World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marker Völkl (International) GmbH v. Tucows.com Co.

Case No. D2012-1461

1. The Parties

The Complainant is Marker Völkl (International) GmbH of Baar, Switzerland, represented by SSM Schwabe Sandmair Marx, Germany.

The Respondent is Tucows.com Co. of Toronto, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <marker.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2012. On July 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2012. The Response was filed with the Center on August 14, 2012.

On September 12, 2012, the Complainant submitted a Rejoinder to the Response and on September 14, 2012, the Respondent submitted a Surrejoinder. In the exercise of its discretion, pursuant to paragraph 12 of the Rules, the Panel admits both of these additional statements. This is because the Rejoinder is responsive to issues first raised in the Response, which it is apparent that the Complainant had not anticipated when commencing this administrative proceeding.

The Center appointed David Perkins as the sole panelist in this matter on September 3, 2012. The Panel finds that it was properly constituted. The Panelist 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. The Panel has found it necessary to extend the due date for decision in this case to the date indicated under paragraph 7 below in accordance with the Rules, paragraph 10.

4. Factual Background

4.1 The Complainant

4.1.1 The Complainant, Marker Völkl (International) GmbH was founded by Hannes Marker in 1952. The company manufacturers ski bindings and is one of the market leaders worldwide in that market. Exhibited to the Complaint is the Wikipedia entry for “Marker (ski bindings)” which provides background to the binding concept pioneered by Hannes Marker and the subsequent development of the Company and its bindings including its expansion into winter sports apparel. Further such particulars are provided in extracts from the website “www.markerusa.com” which are also exhibited. Marker’s ski bindings were ranked first for the 2009 / 2010 and 2010 / 2011 seasons by the European Industry Forum, which also provides market share statistics in countries including Austria, Germany, France, Switzerland, Italy, Norway, Finland, Sweden, Canada, the USA, Japan and others. According to that Forum, in 2010 / 2011 Marker had 17% of the worldwide market for ski bindings. The Complaint also exhibits a selection (comprising 48 pages) of media coverage for the period 2010-2012.

4.1.2 Illustrations of Marker ski clothing, ski jackets and related accessories are also annexed to the Complaint.

The MARKER trademarks

4.1.3 The Complainant is the owner of the following registered trademarks.

Country

Reg. No.

Mark

Class(es)

Dates Filed and Registered

Canada

172,507

MARKER

Ski bindings

Filed: September 30, 1968

Registered: November 6, 1970

Canada

372,787

MARKER + device

Clothing

Filed: June 14, 1989

Registered: August 31, 1990

Canada

434,711

MARKER

Luggage and clothing

Filed: December 24, 1992

Registered: October 21, 1994

International Registration*

IR350,312

MARKER

Class 28

Registered: October 17, 1968

International Registration**

IR442,662

MARKER

Classes 18 and 25

Registered: February 1, 1979

Germany

850,820

MARKER

Class 28

Filed: July 9, 1968

Registered: October 17, 1968

Germany

924,615

MARKER

Class 25

Filed: May 20, 1970

Registered: November 7, 1974

Germany

981,520

MARKER

Classes 18 and 25

Filed: May 29, 1978

Registered: February 1, 1979

* The countries covered by IR350,312 are Austria, Bosnia Herzegovina, Switzerland, Czech Republic, Germany, Spain, France, Hungry, Italy, Liechtenstein, Morocco, Montenegro, Macedonia, Romania, Serbia, Slovakia and San Marino.

** The countries covered by IR442,662 are Austria, Bosnia Herzegovina, Switzerland, Czech Republic, Spain, France, Italy, Montenegro, Serbia and Slovakia.

The MARKER domain name

4.1.4 The German subsidiary of the Complainant, Marker Deutschland GmbH, is the owner of the domain name <marker.de> and its US subsidiary is the owner of the domain name <markerusa.com>. The website “www.markerltd.com” is owned by the US distributor of the Complainant’s MARKER branded ski and outdoor apparel.

4.2 The Respondent

4.2.1 The Respondent is the registrant of the disputed domain name which was created on May 29, 1997.

4.2.2 The Respondent operates a personal names service through which it offers email services through a substantial portfolio of domain names that correspond to surnames. Through the disputed domain name, the Respondent sells email services to persons with the last name of “Marker”. The Respondent cites as a comparable example the email service it sells through the domain name <smith.net>. The Respondent explains that this service, termed the “vanity email” business, was founded by Jerry Sumpton and operated as Mailbank, Inc trading as NetIdentity until that business was acquired by the Respondent in 2006. In 2009 the Respondent transferred the business of Net Identity to a different business name known as Hover. Through Hover the Respondent offers personalised email and domain registration services to the public worldwide through its collection and ownership of tens of thousands of personal surname domain names.

