WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Champagne Lanson v. Development Services/MailPlanet.com, Inc.
Case No. D2006-0006
1. The Parties
The Complainant is Champagne Lanson, Reims, France, represented by Cabinet Degret, France.
The Respondent is Development Services, MailPlanet.com, Washington DC, United States of America, represented by John Berryhill, United States of America.
2. The Domain Name and Registrar
The disputed domain name <lanson.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2006. On January 6, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On January 13, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 January 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2006. The Response was filed with the Center on February 6, 2006.
The Center appointed Knud Wallberg, Nathalie Dreyfus and David H. Bernstein as panelists in this matter on March 6, 2006. 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.
In the Response, Respondent put forward new facts and evidence that Complainant could not have reasonably anticipated when filing the Complaint. The Panel therefore decided to allow the unsolicited supplemental filing that Complainant had submitted to the Center on February 10, 2006. To ensure the principle of equality, the Panel further allowed the Respondent’s supplemental filing dated February 27, 2006.
The Panel wants to note that, since both parties have filed very extensive submissions, the following is only a summary of the essential factual and legal contentions made by the Parties.
4. Factual Background
Complainant
Champagne Lanson (formerly Champagne Lanson Père et Fils) was founded in 1760.
Complainant, including its affiliate Lanson International, is the second largest producer of champagne in the world with a turnover of 220 million Euros and 18 million bottles sold annually in more than 80 different countries.
Champagne Lanson and its affiliate distribute worldwide the majority of their wines under the brands LANSON, BESSERAT DE BELEFON, ALFRED ROTHSCHIELD, MASSE and GAUTHIER.
Complainant is the owner of more than 100 trademark registrations consisting of or comprising the term LANSON in more than 80 countries including in the United States, the country of residence of Respondent.
Due to the long term and widespread use of the mark LANSON has become a well- known mark.
Complainant and the companies linked to it also own numerous domain names consisting of or comprising the term LANSON. Most of these domain names point to the main official website “www.lanson.fr”.
In addition, Complainant also holds rights to its company name and trade name, which include the term LANSON, and which are used worldwide.
Respondent
MailPlanet.com, Inc. is a subsidiary of Telepathy, Inc., incorporated in 2000. Respondent has registered number of surname-based domain names which have been used by Respondent for providing email services based upon such surnames.
5. Parties’ Contentions
A. Complainant
(i) The domain name is identical or confusingly similar to trademarks in which the Complainant has rights
In the present case, the disputed domain name consists of Complainant’s LANSON trademark, with the single addition of the gTLD “.com” and is thus identical to Complainant’s trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the domain name
Complainant has not granted, assigned, licensed, sold or transferred any rights in its LANSON trademarks to Respondent.
Respondent has never been, and is not currently, commonly known by the disputed domain name, since none of the names able to identify Respondent (Development Services; develop@telepathy.com; MailPlanet.com Inc.) consists in whole or in part in the denomination LANSON.
Respondent does not hold any trademark or other right consisting in whole or in part in the denomination LANSON, which is the distinctive part of the disputed domain name.
In addition, LANSON is neither a common noun, nor a common name; therefore the choice of a domain name comprising this denomination is only motivated by the will to create an illegitimate association with Complainant.
Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services, nor has it made preparations to do so. On the contrary, the site accessible under the contested domain name contained plenty of pay-per-click commercial hypertext links for Complainant’s competitors and/or their products. In addition, numerous pop-ups containing advertising and commercial material appeared on said website. Most of these pop-ups are furnished by Doubleclick Inc., which has a reputation for pop-ups conveying viruses and spy wares. In addition, Respondent sent spam emails from the IP address corresponding to the disputed domain name.
Such use cannot be a bona fide use, since its only purpose is to divert the Internet users to commercial/advertisement sites by using Complainant’s notoriety.
Respondent does not make a legitimate non-commercial or fair use of the domain name. Rather, Respondent receives money from the advertisers which appear on the website accessible via the disputed domain name and thus unfairly enriches itself to Complainant’s detriment and harms Complainant’s notoriety.
