WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Emilio Pucci SRL v Mailbank.com, Inc.
Case No. D2000-1786
1. The Parties
The Complainant is Emilio Pucci SRL of Via de Pucci, 6, 50100 Italy.
The Respondent is Mailbank.com, Inc. of 1475 Terminal Way, Suite E, Reno, 89502, Nevada, USA.
2. The Domain Name and Registrar
The domain name at issue is <pucci.com>, which is registered at Melbourne IT, Ltd.
3. Procedural History
The original complaint was received by WIPO by email and in hard copy on December 21, 2000. WIPO has verified that the complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that <pucci.com> ("the Domain Name") was registered through Melbourne IT, Ltd. and that Mailbank.com, Inc. ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On January 4, 2001 WIPO notified the Respondent of the original complaint in the usual manner.
On January 8, 2001 the Complainant filed an Amended Complaint containing a supplemental filing ("the Complaint"). On January 9, 2001 WIPO issued an acknowledgement of receipt of the Complaint. The Response was received by WIPO by email and in hardcopy form on January 23, 2001.
On January 29, 2001 the Complainant requested permission to file a Response to the Respondentís Response. The Respondent objected to the request on January 29, 2001. The Complainant repeated its request on January 30, 2001. On February 2, 2001 WIPO received the Amended Complaint together with a Response to the Respondentís Response. On February 5, 2001 WIPO received the Respondentís Response to the Amended Complaint and Response to Respondentís Defence.
The Panel has reluctantly decided to admit the several supplemental filings of the parties into the evidence.
The Panel was properly constituted. The undersigned Panelists submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panelís Decision, is March 20, 2001.
4. Factual Background
The broad facts are set out below in the partiesí contentions. The undisputed facts are that the Complainant is a famous Italian fashion house commonly known as PUCCI and in 1996 the Respondent registered the Domain Name along with several thousand other domain names featuring surnames.
5. Partiesí Contentions
A. Complainant contends as follows:
The Complainant, Emilio Pucci SRL, an Italian-based company, owns the famous trade-mark Emilio Pucci and Pucci used and registered in numerous countries in connection with fashion and design. Pucci is a very special and unique brand, which first expanded with the work of its director and owner Emilio Pucci. Emilio Pucci started to design Pucci lines in 1947 to create ski wear. The colorful and graphic prints quickly became the signature of Pucci and inspired the worldwide psychedelic trend of the Ď60s.
According to its registrations, the Emilio Pucci trade-mark has been extensively used in many countries as early as 1970. Since then, it has gained tremendous recognition and a strong reputation throughout Europe and America. After the success of the house from the 1950s to the 1970s, there was another wave of "Puccimania" in the late 1980s. Celebrities such as Madonna or Paloma Picasso rediscovered Pucci and promoted its unique style.
More recently, the financial interest acquired in Pucciís creations by the well-known and largest French company in luxury products LVMH (Louis Vuitton Moët Hennessy, see <www.lvmh.com>) is a undeniable sign of the prestige associated with Pucciís trade-mark and makes it one of the Complainantís most valuable assets.
Among historical anecdotes that reveals the extent to which Pucci as a fashion trade-mark became famous, Complainant considers significant the fact (1) that Marilyn Monroe is said to have loved the design so much she asked to be buried in Pucci; (2) that Elizabeth Taylor and Jacqueline Kennedy were wearing Pucci and (3) that the Apollo 15 crew carried a Pucci-designed flag to the moon.
To the best of Complainantís knowledge and following a preliminary investigation, Mailbank, originally a corporation incorporated under the laws of British Columbia on September 11, 1996, changed its name to Free View Publishing, Inc. on
May 4, 1999.
In its most recent yearly declaration deposited on September 11, 1999, the company Free View Publishing, Inc. declared having its head office at 650, West Georgia Street, Suite 48, Vancouver, British Columbia, Canada. The documents available on Mailbankís web site indicate that the domain name related activities have then been transferred to a United States-based company, Mailbank.com, Inc.