4.2.3 In a Statement of Claim in proceedings brought by the Respondent against the Complainant in the Ontario Superior Court of Justice the Respondent’s method of operation is described as follows in paragraph 12 of that Pleading:

“The Plaintiff acquires new customers for its surname service through its wholesale website at www.opensts.com/personlanames/ and directly to end-users through its website at www.hover.com and by promoting its surname services on the websites associated with each of its thousands of surname domain names. For example, the surname ‘Brown’ is associated with the subsite www.brown.org. A user accessing the www.brown.org website page, will view the following explanatory text at the top of the website page. ‘This domain is available for a personalized email address. This domain is part of an exclusive collection of ‘shared’ personal names that allows multiple users to have simple, memorable email addresses, such as you@brown.org, all sharing the same domain name. Is your name available?’ This explanatory text hyper-links a user to www.hover.com which is Hover’s registration webpage. At the bottom of the website page is the following explanatory test, ‘This domain name is part if the Open SRS Personal Names Service and is one of the Tucows owned portfolio of personal domain names. Learn more about the Personal Names Service. If you have any questions about this domain name or website, please email pninquiry@tucows.com.’ This explanatory text hyper-links a user to htttp://brown.org/personal namesservice.html which contains more detailed information about the Plaintiff’s Personal Names Service.”

4.2.4 In that Statement of Claim the Respondent states that it currently has over 54,000 customers using its 43,003 surname domain names for the shared use of end-users. The Respondent says that it has had customers using the disputed domain name since at least February 2008 and has provided those customers with sub-domain names so as to allow them to have personalised names.

4.2.5 The Statement of Claim explains that, as a supplemental form of revenue, the Respondent places advertising on what it terms “generic domain name websites”. That business is described in paragraphs 18 and 19 of the Statement of Claim:

“18. The ‘www’ landing pages, such as <marker.com>, contain, or in the case of <marker.com> did contain, a search engine that allows users to input ‘keywords’ which in turn generates a list of sponsored ads from advertisers associated with the ‘keywords’. In addition, many of the Plaintiff’s operated websites contain hyper-links that point to sponsored ads from advertisers. The advertising on the Plaintiff’s operated websites are automatically generated by an algorithm. The Plaintiff states and the fact is that this form of advertisement is supplemental to Hover’s core business, namely, of providing personalized email and domain registration services.

19. This Plaintiff states that this advertising model is similar to that of Google, Yahoo and other businesses on the Internet. The Plaintiff states that this is an accepted Internet business practice and in no way infringes on the rights of trademark holders.”

4.2.6 The Respondent goes on to say in paragraph 46 of that Statement of Claim that, upon receiving notice of the Complaint in this administrative proceeding, it took steps to suspend such advertising on websites to which the disputed domain name resolved:

“Moreover, once the Plaintiff received notice of the Defendant’s complaint that the use of sponsored advertising on the ‘www’ landing page of marker.com may infringe on its rights, which is not admitted, but expressly denied, the Plaintiff immediately suspended the automated advertising algorithm for <marker.com> to block the placement of any possible infringing advertisements. Further, out of an abundance of caution, the Plaintiff has removed the alleged ‘offending’ advertising off of the <marker.com> website. Accordingly, the Plaintiff states and the fact is that it has at all times acted in good faith.”

4.2.7 The nature of that advertising and the proceedings initiated by the Respondent in the Ontario Court will be explained further below.

4.3 Correspondence between the Parties

4.3.1 The Complaint explains that when the Complainant became aware of the disputed domain name, it contacted BuyDomains.com with a view to purchasing the name. BuyDomains.com was at that time seeking USD 200,000.00 to USD 250,000.00 as the purchase price.

4.3.2 The Complaint exhibits a chain of emails between Mr. Kevin Nguyen of BuyDomains.com and Mr. Geoff Curtis of the Complainant’s US subsidiary in February and March 2012. BuyDomains.com initiated the contact in February 2012 and Mr. Curtis offered USD 4,000.00. Mr. Nguyen rejected that offer but counter-offered USD 40,000.00 as a possible price that the registrant might accept.

5. Parties’ Contentions

5.A. Complainant

5.A.1 The Complainant’s case is that the disputed domain name is identical to the registered wordmark MARKER and is confusingly similar to the MARKER and device registration since the mark MARKER is the dominant element of that figurative registration.

5.A.2 The Complainant says that the Respondent clearly acquired the disputed domain name for the purpose of selling it to the trademark owner or to “… undertakings which expect commercial benefits from using the disputed domain name.” The Complaint exhibits extracts from a website to which the disputed domain name resolves. That website provides links to websites of retail outlets offering ski equipment. The Complainant’s case is that the domain name <marker.com> will attract consumers looking for such goods. The Complainant says that the average consumer will be misled into believing that the Respondent is authorised to advertise and place these links to ski equipment distributors on its website. That, the Complainant says, constitutes both trademark infringement and unfair competition.

5.A.3 The Complainant also points to the following which is posted on the website:

“The domain name marker.com is for sale. To purchase, call BuyDomains.com at 877-636-4061 [Toll Free] or +1 339-222-6166. Click here for more details.”

It was for that reason the Complainant says that the original contact was initiated with BuyDomains.com (see, paragraph 4.3.1 above). The Complaint also exhibits an extract from the Respondent’s Registrar WhoIs database which includes the following statement:

“This domain name is part of the OpenSRS Personal Names Service and is one of the Tucows owned portfolio of shared domain names.”