As additional arguments, Complainant asserts:
- that the fact that Complainant had not registered the contested domain name earlier cannot give any rights therein to Respondent.
- that the registration of the disputed domain name prevents Complainant from making use of same.
- given that the mark LANSON is famous all over the world in relation to champagne, Respondent cannot have ignored that its registration and use of a domain name comprising this mark would infringe on the rights of Complainant, so that Respondent has no legitimate interest in the disputed domain name.
- that Respondent has put the contested domain name up for auction on the Internet.
Consequently, Respondent lacks any rights or legitimate interest in the disputed domain name according to Rules paragraph 3(b)(ix)(2).
(iii) The domain name was registered and is being used in bad faith
Complainant has put forward the following arguments:
The absence of response by Respondent to solicitations by Complainant, as happened in the present case, constitutes evidence of bad faith.
Also, Section 22 of the United States Trademark Act states that “registration of a mark on the principal register (…) shall be constructive notice of the registrant’s claim of ownership thereof”. It should therefore be presumed that Respondent had actual notice of Complainant’s rights in the LANSON trademark prior to registering the disputed domain name.
Moreover, the fact that, before the cease and desist letter, the website to which the disputed domain name pointed provided pay-par-click links for Complainant’s competitors’ champagne cannot be due to hazard, but proves that Respondent knew it had registered someone else’s trademark.
The registration of domain names comprising well-known trademarks is in itself evidence of bad faith.
Further, by using the disputed domain name, Respondent has intentionally created a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the domain name and website accessible thereunder in the Internet users’ minds with the intention of cashing in on Complainant’s fame and goodwill.
Respondent has tried to benefit unfairly from the reputation of Complainant’s trademarks, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the disputed domain name and the website accessible thereunder.
Bad faith registration and use are also proven by the fact that the disputed registration prevents Complainant from reflecting its main trademark in the most needed and valuable gTLD, notably in order to promote its famous Champagne. This seriously harms and disrupts Complainant’s business.
Besides, since the sending of the cease and desist letter, the disputed domain name has been put up for auction at a starting price of US$ 400. Given the fact that a registration and annual maintenance fee of a .com domain name with Moniker cost less than US$ 19, US$ 400 exceeds any out of pocket costs that were incurred.
Moreover, the website linked to <lanson.com> generates pop-ups and puts visitors’ computers at risk given that Respondent sent spam emails from the IP address corresponding to the disputed domain name. Such use obviously constitutes further evidence of bad faith and tarnishes the reputation of the Complainant’s trademark.
B. Respondent
Respondent has put forward the following arguments:
(i) Identity or Confusing Similarity
Complainant has United States trademark registrations for “LANSON” in connection with champagne, but Respondent is not in the champagne business, nor did Respondent register the domain name for the purpose of diverting consumers seeking champagne.
(ii) Legitimate Rights And Interests
The domain name <lanson.com> was placed in commercial use by Respondent as part of a vanity email service offering email accounts that correspond to the user’s name. The attractiveness of the service is that an individual, such as John Lanson, could register and use the email address john@lanson.com. This email address would be intuitive, memorable, would not promote any company, would offer privacy that may not be available from a work address, and would offer portability that could not be found in an email address tied to a specific ISP. Prior to notification of this dispute, the domain name <lanson.com> was thus being used in connection with a bonafide offering of surname-based email services.
In this proceeding, Complainant has taken advantage of the recent lapse of service to advance the pretense that this domain name – registered for more than four years – was registered and has always been registered for the purpose of providing the parking page shown in the Complaint.
Respondent has registered many available domains, including ones that became available once the registrations of the prior owners lapsed, and negotiated the purchase of many last-name domains directly with the prior owners. MailPlanet.com holds over three hundred last-name domains including Garcia.com, its most popular last-name holding. Other common last names held by MailPlanet.com include Norris.com, Middleton.com, Garner.com, Bellamy.com, Crenshaw.net, and Graham.net.