An investigator, upon instructions given by the Complainant, found that the Respondent and its representatives originally registered approximately 15,000 domain names, of which 12,000 were among the most common family names found throughout North America. The domain name <pucci.com>, subject to the present complaint, has been part of Respondentís appropriation campaign which constitutes a patent case of cybersquatting.
The U.S. company Mailbank.com, Inc., having added existing resources of their own, would now control more than 15,000 domain names that are offered for sale or rent to individual purchasers. According to Jerry Sumpton, representative of the former Canadian corporation, the newly U.S.-based corporation could have more than fifty (50) employees and sales in the millions of dollars. These figures support without any doubt the Complainantís contention that Respondent registered the domain name <pucci.com> without any right or legitimate interest.
A brief review of the Respondentís web site and other corporate official documents related to the Respondentís activities show that its business of domain name trading is very well sought out, planned and professionally organised: instead of reselling a domain name for valuable consideration in excess of Respondentís out-of-pocket costs related to the domain name to one person that has a right or legitimate interest in it, the Respondent is leasing the domain name to as many persons as possible.
For example, in the case of the domain name <pucci.com>, Respondent attempts to attract several people who have a right or legitimate interest in it and offers them a "subdomain" of <pucci.com> for US$9.95 per year for a personal or business e-mail address (e.g. firstname.lastname@example.org) or US$19.95 per year for a matching web site address (e.g. www.emilio.pucci.com).
Rules, para. 4(a)
1. As previously established, the Domain Name <pucci.com> Is Identical or Confusingly Similar to a Trademark in Which the Complainant has Rights. (Rules, para. 4(a)(i))
2. The Respondent Has No Rights or Legitimate Interests in Respect of the Domain Name <pucci.com. (Rules, para. 4(a)(ii))
Obviously, the Respondentís activities are highly damageable when they consist of offering to third parties the use of registered trade-marks in consideration of yearly fees, without having any right or interest in the names themselves.
Complainant believes that the fact that prospective customers of the Respondent might have a legitimate interest in Pucci as a name is insufficient to confer to the Respondent a legitimate interest in the said name for subsequent use and speculation purposes.
Complainant submits that for an interest to be legitimate with respect to the domain name <pucci.com>, one has to establish that an interest for himself exists in that particular name. Otherwise, this would amount to accept that, provided someone has unlimited financial resources, he could claim a legitimate interest in all the possible patronymic names, even if he is not related to them.
This would also imply that, had the Respondent started its domain name appropriation campaign at an earlier date, it could have had registered family names as obviously related to trade-marks as Versace, Dior, Armani, Vuitton along with top-level domain (herein TLD) <.com> and still be considered to be making a legitimate use of these names by the mere fact that he doesnít use them as trade-marks.
It has been a well-established practice among fashion designers to use their names as a trade-mark for the products they sell. These names have acquired a secondary meaning in the minds of consumers around the world. They are entitled to the same protection as any other strongly distinctive trade-marks, eventhough they also happen to be patronymic in nature. In this case, Pucci is a famous trade-mark and a well-known family name. Certificates of registration and numerous articles which are filed with the present proceeding support this contention.
Complainant found no evidence that Respondent can claim a patronymic right in the name Pucci. In addition, Complainant has not licensed or otherwise permitted Respondent to use any of its trade-marks or to apply for any domain name incorporating any of those marks. In no event has the Respondent has acquired any interest or legitimate rights in the domain name itself. In fact, by leasing or renting the domain name <pucci.com>, the Respondent disclaims per se any right in the domain name.
The fact that the Respondent managed to build a monopoly on 12,000 family names as a result of the technical "first come first serve" attribution rule does not confer to it a right or legitimate interest in the domain name <pucci.com>. We remind the panel that the Pucci trade-mark has been widely used by the Complainant in various countries at least since 1950.