From these statements the Complainant concludes that the Respondent has no commercial interest in the disputed domain name except its purchase.

5.A.4 To demonstrate the effect on average consumers and Internet users the Complainant exhibits a Google printout from entering the disputed domain name. This first lists the Complainant’s own website at “www.marker.de”, but second is the website to which the disputed domain name resolves. The websites “www.markerltd.com” and “www.markerusa.com” - as to which see paragraph 4.1.4 above - are listed third and fifth respectively. From this the Complainant concludes that the average consumer will believe that the “.com” address of the disputed domain name is its main domain address for international consumers. This, the Complainant says, is an infringement of its MARKER trademark from which the Respondent is making “unjust benefit”.

5.A.5 Based on the foregoing, the Complainant asserts that the Respondent has no rights to or legitimate interests in the disputed domain name which it has registered and is using in bad faith.

5.B. Respondent

5.B.1 The Respondent exhibits the Statement of Claim in proceedings brought on August 10, 2012 against the Complainant in the Ontario Superior Court of Justice. In that action the Respondent seeks declaratory relief as follows:

“(a) that the Respondent is the sole and exclusive owner of the disputed domain name;

(b) that the Complainant has no right, title or interest in that domain name;

(c) that the Respondent has rights or legitimate interests in respect to the disputed domain name;

(d) that the disputed domain name is not identical or confusingly similar to the Complainant’s registered trademarks;

(e) that the disputed domain name has not been registered and is not being used in bad faith by the Respondent; and

(f) that the Complainant is not entitled to the transfer of that domain name which it seeks in this administrative proceeding under the Policy.”

5.B.2 In the light of that Court proceeding, the Respondent requests the Panel to terminate or suspend this administrative proceeding pursuant to paragraph 18(a) of the Rules.

5.B.3 The Respondent’s use of the disputed domain name is summarised in Section 4.2 above. The Respondent’s case is that it is a legitimate, non-infringing use to register and use a domain name identical to an individual’s surname. Here, the disputed domain name, Marker, is a common surname and is also the surname of Hannes Marker, the founder of the Complainant company.

5.B.4 The Response cites the US decision of the US Court of Appeals for the Ninth Circuit in Avery Dennison Corp. v. Sumpton, 189 F. 3d. 868 (9th Cir. 1999) and a number of decisions under the Policy as authority for the proposition that registering a common surname in domain name combinations and licensing email addresses using that surname (i.e. the provision of vanity email services) is a legitimate use of such domain name notwithstanding that such name is identical to the registered trademark of a third party.

5.B.5 The Respondent refers to paragraph 4(k) of the Policy which provides that, notwithstanding the mandatory administrative proceeding requirements of the Policy, a respondent is not precluded from submitting the dispute to a court of competent jurisdiction. The Respondent is located in Ontario, Canada and, consequently, the Ontario Superior Court of Justice is a court of competent jurisdiction. The Response cites both the Avery Dennison case (supra) and three decisions under the Policy. The Panel notes, en passant, that the three decisions under the Policy do not relate to the issue of jurisdiction, but - like those referred to in the preceding paragraph - to the issue of whether registration and use of third party trademarks for a vanity email services is contrary to paragraphs 4(a)(ii) and/or (iii) of the Policy.

5.B.6 As to exercise of the Panel’s discretion under paragraph 18(a) of the Rules, the Respondent cites 5 decisions where the Panel suspended a complaint under the Policy in the light of legal proceedings in respect of the disputed domain name.

5.C. Complainant’s Rejoinder

5.C.1 In response to the authorities cited by the Respondent (see, paragraph 5.B.6 above), the Complainant cites the decision in Navista S.A. v. Virtual Point, Inc dba CrossPath, It Manager, WIPO Case No. D2012-1157 as an example of where, despite the existence of pending court proceedings in the US District Court for the Central District of California relating to the disputed domain name <navista.com>, the panel declined to suspend the administrative proceeding under the Policy and rendered a decision in that proceeding.

5.C.2 Citing the decision in Holley Performance Products, Inc v. Tucows.com Co, NAF Claim No. 1333239 and in The Brickman Group Ltd. LLC v. Tucows.com Co., NAF Claim No. 1425812, the Complainant asserts that the Respondent has adopted a strategy of frustrating complaints brought against it under the Policy by commencing proceedings in the Ontario Superior Court. The decision in Holley (supra) is one of those asserted by the Respondent referred to in paragraph 5.B.6 above.

5.C.3 In response to the Respondent’s case that its registration and use of the disputed domain name does not fall within the bad faith provision of paragraph 4(a)(iii) of the Policy, the Complainant cites decisions under the Policy where the domain names registered by the Respondent and used as vanity email domains were all famous trademarks. Those decisions relate to the trademarks RICARD, DUNLOP and ROCHE.

