The Complainant is Raccords et Plastiques Nicoll, of Cholet, France, represented by Brevalex, France.
The Respondent is Tucows.com Co., of Toronto, Canada, represented by Adorno Yoss, United States of America.
The disputed domain name <nicoll.com> is registered with Tucows, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2008. On August 29, 2008, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the disputed domain name at issue. On August 29, 2008, Tucows, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name. 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 September 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2008. The Response was filed with the Center on September 23, 2008.
The Center appointed John Swinson, Christophe Caron and Neil A. Smith as panelists in this matter on November 14, 2008. 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 due date for the Response was September 22, 2008. The Response was received by the Center (in Geneva, Switzerland) on September 23, 2008, and its receipt was acknowledged subsequently. Email transmission records indicate that the Response was timely sent from the Respondent counsel's location (in Los Angeles, United States of America) on September 22, 2008. In light of this, having regard in particular to paragraph 2.f (iii) of the Rules, the Panel considers the Response as timely filed, and has considered it.
The Complainant produces plastic products for the building industry, such as drains, gutters and pipes. The Complainant is based in Cholet, France, and has distributors in Belgium, Greece, Argentina, Peru, Italy and Uruguay.
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 known as NetIdentity. The business of NetIdentity is to offer “vanity email addresses” to customers so that customers can obtain an email address or website that corresponds to their own first and/or last names. For example, by owing the disputed domain name, NetIdentity can sell the email address of john@nicoll.com, or a website located at “www.john.nicoll.com”, to a person called John Nicoll.
The disputed domain name was registered by Mailbank, Inc. on July 12, 1996.
The website operating from the disputed domain name contains a search engine, and sponsored links to third party websites, under headings such as “Airline Tickets”, “Hotels”, “Employment” and “Car Insurance”. At the top of the webpage, there is a NetIdentity logo and a link reading “Get your own nicoll.com email address”. This link redirects to NetIdentity's website.
The Complainant makes the following contentions:
The Complainant owns several trademarks, including International Registration No. 463574 for NICOLL device (registered from September 7, 1981); French Trademark Registration No. 1172015 for NICOLL device (registered from March 18, 1981); United Kingdom Trademark Registration No. 2170276 for NICOLL device (registered from September 24, 1999); and German Trademark Registration No. 29099 for NICOLL word mark (registered from October 25, 1983). The Complainant has also registered the <nicoll.fr> domain name since 1991.
The disputed domain name is confusingly similar to the Complainant's trademarks and its domain name. The disputed domain name contains the element “NICOLL” which is highly distinctive in relation to the Complainant's activities. The Complainant and its subsidiaries use their trademarks heavily. The presence of the device in the trademarks and the fact that NICOLL is written in calligraphy, are not sufficient to overcome the likelihood of confusion.
The Respondent is not a licensee of the Complainant, and has not been authorised by the Complainant to use its trademarks. Further, the Respondent is not engaged in business under the name “Nicoll”, and is not using the disputed domain name in any legitimate non-commercial or fair use manner.
The Respondent has failed to create an active webpage or demonstrate how it will use the disputed domain name. This type of inactivity or non-use can amount to bad faith. Bad faith can also be demonstrated by the following:
- the domain name consists wholly or partly of the notorious trademark of the Complainant;
- the Respondent refused to sell or transfer the disputed domain name, yet redirected the disputed domain name to the Complainant's website for some time;
- the Respondent has previously been the subject of adverse UDRP decisions.
Previous attempts have been made by both the Complainant and Respondent to negotiate regarding the disputed domain name, and at one stage the disputed domain name was redirected to “www.nicoll.fr” (a website operated by the Complainant). However the Respondent has refused to sell or transfer the disputed domain name to the Complainant.
The Respondent makes the following contentions in response:
The Complainant's trademark registrations do not provide exclusive rights to use of “Nicoll” rather it only provides an exclusive right to use the trademarked term in relation to certain goods and services. The Complainant admits that its trademark rights are limited to certain types of industrial piping. The Respondent does not use the term “Nicoll” for such products. Therefore the Respondent's use of the disputed domain name for a surname-based email service has been legitimate and non-infringing.