Lanson is a surname used by a commercially significant number of people in Europe and the United States. As it is based on a last name shared by numerous people, the <lanson.com> domain was attractive to MailPlanet to add to its last-name domain offerings.
Respondent offered email accounts for $19.95 per year, while the annual registration cost it incurred was under $7.00 per year and the incremental hosting costs incurred were negligible.
After launching the service, MailPlanet discovered that high volumes of spam directed
towards domains that are part of the MailPlanet service affected the quality of the service as massive spam blasts would disrupt email service and also would delay the sending and receiving of email. MailPlanet began a search for a third-party hosted email solution, as combating the spam blasts, the frequent need to upgrade the email software, and other technical issues were placing an unsustainable burden on the support staff.
MailPlanet selected Tucows to host its existing email accounts and began the tedious
process of migrating existing customer accounts to the new service. Domains that had not attracted customer accounts at the time of the interruption of the active development of MailPlanet.com and that were previously configured to forward users to the MailPlanet.com email service were reconfigured with the default zone files for undeveloped domains held by MailPlanet’s parent company, Telepathy, Inc., which directed the traffic from the domains to a service provided by Google and its affiliates for the purpose called the Google AdSense for Domains program.
That <lanson.com> did not attract paying subscribers during the time when it was registered for use with the MailPlanet.com service and the time when active development of that service was discontinued does not negate the fact that it was registered for use with the MailPlanet.com service and was put into service as a last-name domain available to customers seeking an email address at <lanson.com>.
(iii) Bad Faith
Complainant’s statement that Respondent’s decision not to respond to its communications constitutes bad faith is unfounded since Respondent is under no obligation to correspond with any party who may desire to direct communications to it.
Contrary to Complainant’s claims that it is the sole entity entitled to make commercial
use of the <lanson.com> domain, the prior registrant of the domain was a door manufacturer named Lanson Industries. Lanson Industries was subsequently acquired by Nabco which apparently having no further use for the <lanson.com> domain abandoned the domain, thereby making it available on a first-come, first-served basis to whoever else had a use for the domain name.
Respondent was collecting surnames identified in the United States Census Bureau list of surnames and noticed that one of those names – lanson.com. – became available for registration, and registered it for use in connection with an email service.
Even if Respondent had conducted a search of US trademark registrations, Respondent would have found no trademark claim which conflicted with Respondent’s intended use of the domain name since Respondent was not intent on making or advertising champagne.
Respondent has not registered a pattern of domain names designed to block Complainant from using its alleged mark as a domain name.
Complainant never held registration of <lanson.com>, because it had already been registered to another party at the time Complainant registered <lanson.net>. Complainant acquiesced in the fact that <lanson.com> had already been registered by that third party.
As to how the parked landing services operate, it is a common industry practice to point domains undergoing re-development to such parking pages. The domain owner’s role is limited to turning over the domain to the service. It is the service that hosts the landing page, publishes the landing page, determines the appearance of the landing page, and chooses which links appear at the landing page. The domain owner has no say in any of this.
As to intentionality, Respondent’s intentionality is limited to the decision to configure
<lanson.com> with the default settings used by parent company Telepathy, which turn over operation of its undeveloped domains to parking providers. Respondent’s intentions go no further, as it is not involved nor has any control over which links appear. To ascribe bad faith to Respondent with respect to the ads which appear on the landing pages would require that the Panel determine that the mere act of using a parking provider is an act of bad faith with respect to Complainant, even though Respondent is ignorant of and does not choose the specific links which appear.
Furthermore as MailPlanet and parent company Telepathy have thousands of domains set up with parking services and in a given year will only visit a small number of these domains, Respondent has no knowledge of the links that appear on the vast majority of the domains set up with the parking services. Specifically, with respect to <lanson.com>, Respondent was not aware of the links that were appearing until notified by Complainant.
C. Supplemental filing by the Complainant
In reply to Respondent’s Response, Complainant has put forward the following:
Respondent has communicated in its Response a list of domain names in its possession. This list establishes that MailPlanet.com, Inc. is engaged in a pattern of conduct consisting in registering domain names corresponding to famous names or trademarks for the sole purpose of parking them, i.e., having them point towards websites full of pop-ups and only containing hypertext commercial links, advertising for products of the same nature said names are associated with by the public.