Consumers who search the Internet for Complainant by using Complainantís name or marks will be directed to Respondentís web site, thus increasing the likelihood of confusion. The fact that the domain name <pucci.com> isnít used by the Respondent in association with goods or services provided by the Complainant is not relevant to find that the Respondent has no right or legitimate interest in the domain name <pucci.com>. Respondent is intentionally using the domain name <pucci.com> to redirect users to the Respondentís customized page, where the Respondentís services are promoted. This scheme clearly indicates that the Respondent illegitimately seeks to benefit from the goodwill of the Complainant in diverting Internet traffic toward its main web site.
Moreover, by doing so with 12,000 of the most common family names in North America, the Respondent uses names in which it doesnít have a right or a legitimate interest to redirect prospective customers to its web site and promote its business. (According to Respondentís claim, these names represents 70% of the populationís last names.)
In addition, among its 15,000 registered names, the Respondent has registered <pucci.com> in the course of its business, in conjunction with domain names of a dubious nature such as <acallgirl.com>, <sexualcommerce.com>, <mybreast.com>, <itsucks.com>.
In conclusion, Respondentís use of the domain name <pucci.com> is such as to dilute and tarnish the trade-mark "Pucci" in which the Complainant owns the goodwill, without having any right or legitimate interest in the domain name <pucci.com>.
3. <pucci.com> Has Been Registered and Is Being Used In Bad Faith By the Respondent (Rules, para. 4(a)(iii))
a) Registration In Bad Faith
Given the large number of names involved in the appropriation campaign of the Respondent, there was great likelihood, and therefore a reasonable foreseeability, that conflicts between these names and identical or confusingly similar trade-marks arise.
ICANN policy provides that by applying to register a domain name, the registrant represents and warrants to the registrar that, to its knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party. (See Rules, para. 2(c))
In the present case, the Respondent knew or should have known of the Complainantís trade-mark at the time Respondent registered the domain name <pucci.com>, particularly given its widespread use and its registration in Canada and United States.
As it has been previously stated, the Respondent has registered and used the disputed domain name on and up to June 23rd, 2000, just a few months after the public announcement of the merger of the Complainant with LVMH. The registration of the domain name <pucci.com> being timely concomitant to these transactions, the Complainant maintains that the disputed domain name has been appropriated illegally and abusively by the Respondent. One can reasonably infer from these facts that the said domain name has been registered and used in bad faith.
b) Use In Bad Faith
The Respondent is not only preventing the Complainant to use its trade-mark, but also actively holding the domain name <pucci.com> by offering it for use to third parties. In facilitating the use or lease of the domain name <pucci.com> by third parties (its customers) the Respondent endangers the trademarkís distinctiveness and more generally the intellectual property of the Complainant. The Respondent is making an illegitimate commercial use of the domain name <pucci.com> and is using the <pucci.com> domain name in a manner that is diluting and infringing the Complainantís trade-mark rights. In precluding the Complainant from accessing to its proprietary rights, the Respondent is using the domain name <pucci.com> in bad faith.
Complainant support the finding in Apple Computer, Inc. v. DomainHouse.com, Inc., (WIPO Case No. D2000-0341) where panelist says that [t]here nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell [or lease] domain names does not imply a right in such registrants to sell [or lease] domain names that are identical or confusingly similar to trade-marks [Ö] of others without their consent.
[O]ffer to sell [or lease] to the public at large domain names that are identical or confusingly similar to marks of others may constitute bad faith within the meaning of paragraph 4(a)(iii) of the Policy. This is based on the nonexhaustive character of the express list of bad faith factors in paragraph 4(b) of the Policy and the lack of a justification for awarding financial gain to persons for the mere act of registration of marks of others.
In this case, by using <pucci.com> as a redirection URL for Respondentís service, Respondent intentionally attempts to attract, for financial gain, Internet users to its web site, showing that its use of the domain name <pucci.com> is not made in connection with a bona fide offering of goods or services.