5.C.4 The Complainant reiterates that, because the Respondent is willing to sell the disputed domain name (as to which, see paragraph 5.A.3 above), it appears that no individuals having the surname “Marker” are interested in using the Respondent’s vanity email service for that name.

5.C.5 Finally, the Complainant quotes from a 2001 decision of the German Federal Supreme Court relating to the domain name <shell.de> where that Court apparently found in favour of Deutsche Shell GmbH against the defendant, a private person, who applied to register <shell.de> as a domain name:

“(a) the use of a famous mark in the course of business as a domain name has a substantial adverse effect on the distinctiveness of the famous sign pursuant to §14, sec. 2, No. 3 or §15, Sec. 3 German Trademark Act respectively and

(b) if several entitled bearers of the same name must be considered, the required balancing of interests in cases of equal names basically leads to the application of the ‘first come-first serve’ principle. However, this principle shall not be applied if names of famous and well-known bearers of that name are involved. In such a case the relevant public expects that this famous person or business companies will appear on the internet using the respective domain address. Thus the other bearer of the same name shall use a distinguishable add-on if reasonable interests of the other bearer of the same name are not on hand.”

5.D Respondent’s Surrejoinder

5.D.1 The Respondent reiterates its reliance (under paragraph 4(k) of the Policy) on the superiority of the decision of a court of competent jurisdiction over a decision of a panel rendered under the Policy.

5.D.2 Further, the Respondent says that where - as in this administrative proceeding - there are disputed issues of fact, a court is better placed than a panel appointed under the Policy.

5.D.3 With respect to the pattern of conduct asserted in paragraph 5.C.2 above, the Respondent cites decisions under the Policy suspending complaints in favour of court proceedings. The cases cited are Holley (supra) and DNA (Housemarks) Limited v. Tucows.com Co, WIPO Case No. D2009-0367 an extract from the latter being quoted in the Response. The Respondent’s case is that those decisions, particularly the DNA case provide detailed and thoughtful reasons for suspension of proceedings commenced under the Policy in favour of determination by a court of competent jurisdiction.

5.D.4 Finally, the Respondent seems to be saying that the legitimacy of its vanity email service is an issue for the courts, not for determination under the Policy. In case the Panel has misunderstood this part of the Surrejoinder, it is set out below in full:

“Fourth, and finally, Tucows is proud of its Personal Names Services, described in its initial Request to Terminate or Suspend and its Complaint filed in Ontario. The thousands of surnames that comprise that service are core corporate assets, held by a publicly traded company and relied on daily for email and Internet infrastructure by current customers. These are not assets that Tucows can place at risk, even if that risk is miniscule. To suggest, as Complainant’s counsel does here, that Tucows is intentionally disregarding the UDRP or its contractual obligations to ICANN is outrageous libel not backed by any supporting facts.

The Panel should dismiss Complainant’s action in deference to the Ontario action filed by Tucows.”

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

6.2 The Policy, paragraph 4(c), sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

6.3 The Policy, paragraph 4(b), sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of the disputed domain name in bad faith.

6.4 As stated, the circumstances set out in paragraphs 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant for the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 The Complainant clearly has rights in the trademark MARKER. The disputed domain name is identical to the wordmark MARKER and is confusingly similar to the MARKER and device registration. Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

6.6 There is no evidence that the Respondent has been commonly known by the disputed domain name.

Nor is it disputed by the Respondent that it is making commercial use of that name. The issue is whether, prior to receiving notice of this dispute, the Respondent’s uses of the disputed domain name were in connection with a bona fide offering of services.

6.7 Here two uses have been made since the Respondent acquired the disputed domain name in 2006. One is the provision of the disputed domain name as part of its vanity email address business. The Respondent says that it has had customers using that name for that purpose since February 2008; paragraph 4.2.4 above. The other use was to generate click-through revenue as described in paragraphs 4.2.5 to 4.2.6 and 5.A.2 above. As noted in paragraph 4.2.6 above, the Respondent apparently blocked any such further use upon being put on notice of this dispute.

6.8 In the Panel’s view a registrant of a domain name seeking to generate revenue from a pay-per-click link risks a finding of no rights or legitimate interests under paragraph 4(a)(ii) of the Policy if it makes such use of a domain name without first investigating whether such use may infringe third-party trademark rights. It is simply not sufficient to say, as the Respondent does in its Statement of Claim in the Ontario proceedings, that it blocked any further use on becoming aware of this dispute.

6.9 Given the nature of the use (explained in paragraph 5.A.2 above), and the fact that the Respondent by virtue of its business must be taken to be aware of the way in which the Policy has been generally applied to pay-per-click usage - see, paragraphs 2.6 and 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) - this Panel takes the view that such use by the Respondent of the disputed domain name was, on the facts of this case, neither a bona fide nor a fair use of that name. Consequently, the Respondent cannot assert rights or legitimate interests for that use under paragraph 4(c)(i) of the Policy.