As to the alleged features of the LANSON denomination, LANSON is not a common surname. A surname ranked at the 87,713th position of all the US surnames cannot be common. Respondent has expressly confirmed this view, indicating that the alleged e-mail service under <lanson.com> never attracted subscribers.
The alleged use of the disputed domain name with a “vanity” e-mail service is not proven and purely artificial. Respondent’s e-mail service under the <lanson.com> address has thus not attracted any subscribers. This indicates that said e-mail service may probably have never been genuinely implemented.
On the contrary, the use during a considerable period of time of the contested domain name for displaying infringing ads has been genuinely established.
The registration of <lanson.com> in the past does not allow its registration by Respondent to the extent that the relationship between Champagne Lanson and these third parties are irrelevant to the present proceedings. Nothing compels a trademark owner to register a domain name that is identical or similar to its trademark. The principle of “first come, first served” thus only applies insofar as the registrant is of good faith and respect the rights of third parties.
D. Respondent’s supplemental filing
Complainant’s supplemental filing gave rise to the following supplemental filing:
It is not relevant to the purpose for which Respondent registered the domain name
whether the domain name <lanson.com> proved to be a popular or successful domain name for use in Respondent’s service or not. The fact remains that Lanson is a surname, and Respondent had registered the domain name for the purpose of providing surname-based email service.
The essence of the Policy is whether Respondent purposefully, knowingly, and intentionally registered the domain name for the purpose of abusing or disrupting the rights of the Complainant, not whether Respondent is successful in predicting the popularity or frequency of a surname.
As to the parking of the domain name immediately prior to this dispute, Respondent reiterates that it has undergone a transition with respect to its email service provider, and that while the domain name <lanson.com> was indisputably used for a surname-based email service, <lanson.com> was among several domain names parked when Respondent chose to transition its email services to another provider.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) That Respondent has no legitimate interests in respects of the domain name; and
(3) the domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The evidence presented by Complainant of its trademark registrations demonstrates that Complainant has trademark rights in the name LANSON in a number of jurisdictions including in the United States, the country of residence of Respondent.
For the purpose of these proceedings, the addition of the gTLD “.com” is not significant in determining whether the domain name is identical or confusingly similar to the mark. The domain name <lanson.com> is thus identical to Complainant’s mark and consequently the requirement of paragraph 4(a)(i) is met.
B. Rights or Legitimate Interests
Respondent’s main argument for the legitimacy of the registration of the disputed domain name is that LANSON is a common surname and that Respondent has registered it (and many other domain names consisting of surnames) to be used for a vanity email service, i.e., a service offering email accounts that correspond to the user’s name.
The Panel agrees with Respondent and with previous decisions under the UDRP that offering a vanity email service can be a legitimate use. See, e.g., International Raelian Religion and Raelian Religion of France v. Mailbank.com Inc., WIPO Case No. D2000-1210. To qualify as a legitimate interest, though, the domain name must be registered solely because it is a bona fide surname and only for use with vanity email services.
Here, Complainant has shown that Respondent used the domain name for a page that listed Google AdWords generated advertising. Presumably, as owner of the domain name, Respondent, its parent, or its agents receive click-through commissions or revenue when Internet users click through to the advertised websites.
This conduct is not a legitimate use. If it were, registrants could register domain names consisting of surnames, even incredibly uncommon ones, on the pretext of offering vanity email services but for the real purpose of generating click-through revenue based on the value of the trademarks that correspond to the surname. If a registrant wants to claim that its registration of a surname-based domain name is a legitimate use because it is being used for vanity email services, it must be used only for vanity email services.
As a matter of law, then, Respondent’s use cannot support a legitimate interest. That conclusion is supported by the specific facts of this case. The Lanson name is not a very common one. Not only was it very far down on the list of surnames, but also, Respondent concedes that it “did not attract paying subscribers.” Thus, whatever the initial intention, the <lanson.com> domain name was never actually used for vanity email services.