Complainant would also like to remind the Panel that passive holding of a domain name can amount to bad faith. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.) During the course of its investigation, Complainant found no evidence that the domain name <pucci.com>was used by even one subscriber to Respondentís services.
We invite the Panel to distinguish the current case from a recent highly contested decision involving a representative of the Respondent and rendered under the U.S. Anti-dilution Act of 1995 (which has now been amended by the Anticybersquatting Consumer Protection Act). The aforsaid case raised the legitimacy of registering generic or family domain names. Under the applicable law at that time, the Plaintiff had to demonstrate that the claimed trade-mark was famous. It is not a requirement under the newly adopted law anymore. The test applied is now similar to the ICANN test. The Avery v. Sumpton decision should not constitute a precedent when it comes to analyze the present case. (See Avery v. Sumpton, 51 USPQ 2d 1801)
It is not acceptable that for a technical reason, a privately held company is administering thousands of family names or domain names and unilaterally crowning itself as a public service entity or body leasing or renting domain names of patronymic nature.
Respondent pretends to carry on its business in the interest of the public by squatting on peopleís name before they realize that they might have an interest in the name as a domain. But by doing so, Respondent misappropriates to itself names and deprives persons who have a right or a legitimate interest in them of their ability to register these names as domain names, according to long-standing and valid trade-mark rights.
It is expected that in the future, such harmful conduct will not be allowed. In that respect, on November 17th 2000, ICANN, after reviewing the family name concerns, has adopted new generic TLD names such as .biz, .info and .name, which will identify personal web sites and will most likely deter the abusive exploitation of domain name activities in which the Respondent is the uncontested leader.
Particularly, TLD dedicated to personal use will be more accurate as it would permit any user or individual to freely use or register his or her patronymic. ICANN intervention is deemed to cure abusive conduct such as the Repondentís activities. The current activities conducted by the Respondent is not acceptable and pertain to an illegal cybersquatting activity.
In addition, the Complainant would like to introduce an additional evidence in the nature of an article of Steve Silberman published in the electronic newspapers WIRED (available at the following address: http://www.wired.com/news/technology/0,1282,96,00.html) on November 18, 1996, entitled "ITS MAILBANKíS NET. WE JUST SURF IT". This document supports the Complainantís contention that the business of the Respondent is of a questionable legal nature. It is noted that, and we quote:
"By offering low-rent use of domain names for email and Web page addresses, and space on their own servers for mail storage, Mailbank.com has found a niche (Best.com is the Avis of the domain-name biz) - and not everyoneís happy about it.
One of FreeViewís targeted markets is the email user who wishes to remain anonymous, or keep the bossí eyes out of their inbox. FreeViewís sites provide them with untraceable email addresses. [...]
The problem is that professional Net-spammers can hide behind a MailBank address. On the Usenet group news.admin.net-abuse, FreeView founder Jerry Sumpton has been roasted way past medium-rare for claiming that "there is no way with current technology to stop the spasms from FreeView clients like SoftCell Marketing."
In conclusion, the Complainant is respectfully requesting the WIPO Arbitration Centre to permit the introduction of the aforesaid additional evidence along with the newly introduced paragraph 49, here above reproduced.
And, referring to the Respondentís Defence, the Complainant adds :
The use of the terms "reverse domain name hijacking" (p. 2 of the Defence) is a sophism which cannot excuse, nor justify the Respondentís abusive conduct. One cannot peruse the list of domain names registered by the Respondent, which includes the trade-mark of the Complainant, without observing bad faith and a serious case of patronymic and trade-mark abuse practiced by the Respondent. In the case at hand these abuses pertain to a serious case of infringement or alternatively to trade-mark dilution, both of which make it impossible to claim a legitimate business concern or interest.
