.
5.21 The Complainant did not reveal its trade mark concerns when it corresponded with the Respondent to attempt to purchase the Domain Name.
5.22 The Complainant’s failure to distinguish any of the relevant UDRP precedents in personal names underscores the lack of good faith in bringing the action.
6.1 According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
6.2 The Panel is satisfied that the Complainant has established registered trade mark rights to MARDEN. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
6.3 The Respondent uses the Domain Name to offer to those who are interested, an email address or URL that incorporates the term “Marden” primarily because it is a surname. The Respondent had prior to the Complaint being filed also used the Domain Name to generate pay-per-click revenue.
6.4 The Panel accepts that the provision of such personalised email, blogging and webhosting services in connection with a domain name would provide a respondent with a legitimate interest in that domain name if this is its sole usage (see Raccords et Plastiques Nicoll v. Tucows.com Co., WIPO Case No. D2008-1322, Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986 and Lorenzo International Limitedv.Tucows.com Co / Tucows Inc, WIPO Case No. D2010-2254). As such, the use of the Domain Name in connection with the Respondent’s Personal Name Service provides the Respondent with a legitimate interest.
6.5 If however, in addition to the above, the domain name is also used to generate pay-per-click or any other advertising revenue then one needs to consider whether such use is permissible or whether it amounts to bad faith. If it is permissible, the legitimate interest already established will not be affected. If the pay- per-click links result in a connection to goods or services competitive with those of the rights holder or is based on trade mark value, such use would be regarded as unfair use and would not confer rights or legitimate interests but will in fact override the legitimate interest already established. Permissible pay-per-click links need not necessarily create a right or legitimate interest. Where the domain name consists of common words and the links relate to the generic meaning of the domain name at issue, this may be permissible and also give rise to rights and legitimate interests on the part of the respondent (see paragraph 2.6 of the WIPO of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). If the Respondent’s use of pay-per-click links on the Website does not amount to bad faith then the Respondent would succeed under this head. These same questions have to be addressed in assessing the question of bad faith registration and use. The question of rights or legitimate interests therefore turns upon the Panel’s assessment of whether or not there has been registration and use in bad faith. This is considered in section D below. For reasons given there, the Panel finds that the registration and use of the Domain Name does not amount to bad faith and the Respondent has therefore established that it has rights or legitimate interests in the Domain Name.
6.6 To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a dual requirement.
6.7 The date to consider whether registration was in bad faith is the date that the Domain Name was transferred to the Respondent rather than the date of initial registration by Mailbank on July 12, 1996 as contended by the Respondent. Paragraph 3.7 of the WIPO Overview 2.0 makes it clear that the transfer of a domain name to a third party does amount to a new registration. (See also Aubert InternationalSAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986). Tucows Inc. acquired the Domain Name as part of an acquisition of the portfolio of domain names owned by Mailbank on June 15, 2006. The exact date when the Domain Name was transferred on the register has not been provided by either party. The Panel takes that the view that in assessing whether registration of the Domain Name was made in bad faith, the relevant date for consideration is on or about June 2006.
6.8 The Panel has considered but rejects the Complainant’s contention that there may be a new registration in March 2009 when the management of the Personal Name Service was (according to an email from the Respondent) “rolled into the operations of Hover”, a business which appears to operate within the same group of companies as the Respondent. There is no evidence before the Panel of any change in the registration data (nor any evidence to suggest that there was any change in the services provided in connection with the Domain Name) at that time.
6.9 The Complainant’s trade mark was registered on May 9, 2008. This post dates the date of registration of the Domain Name. The Consensus View stated in paragraph 3.1 of the WIPO Overview 2.0 states as follows:
“Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date, when a domain name is registered by the respondent before the complainant’s relied upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”
6.10 The Complainant has not provided any evidence that it has any unregistered rights to the MARDEN name. The fact that the business name of the Complainant was registered on April 16, 2008 is not sufficient evidence to establish unregistered rights if that was what the Complainant intended it to do by submitting the same in evidence.
6.11 There are cases that suggest that what actually matters here is (a) whether at the time of registration of the domain name the relevant term embodied in the domain name was being (or about to be) used in a trade mark sense by the complainant and (b) whether the domain name was registered with knowledge of that use and with the intention of taking advantage of the reputation that had or would attach to that term by reason of that use (see for example St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601 and the cases cited in paragraph 3.1 of the WIPO Overview 2.0). On this approach although the proposition to be found in paragraph 3.1 of the WIPO Overview 2.0 is “generally speaking” correct, this is not so much because “the registrant could not have contemplated the complainant’s then non-existent right” but because in the absence of such rights or trade mark use, it is likely to be very difficult to show that the registration was with the complainant’s trade mark use of that term in mind.