6.10 In support of the other use of the disputed domain name, the Respondent relies on its function as a vanity email address for individuals having the “Marker” surname. In this respect, the Respondent invokes a number of decisions under the Policy and also cites the Avery Dennison case (referred to in paragraph 5.B.4 above). That particular case was not decided under the Policy but under the US Federal Trademark Dilution Act and the California Business and Professional Code. The Court there held that the second element of a cause of action under the Act requires the defendant to be making commercial use of the plaintiff’s trademark in commerce, which must constitute “… using the trademark as a trademark, capitalising on its trademark status” (page 880 of the Judgment, citing the Court’s earlier decision in Panavision v. Toeppen 141, F.3d., 1316, 1324 (9th Cir. 1998)). Applying that requirement, the Court held

“Appellants (the defendant, Jerry Sumpton) do not use trademarks qua trademarks as required by the case law to establish commercial use. Rather, Appellants use words that happen to be trademarks for their non-trademark value. The district court erred in holding that Applicants’ use of <avery.net> and <dennison.net> constituted commercial use under the Federal Trademark Dilution Act. …”

6.11 The decisions under the Policy also relied upon by the Respondent, namely Marden Group B.V. v. Tucows.com.co, WIPO Case No. D2011-1061; Walls Industries, Inc., Cleburne, Texas v. Tucows.com Co, NAF Claim No. 824361; 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., Towaco, NJ, USA v. Bosco E-Mail Service, Vancouver, BC, Canada and Mailbank.com, Point Roberts, WA, USA, NAF Claim No. 94828; José de Jesús Velázquez Jiménez v. Mailbank.com Inc., WIPO Case No. D2001-0341; Dong A/S v. NetIdentity, NAF Claim No. 250240 and Ancien Restaurant Chartier v. Tucows.com Co, WIPO Case No. D2008-0272, all cite and follow the Avery Dennison judgment. Another authority cited (Ancien Restaurant Chartier v. Tucows.com Co, WIPO Case No. D2008-0272) made no finding in relation to paragraph 4(a)(ii) of the Policy but held absence of bad faith under paragraph 4(a)(iii). Yet another cited authority (Raccords et Plastiques Nicoll v. Tucows.com Co., WIPO Case No. D2008-1322) was based, primarily, on a holding of no bad faith under paragraph 4(a)(iii) of the Policy and inclined to a finding of rights or legitimate interests under paragraph 4(a)(ii) of the Policy that being:

“… the majority view of previous decisions that a vanity email service for a surname in the United States is a legitimate business model and can constitute a legitimate interest under the Policy.”

That finding would also appear to be based on the Avery Dennison case.

6.12 The Complainant cites F. Hoffmann-La Roche AG v. Domain Admin Tucows.com Co., WIPO Case No. D2006-1488 which concerned the ROCHE trademark of the pharmaceutical company, F Hoffman-La Roche AG, and the disputed domain name <roche.org> used for a vanity email services. A majority of the panel in that case found that this was a legitimate use of the domain name (applying the Avery Dennison Judgment) and that, as a result of that legitimacy, there was no bad faith registration or use. By contrast, a minority of the panel in that case took the following view:

“There is bad faith in appropriating famous trademarks and the world has reacted against such misappropriation, for example by article 16(3) of the TRIPs Agreement of 1994, two years before the <roche.org> domain name has been registered.

It is absolutely certain that NetIdentity must have known about the ROCHE trademark, as every consumer knows it throughout the world, and as a large organisation having conducted due diligence, the Respondent must have known that misappropriating a well-known trademark is not in conformity with fair practices (Article 10 bis, Paris Convention of 1883). Finally, there is no doubt that, even if there are other explanations than piracy for the choice of a domain name, the net effects of this choice - to wit, dilution of the trademark, redirecting Internet users to a website allowing for ROCHE brands drugs to be ordered and capitalising on its reputation - is constitutive of objective bad faith.”

6.13 Two years later, in 2008 a three-member panel came to a different decision in Pernod Ricard v. Tucows.com Co., WIPO Case No. D2008-0789. The Complainant’s trademark was RICARD, the well-known pastis beverage. The disputed domain name <ricard.com> was being exploited by the Respondent for use by third parties as a vanity email address. In that case, the panel took the view that the Respondent’s predecessor in title “was likely aware of the mark back when it registered the name in 1996 and the Respondent was aware of the RICARD mark when it acquired Mailbank’s business in 2006, or in any event should have been so aware”. Finding the Respondent to have no rights or legitimate interests in the disputed domain name <ricard.com>, the panel held:

“Hence, under the specific facts at issue here, the Respondent’s use of the disputed domain name as an address not only of a vanity mail service but also, to the same if not greater extent, of a website providing third-party sponsors links does not constitute a bona fide offering of goods and is unquestionably commercial in nature. Hence, the Respondent’s conduct does not fall within paragraphs 4(c)(i) or 4(c)(iii)of the Policy either.”

6.14 When considering paragraph 4(a)(iii) of the Policy, the Pernod Ricard panel said of the purchase of the disputed domain name <ricard.com> in 2006 by the Respondent from Mailbank:

“It knew that it was not just acquiring a set of vanity email addresses: as the Respondent’s CEO put it in a 2006 podcast, there was ‘a fair chunk of pay per click revenue in there as well’”.