Although the domain name <pucci.com>appears to have been registered in 1996, it is only two years later that the Respondent was aware of this appropriation. At the time of the transaction with Louis Vuitton Malletier Hennessee, in 2000, the Complainant had to rely on the Melbourne IT WHOIS form which, prima facie, indicated the date of registration as of June 23, 2000. It is also noteworthy that ICANN UDR mechanism has been effective as of January 2000 which explains why the Complainant did not call upon the Respondent prior to these proceedings. The Respondent pre-empted the Complainant in registering the name <pucci.com>, a domain name in which it has no right, nor any immediate legitimate interest. In any event, while it may be possible for a trade-mark owner to police its trade-mark rights in the analogical universe, this endeavour is far more difficult in a virtual environment.
In that regard, it is a well established principle, that the rule "first come, first serve" clearly does not confer any right in a domain name. To conclude the contrary would undermine all intellectual property rights principles. Even though the Respondent pre-empted the registration of the domain name <pucci.com, registration rules set forth by the DNS registrars do not pre-empt trade-mark laws.
The Complainant disagrees with the Respondentís assessment of the situation. The Respondent states : "Mailbank is simply a business that hosts email and small websites for people who are willing (unlike Complainant) to share the <pucci.com>domain name with others who have a similar surname" (p. 5 of the Defence). While appropriating more than 15 000 surnames as potential subdivisible domain names, this quasi-socialist presentation of the Respondentís business seems hypocritical. The Respondent does no more than simply abuse from a flaw of the technical DNS system (one entry, one domain name) and legislative gaps in order to prevent others from using a domain name identical to their name, trade-mark or business name as such as PUCCI and to conduct a business of their own.
The Respondent admits that "Of course, Pucci is a well-known trademark" (p. 7 of the Defence) but failed to recognise the logical conclusion of such admission. Indeed, PUCCI being a well-known trade-mark, it follows that the Complainant has the right to preclude the Respondent from renting or selling domain names with .com or other dedicated endings (.com and .net were initially used for commercial purposes) to the Respondentís clients without any rights or legitimate interests in the name PUCCI. The Complainant is of the opinion that such abusive conduct gravely impairs the application of well recognized and long standing established Intellectual Property treaties such as the Paris Convention (Article 6bis), Protection of well-known trade-marks, and the TRIPS Agreement (Article 16 Rights Conferred).
The Complainant is of the opinion that the case Avery v. Sumpton is not US law anymore, as the Lanham Act has been amended by the Anticybersquatting Consumer Protection Act, nor does it constitute the pertinent reference in solving this conflict. Referring to the concept of use, the Respondent states that "[t]he decision held that Mailbankís vanity email business was a legitimate use of domain names, but not the use of the mark in a trademark sense". The Respondent justly pointed out exactly as to the reason why ICANN adopted the UDR mechanism : trade-mark laws did not easily apply to new forms of use not covered by the definition of use of national laws, and therefore resulted in an inadequate protection to trade-marks owners.
The issue raised in Avery v. Sumpton is not different in its essence than the issue in the famous case British Telecommunications PLC v. One in a Million Ltd., (1999) 1 FSR 1. In this case, contrary to the conclusion reached in Avery v. Sumpton, the British Court of Appeal denied the appeal and condemned the defendants who had registered domain names comprising famous trade-marks. Plaintiffs obtained summary judgement restraining the defendants from passing off and from infringing the well-known registered trade-marks, even though the domain names have not been activated, nor used.
Moreover, part of the Respondentís Defense is premised upon the false and misleading contention that the Respondent had no idea that domain names registration could constitute infringements, and we refer the panel to the following excerpt : ęComplainant alleges without foundation that Respondent should have been aware of Complainantís trademark in 1996 when it registered the domain and known that this registration was improper. This is ridiculous, in that in 1996 no one in the world had any idea that domain names would later be sold or leased to or between trademark owners. It would never have occurred to anyone in 1996 that registration of a domain name might, years later be considered trademark infringement" (p. 6-7 of the Defence). We believe that even if the Respondent was not aware at the time of the registration of the domain name of any judiciary proceedings involving domain names, the Respondent could not ignore the law, especially trade-mark law principles concerning well-known trade-mark. Finally, the allegations are in no event supported by the law with respect to trade-mark infringement. Network Solutions, Inc, the main US registrar at the time of the first registration of the name PUCCI by the Respondent displayed a legal notice which specifically addressed the risk of trade-mark infringement and Respondent had a duty to inform itself as to the downsides of its omnibus initiative. The case could be different if only one or few names were thus appropriated, but Respondent chose to arbitrarily register more than 15,000 names, which inevitably expose the Respondent to trade-mark ownersí rights (for example, Bell.org and Martens.com are well-known trade-marks registered by the Respondent).