6.12 However, there is no need to consider that point further in this Decision. Even if it is a respondent’s intention to take advantage of a complainant’s use of a term in a trade mark sense that matters, the Complainant has got nowhere near showing that this has occurred in this case. There is no evidence of exactly how the Domain Name was being used in 2006 and there is no evidence of the Complainant using or intending to use the term “Marden” in a trade mark sense at that time. Indeed, there is not even evidence before the Panel that the Complainant even existed at that time.
6.13 The Complainant contends that the intention of the acquisition by Tucows Inc. of the portfolio of domain names from Mailbank was to generate revenue from the Personal Name Service and also pay-per-click revenue. It relies on the podcast interview of Eliot Noss, the CEO of Tucows Inc. to support this contention. In view of the fact that many of the domain names acquired, being surnames, are likely to also be trade marks, the Complainant argues that the Respondent’s acquisition and registration of domain names consisting of surnames constitute registration and use in bad faith.
6.14 The Panel is not convinced by this argument. Knowledge of a complainant’s trade marks (or perhaps use of a term in a trade mark sense) is usually a requirement for bad faith registration. But it is not by itself sufficient. There must also be intent to take unfair advantage of that trade mark use. Many names for fruits are also well-known trade marks. The registration of domain names that incorporate the words “Blackberry”, “Orange” or “Apple” is unlikely to be registration in bad faith if there is a genuine intention to use all of those domain names for fruit related purposes. This is so even though the registrant may also know that each of these terms are also well-known trade marks.
6.15 It may be that the Complainant’s argument here is somewhat more subtle; i.e. that the Domain Name forms part of a portfolio that the Respondent has registered and used for both surname and pay-per-click purposes without caring and turning a blind eye to whether the pay-per-click usage in practice took advantage of the trade mark rights of others. But even if that is factually correct, in order to succeed the Complainant would still bear the burden of showing that the Domain Name has been used to take advantage of the trade mark rights of the Complainant. The Complainant is not relieved of that burden simply because there are other cases involving domain names forming part of that same portfolio (for example Aubert InternationalSAS and Aubert France SA v. Tucows.com Co, WIPO Case No. D2008-1986) in which the complainant persuaded the panel that this had actually occurred. Given that in the present case there is no evidence that the Complainant even existed at the relevant time, the Complainant has failed to carry that burden.
6.16 The Panel finds that the Complainant has failed to establish that the registration of the Domain Name was in bad faith.
6.17 Notwithstanding the fact that the Panel has made a finding that the Complainant has failed to establish the first requirement of this element of the test (which means that the Complaint fails), it will nevertheless briefly comment on its finding in relation to bad faith use of the Domain Name. In the opinion of the Panel the Complainant has also failed to establish bad faith use
6.18 The pay-per-click links on the Website that were submitted in evidence by the Complainant in relation to use at the time of filing the Complaint showed that these links were to college courses. The Complainant accepts that on the face of it, they are unrelated to its activities but, then asserts that when you click on these links, the user is taken to websites which compete with the Complainant’s services. However, the Complainant does not provide any evidence to substantiate this at first sight somewhat surprising assertion. In the absence of such evidence, the Panel is not prepared to make a finding against the Respondent on the issue of bad faith use.
6.19 In order to make a finding of reverse domain name hijacking, the Respondent needs to have shown that the Complaint was made in bad faith. The Panel is not convinced that there is sufficient evidence here to show that at the time of the filing of the Complaint that the Complainant in fact knew or should have clearly known that it could not prove one of the essential elements of the UDRP. The Complainant has put forward arguments in support of its case. The fact that the Panel does not agree with all these arguments is not sufficient grounds for a finding of bad faith. There is also no evidence of any harassment or similar conduct by the Complainant on the face of such knowledge. This is not a case where the UDRP has been used in bad faith to deprive the domain name holder of a domain name. Accordingly, the Panel finds that there has been no reverse domain name hijacking on the part of the Complainant in this case.
For all the foregoing reasons, the Complaint is denied.
Matthew S. Harris
G. Gervaise Davis III
Dated: August 24, 2011
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