In fact, the only use that was made of the <lanson.com> domain name was for what Respondent calls a “parked landing service,” which contained what appeared to be pay-per-click commercial hypertext links to other entities including links to Complainant’s competitors and/or their products. The fact that the ads (whether deliberately placed or automatically generated) linked to competitive champagne producers shows that the perceived value in the <lanson.com> domain name was for its relevance to the well-known champagne producer, and not for those individuals with Lanson as their surname.
That Respondent is not responsible for the particular ads that appeared on the site does not save the conduct or render it legitimate. Whether Respondent picked the ads, whether its parent did, or whether they allowed the ads to be automatically generated by the Google AdWords service, the fact remains that the <lanson.com> domain name was being used for services other than vanity email services. Because it was in Respondent’s control to decide whether to allow the domain name to resolve to a parked website containing advertisements, the Panel cannot accept Respondent’s claim that this use should be ignored because it was performed by Respondent’s parent company, Telepathy and thus was beyond the control or intent of the Respondent. See Lo Monaco Hogar S. L. v MailPlanet.com, Inc, WIPO Case No. D2005-0896.
For all these reasons, the Panel finds that Respondent does not have legitimate interests in respect of the domain name. Consequently, the requirement of the Policy paragraph 4(a)(ii) is met.
C. Registered and Used in Bad Faith
According to the Policy, paragraph 4(a)(iii), Complainant must prove that the contested domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists, by way of example, circumstances that, in particular, but without limitation, shall be evidence of the registration and use of a domain name in bad faith if found by the Panel to be present.
As noted above, the Lanson surname is not a very common one. Not only was it very far down on the list of surnames, but also Respondent concedes that it “did not attract paying subscribers.” These facts support an inference that <lanson.com> may have been registered for reasons other than the fact that it is a surname.
Respondent’s or its parent’s use of the domain name to allow advertising that links to Complainant’s competitors not only constitutes bad faith use, but also further supports the inference that the contested domain name was registered for reasons other than solely offering a vanity email service. Further evidence of bad faith use is that Respondent allowed pop-ups containing additional advertising on said website.
Finally, Complainant has submitted evidence that Respondent has allowed similar advertising on other websites linked to domain names that allegedly were registered because they were surnames but also happen to constitute well-known marks. As with the case of <lanson.com>, the advertising on those other websites relates primarily to the trademark value of the name, and not to the surname value. This evidence shows that Respondent has engaged in a pattern of registering domain names consisting of trademarks and then profiting from the advertising on the sites to which the domain names resolve. In each case, Respondent’s conduct prevents the trademark holder from registering the domain name corresponding to its mark.
Respondent defends its conduct by arguing that it was not aware of Complainant’s rights when registering the domain name. Even if true, on the facts of this case, that contention is not sufficient to avoid a finding of bad faith.
The Panel does agree with Respondent that knowledge of Complainant’s trademark cannot be shown through constructive notice. That aspect of U.S. law relates to whether a particular use constitutes trademark infringement, not to the more specific finding required by the Policy that a domain name was registered and used in bad faith. Nevertheless, even if Respondent did not actually know of Complainant’s mark, it cannot avoid a finding of bad faith registration if it shielded its eyes with wilful blindness. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. That is particularly true when the mark at issue is as famous and well-known as LANSON. Furthermore, the fact that the domain name was used for a web page that contained commercial hypertext links to other entities including links to Complainant’s competitors and/or their products shows that Respondent should have been aware of Complainant’s rights. See Lo Monaco Hogar S. L. v MailPlanet.com, Inc., WIPO Case No. D2005-0896.
Under these circumstances, the Panel finds that Complainant has satisfied its burden of proof that the contested domain name was registered and is being used in bad faith.
Consequently the requirement of the Policy paragraph 4(a)(iii) is met.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <lanson.com> be transferred to Complainant.
Knud Wallberg | |
Nathalie Dreyfus |
David H. Bernstein |
Date: March 20, 2006