To follow Respondentís argument will inevitably prevent most if not all famous trade-mark owners which happen to be surname (GUCCI, VUITTON, KLEIN, RUBINSTEIN, HONDA, DELL, FORD, etc.), from legitimately expecting to expand the exploitation exploit their business names through the new means of Internet because of the dilution and banalisation that inevitably arises from the Respondentís massive appropriation of surnames.
Finally, one of the most commented and quoted US domain name case, Intermatic incorporated, Inc v. Dennis Toeppen (1996) 40 USPQ2d 1412 (Appealed), was rendered on October 3, 1996. It is, therefore, far from "ridiculous" to conclude that the Respondent should have been aware of the Complainantís well-known trademark at the date of registration in 1996.
B. Respondent contends as follows:
This case is another example of reverse domain name hijacking by a trademark owner attempting to use the ICANN Dispute Resolution Policy and Rules to take a valued domain name away from an active business that is, and has been, using the domain name for years in a manner fully in accordance with the law and consistent with the intent of the ICANN Rules. Complainant does not and cannot prove that the disputed domain was registered or used abusively or in bad faith by Respondent or that Respondent has no legitimate claim to the use of it, both proofs of which are required by the ICANN Rules. Respondent requests that the Panel make a finding of bad faith reverse domain name hijacking for the reasons expressed below.
Evidence of Complaintís bad faith attack on Respondent can be seen clearly from the fact that Complaintís counsel made no effort to contact Respondent Mailbank when it believed that Respondent had newly registered the <pucci.com>domain name on June 23, 2000. No letter or contact was received from Complainant. Instead, and contrary to the facts, Complainant falsely (and completely without any foundation for doing so) filed this Complaint which alleges (in Paragraph 39) that <pucci.com>was registered by Mailbank in June 2000 because of some news stories about a merger or acquisition involving Pucci. This statement is erroneous on the facts and pure supposition by a law firm apparently more interested in creating litigation than in investigating the facts before filing unfounded arbitration proceedings against a small company. It has resulted in Respondent having to incur the expense of defending this unfounded case.
Had Complainant taken the time to contact Respondent upon discovery of this apparent new registration, it would have learned that, in fact, Respondent Mailbankís predecessor company first registered the <pucci.com>domain in early 1996, and that all that happened in June 2000 was a change of the Registrar, because the Melbourne IT organization has lower annual registration fees for domain names than Network Solutions, Inc. . The domain name in question has been in continuous use by Mailbank and its customers since June 1996, and is still in use solely for the purpose of providing email services and redirection services to Mailbank customers with the Pucci surname. Although there have been other users of it over time, at this time there are about five active users Ė of whom appear to be surnamed Pucci. Annexed to the Response is a printout of the Pucci user list.
Interestingly enough, Complainant Pucci has taken over four years to object to Respondentís open and continuous business use of the domain for its vanity email services. Further, other users of the Pucci surname as a domain exist at pucci.org where a similar email service does business and offers services similar to Respondent. As far as Respondent has been able to ascertain, this other email business has only been operating for the past year or so, but significantly is in the identical business to that of Respondent. Complainant has apparently not complained of this use, which would tend to indicate that the real purpose of this Complaint is to reverse domain name hijack this name from Respondent so that Complainant can use it. The case clearly was not brought to stop abusive registrations of domain names, the only legal basis for an ICANN Complaint.