6.15 Transfer of that disputed domain name was ordered. The present Panel notes that there is, however, one difference between the Pernod Ricard case and this administrative proceeding. In that case, RICARD was a very well-known brand. By comparison, in this case, doubtless MARKER is also very well-known internationally, but to the smaller and more specialist skiing community. However, as in the present case, the Pernod Ricard respondent immediately took down the pay-per-click website at “www.ricard.com” in response to the dispute. The Panel considers that this decision (from an experienced WIPO UDRP panel) is important in the context of the legitimacy, or otherwise, of trading in domain names for use as vanity email addresses.

6.16 The Complainant also cites a judgment of the German Federal Supreme Court of 2001, although the Defendant’s use of the disputed domain name <shell.de> is not explained; see, paragraph 5.C.5 above. The principle, however, appears to be that the “first come, first served” principle which applies to the first registrant of a domain name case can be displaced where the domain name comprises a famous trademark like SHELL.

6.17 There is a not dissimilar decision of the English Court of Appeal in British Telecommunications plc & Others v. One in a Million Ltd & Others in 1998 (CHANI 98/0025/B and 98/0092-95B). The defendants were dealers in domain names. As the Court said:

“They register them and they sell them. They have made a specialty of registering domain names for use on the Internet comprising well-known names and trademarks without the consent of the person or company owning the goodwill in the name or trademark.”

The well-known trademarks in issue were MARKS & SPENCER, LADBROKE, SAINSBURY, VIRGIN, BT and CELLNET. That case turned in infringement of s,10(3) UK Trade Marks Act 1994, the European Community counterpart of which is Art. 5(2) of the Trade Mark Directive (Directive 2008/95/EC). Those provisions provide that infringement will arise from use in the course of trade of a sign which is identical with or similar to a trademark where the trademark has a reputation and the use of the sign, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trademark.

The court speculated as to whether the provision of the 1994 Act required the use to be trademark use, but concluded in the following words:

“I am not satisfied that section 10(3) does require the use to be trade mark use … but I am prepared to assume that it does.”

6.18 However, that such use does not require classic confusion or likelihood of confusion was confirmed by the European Court of Justice in the L’Orêal SA and Others v. Bellure NV and Others (Case C487/97) judgment of June 18, 2009. In that case the use was characterised by the Court as free riding.

6.19 The European Court of Justice (“ECJ”) has subsequently held that there is only trademark infringement under Article 5(1) Trade Mark Directive where the third party’s use affects or is liable to affect the functions of the trademark (Joined case Google France SARL v. Louis Vuitton Malletier SA, C-236/08; Google France SARL v. Viaticum SA and Luteciel SARL, C-237/08 and Google France SARL v. Centre national de recherche en relations humaines (CNRRH) SARL and Others, C-238/08, (ECJ 2010 I-02417), at paragraphs 75 to 77).

6.20 However, that is not necessarily the same test as under US law and does not necessarily apply to infringement under Article 5(2) of the Directive. In that respect, following its 2009 decision in L’Orêal case, the ECJ in Interflora Inc. and Interflora British Unit v. Marks & Spencer plc et Flowers Direct Online Ltd., C-323/09, ECJ 2011 (decided subsequently in September 2011) identified three types of injury against which Art. 5(2) of the Directive provides protection for the trademark proprietor, one of which is taking unfair advantage of the distinctive character or repute of the mark. As to that, the court stated in paragraph 74 of its judgment:

“For its part the concept of ‘taking unfair advantage of the distinctive character or the repute of the trade mark’, also referred to as, inter alia, ‘free riding’, relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation (Case C-487/07 L’Oreal and Others, paragraph 41)”

6.21 By contrast, the US Appeal Court in Avery Dennison case clearly held that, under the US Statute, the use must necessarily be use of “trademarks qua trademarks as required by the case law to establish commercial use”. In that context, it is also noted that none of the trademarks relied upon by the Complainant (see, paragraph 4.1.3) are US trademarks. They are Canadian, German and for the countries covered by the International Registrations.

6.22 It seems to the Panel that the relevant use in this case is not how the Respondent’s customers use the disputed domain name - for example, as a vanity email address, such as “you@brown.org” (see, paragraph 4.2.3 above) - but the use which the Respondent makes of that name. In its Statement of Claim (paragraph 11) in the Ontario case, the Respondent illustrates use of the disputed domain name as “<peter@marker.com>”. Such use by the customer is, presumably, not a commercial use. It is, however, a source of revenue for the Respondent, who derives payment from each individual using the domain name for his or her vanity email address. Hence, it seems to this Panel that the Respondent is making a commercial use of the domain name and, for the purposes of the Policy, if that domain name is identical to or confusingly similar to a Complainant’s trademark, it could be said that such use is not a legitimate one.

