WIPO Domain Name Decision: D2007-1750

The Complainant is Markel Corporation of Glen Allen, Virginia, United States of America represented by, McGuire Woods LLP, Richmond, Virginia, United States of America.

The Respondent is Tucows.com Co of Toronto, Ontario, Canada represented by, Cathcart Collins LLP, Los Angeles, California, United States of America.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2007. On November 29, 2007, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the domain name at issue. On November 30, 2008, Tucows, Inc. transmitted by email to the Center its verification response stating the registrant was the Respondent. 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 on December 4, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2007. The Respondent submitted its response on December 24, 2007.

On the May 22, 2008, the Center appointed Alistair Payne, Kund Walberg and Neil A. Smith as panelists on this matter. The proceedings had been suspended up to this date to allow settlement talks to proceed between the parties. The Panel finds that it was properly constituted. 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.

The Complainant in this proceeding is Markel Corporation. The Complainant’s main area of business is insurance and insurance services. The Complainant has provided evidence of registrations of the trade mark MARKEL with the United States (“U.S”) Patent and Trademark Office and the Office for the Harmonization of Internal Markets in Europe.

The Respondent is a subsidiary of Tucows, Inc., an ICANN accredited registrar whose primary business involves the registration of domain names. In 2006 Tucows, Inc. acquired Mailbank, Inc. which later became NetIdentity. The business of Mailbank, Inc. is to offer “vanity email addresses” to customers corresponding to their own first and last names. For example bill@smith.net. It is through the aforementioned acquisition that the Respondent became the registrant of the Disputed Domain Name.

The Complainant upon demonstrating ownership of the above mentioned trade marks states that the Disputed Domain Name is confusingly similar to its registered marks.

The Complainant further claims that as searches of the relevant trade mark registers reveal no correlation between the Respondent and the Disputed Domain Name, this is in itself evidence of the Respondent’s lack of rights or legitimate interests in the Disputed Domain Name. The Complainant in support of this proposition further states that the name of the Respondent bears no connection to the Disputed Domain Name and that a simple Google search did not reveal any websites which suggest the same.

The Complainant further asserts that the Respondent is using the Disputed Domain Name to attract third parties to advertise on the Respondent’s Website and therefore is using the Disputed Domain Name to trade on the reputation of the MARKEL mark.

In relation to the Complainant’s aforementioned registered trade marks, the Respondent argues that a registered trade mark does not provide an exclusive right to a word or phrase but merely provides an exclusive right to use of the trade-marked term in certain lines of business.

The Respondent states that NetIdentity’s business both pre and post acquisition by Tucows, Inc. was the provision of “vanity email addresses” to customers. Therefore as Markel is the surname of over 3,500 U.S. residents, this amounts to a legitimate interest for the purpose of this proceeding.

The Respondent further claims that none of the elements amounting to registration and use in bad faith provided in the Policy are present in this case and that the Complainant makes its claim of bad faith without any evidence whatsoever.

The Respondent further contends that the Complaint was brought in bad faith which constitutes an abuse of the administrative proceeding.

It is necessary for the Complainant, if it is to succeed in this administrative proceeding, to prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.

The Complainant has established in evidence that it has used and has registered trade mark rights in the MARKEL mark. The legitimacy of the mark is not denied by the Respondent who admits that the trade mark is identical to the Disputed Domain Name.

Accordingly the Panel finds that the Complainant fulfills the requirements of paragraph 4(a)(i) of the Policy.

The Complainant’s argument under this heading is based upon the proposition that because the Respondent has no relationship with the MARKEL mark or term then it cannot have any rights or legitimate interests in the Disputed Domain Name. The Respondent on the other hand has demonstrated that it uses the Disputed Domain Name as part of its business offering “vanity email addresses” to customers containing their first and last names.

In the Panel’s view, the issue at hand is whether or not the business of the Respondent is a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the Policy.

It has been established in a number of UDRP proceedings involving the same Respondent that a website providing a “vanity email service” is a legitimate use of a domain name. See, e.g., International Raelian Religion and Raelian Religion of France v. Mailbank.com Inc., WIPO Case No. D2000-1210 or Rusconi Editore S.p.A. v. Net Identity.com Inc. Formerly known as Mailbank.com Inc., WIPO Case No. D2001-0886. In the present proceeding the Respondent has again demonstrated to the Panel the extent of their business model and the success they have encountered through it. The Respondent is using the Disputed Domain Name for a “vanity email” service which in any event has 7 users and which does not appear to display links to competitors of the Complainant or Complainant’s business. Further there is no evidence to suggest that the Disputed Domain Name was registered in bad faith by the prior owner and it appears to have always been used in relation to a “vanity email service”.

The Panel notes, as stated in evidence by the Respondent, that a decision in the home jurisdiction of the Complainant has already legitimized the service provided by the Respondent, see Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999) and that numerous previous panels have endorsed the bona fide nature of a “vanity email service”.

For these reasons the Panel can see no reason why the Respondent should not be free to use the domain name as part of it’s trading activity. Accordingly the Panel finds that the Complainant has failed to fulfill the requirements of paragraph 4(a)(ii) of the Policy.

In view of the legitimate interest in a “vanity email service” possessed by the Respondent and that it and its predecessors have established in such a business, the registration and use of the Disputed Domain Name <markel.com> is not deemed by the Panel to be in bad faith.

The Respondent submits that the Complaint in question was brought in bad faith and seeks a declaration as such from this Panel under paragraph 15(e) of the Rules.

The Panel notes that the Complaint contains almost no substantive argument in relation to elements 2 and 3 of the Policy. It seems to the Panel, based on any objective test, that after listing its apparent trade mark rights, the Complainant either failed to consider (or chose not to do so) the requirements of elements 2 and 3 of the Policy and its likelihood of success. In circumstances where the Complainant obviously could not point to conflicting competitive advertising or other indication of bad faith use and where the Disputed Domain Name was used by a small number of users in the context of a bona fide email service, there was no reasonable chance of the Complaint succeeding. For these reasons the majority of the Panel considers that this was indeed an abusive proceeding contrary to Rule 15 (e) of the Rules.

For all the foregoing reasons, the Panel decides that the Complainant has failed to meet it’s burden of proof under paragraph 4 of the Policy. The Panel therefore denies the Complainant’s request that the Disputed Domain Name be transferred from Respondent to Complainant.

Alistair Payne Presiding Panelist
Knud Wallberg Panelist	Neil Smith Panelist