Further detailed information about the business background and history of the operations of Mailbank, the Respondent, is set out in the Declaration of G. Gervaise Davis III, attached to the Response. In short, this Declaration indicates that Mailbank was founded by a group of business and professional people in Vancouver, B.C., Canada in 1996 with significant working capital, operated for several years and then sold in late 1998 or early 1999 to a group of venture capital investors in Dallas, Texas, who have operated it as a separate company since then. It is neither a cybersquatter nor a company bent on accumulating trademark domains for illegal sale to trademark owners, contrary to the false and unfounded statements in the Complaint. Complainant offers no evidence of such activity, as required by the ICANN rules.
Mailbank is simply a business that hosts email and small websites for people who are willing (unlike Complainant) to share the <pucci.com>domain name with others who have a similar surname. The whole concept of Mailbank is that of "shared domains" allowing more than one person to use the same family or affiliation domain name, instead of permitting one self-interested company to lock the name up for its own use, even though there are hundreds of other businesses and people with the same surname and business name who would like to use it jointly. Operating a business under this concept is not an illegal act, and many court proceedings have reached this same conclusion.
The Complaint is rife with numerous and continual misstatements of fact and law. Complainant alleges, for example, in the form of hearsay that Mailbank has more than fifty employees, which statement is just as false as the rest of the unfounded misstatements in the Complaint. It has about 10. On the basis of this false statement, Complainant alleges that this "fact" alone shows a course of illegal conduct by Respondent, and argues some unique legal position to the effect that unless someone has the Pucci surname, they cannot have any legitimate interest in the domain. All of this misinformation could have been corrected had Complainant had the common courtesy to contact the management of Mailbank at the address listed in the domain name registration database, and ask what the true facts were, rather than making false suppositions and filing this unnecessary proceeding.
As indicated in detail in the Legal Argument section below, the U.S. Ninth Circuit Court of Appeals in Avery Dennison v. Sumpton, and several ICANN arbitration panels have all held that Mailbank is a legitimate business and is not an abusive registrar of domains for the purpose of sale to trademark owners. There is simply no evidence to the contrary, in spite of Complainantís suppositions and improperly assumed "facts."
Finally, there is no evidence that Respondent acquired the domain for the purpose of sale of it to Complainant, or to a competitor, or to deny Complainant the right to use it. In fact, to the knowledge of the officers and attorneys for Mailbank, there has never been any contact between the representatives of Complainant and Respondent at any time, and no offer by Mailbank to sell the domain to anyone. Further, because the sale of its domain names would preclude it from operating its email business, Respondent has no interest in selling any surname, and it rarely registers new surname domains since they are hardly ever available. It does not sell domains to trademark owners, and did not register any domain for that purpose.
Complainant alleges without foundation that Respondent should have been aware of Complainantís trademark in 1996 when it registered the domain and known that this registration was improper. This is ridiculous, in that in 1996 no one in the world had any idea that domain names would later be sold or leased to or between trademark owners. It would never have occurred to anyone in 1996 that registration of a domain name might, years later be considered trademark infringement. Furthermore, even current case law does not hold that mere registration and use of domain name is automatically a trademark use Ė to the contrary, it is not a trademark use. See eCash Technologies, Inc. v. Guagliardo d/b/a/ ecash.com, C.D. Cal., Case No. CV 00-03292 ABC (RNBx), 12/18/00. Surnames are descriptive, generic words that identify families and related people, and an email address using such a surname domain is merely that. These facts make clear that Complainantís misstatement of the true facts goes to the heart of its unsupported case, since the domain was registered in 1996, and not 2000.
The generic nature of the Pucci surname is all the more clear from a simple look-up on the Internet of the other uses of it on the Internet. Of course, Pucci is a well-known trademark, but that does not give it the exclusive right to preclude others from using the same surname as a personal name, as a business name, or otherwise as a deceptive use. For example, a listing from the Google search engine and a listing from the Northern Light search engine show literally tens of thousands of references to the name Pucci for businesses, individuals, and other uses on web sites in the U.S. and other countries. It is also ranked the 17,599th most common surname in the United States Census Database.