6.23 It is not, however, necessary for a finding under paragraph 4(a)(ii) of the Policy for this Decision to be made in respect of both uses of the disputed domain name. The Panel has already found that the Respondent’s use of the disputed domain name to derive pay-per-click revenue was neither a bona fide nor a fair use; paragraphs 6.7 and 6.9 above. That use is sufficient to deprive the Respondent of rights or legitimate interests in the domain name. Accordingly, the Panel finds that the Complaint satisfies the requirement of that paragraph of the Policy.

Registered and Used in Bad Faith

6.24 The Complainant’s German, Canadian and International registrations for MARKER date from 1968. The disputed domain name was registered in May 1997. The Respondent’s case is that the disputed domain name was registered by its predecessor in title, Mailbank Inc, a company which operated under the business name “NetIdentity”. It is one of some 43,000 surname domain names registered by NetIdentity for the purpose of providing email and web services which are currently owned by the Respondent (paragraphs 14 and 40 of the Statement of Claim in the Ontario case).

6.25 After the Respondent acquired the disputed domain name in June 2006 that name was transferred into the Respondent’s name. Paragraph 2 of the Policy provides that the Respondent upon applying for that transfer represented and warranted to ICANN that, inter alia:

“(b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party”.

6.26 The WIPO Overview 2.0 (referred to in paragraph 6.9 above) states in paragraph 3.7 that transfer of a domain name to a third party - as occurred in this case between NetIdentity and the Respondent - amounts to a new registration for the purpose of assessing bad faith. It follows that, for the purpose of assessing bad faith under paragraph 4(a)(iii) of the Policy, the Respondent’s registration and use of the disputed domain name is to be judged on the basis of its compliance with the representation and warranty made under paragraph 2 of the Policy.

6.27 In this case, the disputed domain name was registered before the Policy was adopted in 1999. However, at the date of the transfer of the disputed domain name to the Respondent in 2006 the Policy was in force and the Respondent in registering that transfer made the representation and warranty as to existing and future use required by paragraph 2 of the Policy.

6.28 In the Panel’s view the Respondent’s use of the disputed domain name to generate click-through revenue constitutes a bad faith use under paragraph 4(b)(iv) of the Policy (see paragraphs 5.A.2 and 6.7 to 6.9 above). That use was current at the date the Complaint was filed in this administrative proceeding.

6.29 The question then arises as to whether that bad faith use alone is sufficient for a finding in the Complainant’s favour under paragraph 4(a)(iii) of the Policy, regardless of the issue as to whether or not provision of the disputed domain name to individuals to use as vanity email addresses is also a bad faith use.

6.30 The Panel’s view is that such bad faith use in connection with click-through revenue is sufficient. The Respondent is, clearly, very active in the domain name field and fully familiar with the Policy and the way that it has been applied. It appears that the Respondent’s acquisition and use of the disputed domain name was not only for the purpose of offering vanity email addresses. See, for example, the quote from the Respondent’s CEO in the 2006 podcast in the Pernod Ricard case, referred to in paragraph 6.15 above. What is clear to the Panel is that the domain name was registered, and was subsequently used for sponsored advertising which in part took account of the Complainant’s trademarked reputation corresponding to the disputed domain name. In relation to that use of the disputed domain name, the Panel takes the view that the Respondent has not succeeded in rebutting the resulting inference that the Complainant has met the requirements of the third element of the Policy. Accordingly, the Complainant has made out its case under paragraph 4(a)(iii) of the Policy.

Suspension or Termination

6.31 As noted (in paragraph 5.B.5 above), the Policy provides in paragraph 4(k) that the mandatory administrative proceeding requirements of paragraph 4 shall not prevent a respondent from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. That paragraph also provides that a decision by the administrative panel to cancel or transfer a disputed domain name will not be implemented during such court proceedings. In other words, a decision of a court of competent jurisdiction takes precedence over the decision of an administrative panel.

6.32 Paragraph 18 of the Rules provides that, in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, the panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.

6.33 Here, the Panel notes with the Respondent that the Ontario Court is a court of competent jurisdiction being at the location of the Respondent’s address as shown for the registration of the domain name in the Registrar’s WhoIs database at the date this Complaint was filed.

6.34 As to the prior UDRP cases cited by the Respondent, the Panel does not consider several as relevant or persuasive. For example in the Lutton Investments Inc. v. Darkhorse Distribution, NAF Claim No. 154142 there were arbitration proceedings relating to ownership of the VON DUTCH trademark asserted against the disputed domain name <vondutch.com>. Disputed trademark ownership over the KNIPPING Benelux trademark registrations was also the reason for terminating the administrative proceeding in Knipping Kozijnen B.V. v. R.T.P. Hanssen, WIPO Case No. D2006-0622. In the Innovative Merchant Solutions, LLC v. S and S Bankcard Systems, NAF Claim No. 109721 the Complainant itself initiated proceedings in the district court seeking the same relief as in the administrative proceeding.