Finally, it should be noted that there are other U.S. and foreign trademarks on businesses and products using the name Pucci, many of which appear to have no connection with Complainant and its business or goods. A printout of current and older trademark registrations is annexed to the Response.
Finally, the recent amendment from Complainant adding paragraph 49 to its Complaint and a third-party news story from 1996 proves nothing as to the actual operations of Mailbank. First, this article speaks only of 1996, while we are dealing with the facts in 2001. Second, Jerry Sumpton, named in the article, has not even been connected with the company for over 2 years. Third, it has been under new ownership since 1998 who immediately terminated spammers. Fourth, it is at best third hand hearsay.
The Response then deals with the legal argument, much of which can be discerned from the additions to the Amended Complaint. The Response concludes as follows:
Based on the foregoing facts and argument, Respondent respectfully requests that the Complaint be dismissed and denied, on the basis that Complainant has not proven either registration or use in bad faith, both of which are required by Rule 4(a)(iii) and Complainant has not established that Registrant has no legitimate interest in or right to use the domain as required by Rule 4(a)(ii). This burden is entirely on Complainant.
Respondent requests, therefore, that this panel find that the domain name should remain registered to Respondent without interference by Complainant and that Complainant is a reverse domain name hijacker.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, 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; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely: -
"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding."
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."
Identical or confusing similarity
It is not in dispute that the Domain Name (absent the <.com> suffix) is identical to the Complainantís trade mark PUCCI. Accordingly the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
Rights or legitimate interest of the Respondent
It is not in dispute that the Respondent registered the Domain Name along with a large number of other domain names comprising surnames with a view primarily to renting them out to members of the public for email use. It is clear too that at the time the Respondent envisaged that the likely users for each domain name would be people having the relevant surname.
Certainly, the Respondent had no rights in respect of the Domain Name at the time of registration. The Respondent had no trade mark rights (registered or unregistered), was not known by the name, conducted no business under the name and had no licence to use the name.
Did the Respondent nonetheless have a "legitimate interest" in respect of the Domain Name at that time? As a matter of language, arguably it did. While it did not propose to conduct business under the name, it expected to use the Domain Name to derive legitimate income from persons with the surname Pucci.
After much debate the Panel was unable to agree on the approach to be taken on this issue. However, since the Panel was unanimous in finding an absence of bad faith, there was no need for the Panel to take this debate further.
A non-exhaustive list of what may constitute bad faith is set out in paragraph 4(b) of the Policy. All the examples given involve an intent by the Respondent when registering the Domain Name to damage the Complainant or in some way ride on the back of the goodwill of the Complainant.
While the list of examples of bad faith in paragraph 4(b) is expressed to be non-exhaustive, the Panel regards it as crucial to the success of a Complaint under the Policy that at the time of registration the Respondent at the very least had the Complainant in mind.
Here there is no evidence that the Respondent had the Complainant in mind when registering the Domain Name. "Pucci" was just one of many thousands of surnames registered as domain names by the Respondent. The evidence filed by the Respondent appears to support the proposition that the registration of the Domain Name was intended to attract business from people with the surname "Pucci".
What the Respondent has done by its wholesale registration of surnames in the <.com> domain may be regarded by many as a worrying development and for a number of different reasons. In some jurisdictions and in relation to certain of the names the Respondent may even be infringing the rights of trade mark owners. None of that is of any relevance to a complaint under the Policy unless the Respondent has acted in bad faith.
The Panel finds that the Complainant has failed to prove that the Respondent registered the Domain Name in bad faith and is using it in bad faith.
Reverse Domain Name Hijacking
The Panel is not persuaded that this Complaint was launched in bad faith.
The Complaint is dismissed
Mr Tony Willoughby
Mr Luca Barbero
Mr David W. Maher
Dated: March 19, 2001