6.35 More in point is the decision in Hadley Performance Products Inc. v. Tucows.com Co., NAF Claim No. 1333239 to dismiss without prejudice to the complainant’s right to bring a new complaint in the event that the Ontario Court should fail to resolve the domain name dispute. The respondent in that case is the same as the Respondent in this administrative proceeding. Also in point is the decision in DNA (Housemarks) Limited v. Tucows.com Co, WIPO Case No. D2009-0367, which again involved the same Respondent. That case involved the well-known DUNLOP trademark (which had been used in commerce since 1899) and the Respondent’s <dunlop.com> domain name used for vanity email addresses. The panel found that, as in this administrative proceeding, the Respondent’s civil cause of action against the complainant was “virtually identical to the determinations this panel would, should he address the merits, consider under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy”. In deciding to terminate - again without prejudice to the complainant’s right to file a new complaint under the Policy - the panel held:

“But a Panel decision on the merits (whether ordering transfer or denying the Complaint) will not advance final resolution of that question by even one hour, assuming that Respondent continues to pursue its Declaratory Judgement Action, and the Registrar refuses to implement the Panel’s decision on that basis”.

6.36 In the DNA (Housemarks) Limited case (see paragraph 5.D.3), the panel in that case also suggested that the Ontario Court would be best suited to resolve disputes of fact, for example whether the Respondent or its predecessor company had (or should have had) knowledge of the complainant’s DUNLOP trademark. Although the Response in the present case is primarily directed to the Request to Suspend or Terminate, within the context of the Policy this Panel bases its determination on unrebutted facts in the record before it in these administrative proceedings.

6.37 The DNA (Housemarks) Limited case (paragraph 5.D.3 above) was cited too but not followed by the panelist in Navista S.V. v. Virtual Point Inc, dba Cross Path, It Manager, WIPO Case No. D2012-1157, who declined to suspend or terminate: see paragraph 5.C.1 above. The facts in that case appear to have been somewhat different since, as well as the domain name dispute, the proceedings in the California District Court also involved trademark infringement, unfair competition under the California Business & Professions Code and the US Anticybersquatting Consumer Protection Act. Here, on the other hand, and in the Holley Performance and DNA (Housemarks) Limited cases, the issues in the civil action in the court and those in this proceeding are, in substance, identical.

6.38 As to reliance on national law, paragraph 15(a) of Rule provides that a Panel may have regard to “any rules and principles of law that it deems applicable”. The decision in Avery Dennison was (as already noted) made based on interpretation of the US Federal Trademark Dilution Act. However, in this case, the Complainant is a Swiss entity and the Respondent a Canadian entity. As to European case law, the Complainant has cited the Shell decision of the German Federal Supreme Court and the Panel has referred to the judgment of the English Court of Appeal in the One in a million case and the Decisions of the European Court of Justice referred to in paragraphs 6.18 to 6.20 above. There is also the dissenting opinion of the Swiss Prof. François Dessemontet in F. Hoffmann-La Roche AG v. Domain Admin Tucows.com Co, WIPO Case No. D2006-1488 (paragraph 6.13 above).

6.39 In this case, the Response is primarily directed to the Request to Suspend or Terminate and not to answering the Complaint in full. However, the essence of the Respondent’s case on the legitimacy of use of the disputed domain name as a vanity email address is pleaded both in the Request and quite fully in the Statement of Claim in the Ontario case exhibited to the Request. Accordingly, the Panel takes the view that the Respondent’s case on the merits has been quite fully canvassed in its two Submissions and by reference to the case law relied upon as supporting its contention that commercial exploitation of the disputed domain name for use of vanity email addresses is a legitimate use under the Policy notwithstanding that such use is identical or confusingly similar to the Complainant’s registered trademark. However, this Panel has decided under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, it is not necessary for this Decision to be based on the Respondent’s use of the disputed domain name as a vanity email address.

6.40 As to use of the disputed domain name to generate click-through revenue, the Respondent’s case is that it has purged any such misuse by suspending the advertising complained of: see paragraph 4.2.6 above. That does not, however, in the Panel’s view alter the nature of the use current at the date of the Complaint in this administrative proceeding. The Panel in the Pernod Ricard case took the same view: see, paragraph 6.16 above.

6.41 While the Respondent is clearly entitled to bring this dispute before the Ontario Court, in the Panel’s opinion it is nevertheless appropriate for a decision to be made under the Policy. The thrust of the Respondent’s court case appears to be to obtain support under national law of the registrations it offers in its vanity email program. But, as noted, this Decision is based on what this Panel believes to be the Respondent’s bad faith use of the disputed domain name to generate click-through revenue. With full respect for the jurisdiction of this and any other competent court, this Panel believes that a failure by the Panel to address the merits of the case before it would serve to frustrate the intended effect of the Policy, to which the Respondent as domain name registrant has submitted on its part. Consequently, the Respondent’s request to suspend or terminate this proceeding is denied. Naturally, it is for the Ontario Court to make its determination on the facts and issues before it under applicable law.

7. Decision

For all the foregoing reasons, in the exercise of its discretion under paragraph 18(a) of the Rules, without prejudice to the general operation of paragraph 4(k) of the Policy, and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel hereby orders that the disputed domain name <marker.com> be transferred to the Complainant.

David Perkins
Sole Panelist
Date: November 14, 2012

 

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