The Respondent is a leading ICANN accredited registrar who primarily provides its domain name and related services wholesale to third-parties, for resale to the public. The Respondent is using the disputed domain name for non-infringing business purposes.
The Respondent's predecessor registered the disputed domain name on July 12, 1996. On June 15, 2006, the Respondent acquired Mailbank, Inc. (doing business as NetIdentity). NetIdentity had been carrying on business since 1996 as a provider of personalized email, blogging and web hosting services through a collection of personal surname addresses. NetIdentity registered the majority of its surname domain names in 1996, and has acquired tens of thousands of domain names to sell email and other Internet services to the public. At one stage, NetIdentity held domain name registrations in one top-level domain or another, covering 70% of surnames in the United States of America. The Respondent continues to expand this business by acquiring surname domain names.
For the past 12 years, the disputed domain name has been used as part of a personal email service that allows customers to select an email address which mirrors their last name. So the Respondent uses the disputed domain name to provide email services to customers with the last name “Nicoll”. Use of surnames in domain names is a legitimate and non-infringing use, even where the email service is provided by a third party service provider.
All of NetIdentity's domain names are offered to the public, either via the “www.netidentity.com” website, the website corresponding to the surname (e.g. “www.nicoll.com”, where there is a link to “Get your own nicoll.com email address”), or via one of the Complainant's Internet access and hosting providers. There are multiple customers for each surname domain name, so the disputed domain name is in fact shared by many users.
Because these domain names are shared, NetIdentity has decided not to give the home website to any single customer instead it contains NetIdentity's branding and registration link, followed by a search page served by NetIdentity's business partner (Oversee.net). This search engine results and link pages provide advertising revenue for NetIdentity and therefore the Respondent.
The allegation by the Complainant that the Respondent does not have an active web page is false. The website at the disputed domain name includes a banner that contains the NetIdentity logo and a link that reads “Get your own nicoll.com email address”.
The Complainant's allegation that the Respondent has been subject of previous adverse decisions is made without citation, without regard to the outcome of the cases and based on the mistaken assumption that the Respondent was the registrant in those cases (not the registrar). As none of the cited cases are applicable, it appears the Complainant did not even review these cases. In all UDRP cases in which it has appeared in relation to its role as registrant and operator of NetIdentity, the Respondent has succeeded (apart from two cases). These two cases were appealed under the Policy one was overturned and the other is currently being challenged by litigation.
The Respondent had no knowledge of any communications with the Complainant regarding the disputed domain name. The Respondent has no knowledge of whether the disputed domain name was pointed to “www.nicoll.fr”, and if it did, why this happened. From June 2006, the disputed domain name has only been used in relation to the surname email business. The Respondent's customers are currently using this name at present for their email and each of them has a last name of “Nicoll”.
Prior to notification of this dispute, the Respondent had no knowledge of the Complainant's trademark.
Under paragraph 4(a) of the Policy the Complainant has the burden of proof in respect of the following three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Panel deals with each of these elements in turn.
The first element requires a consideration of two issues: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to the trademark?
The Complainant has a significant trademark portfolio, and has provided sufficient evidence of trademark ownership in the term “Nicoll”. This evidence includes longstanding International Registrations, as well as registrations in France, Germany and the United Kingdom. While the majority of these registrations are for a device mark, the device basically consists of the term “Nicoll” written in calligraphy style against a black background, with no other images. The word “Nicoll” is clearly the dominant element of these marks.
The Complainant's trademark rights in NICOLL, are clearly identical to the disputed domain name (it being well established that the gTLD can be disregarded for the purposes of comparison see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).
The fact that the Complainant's trademark is identical to the disputed domain name is conceded by the Respondent. However the Respondent also states that these registrations only give the Complainant an exclusive right to use Nicoll in relation to certain goods and services (i.e. industrial piping), and as the Respondent is not using Nicoll in this sense, it is not engaging in infringing use.
The Respondent's comments allude to a different test of trademark infringement, and it is not necessary to take this into consideration when determining the first element. (See for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489). However the Respondent's arguments in this regard may assist the Respondent in the two remaining elements, under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.
Accordingly, the Panel finds that the Complainant has successfully established the first element.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
To succeed on this element, a complainant must make out an initial prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
The Complainant alleges the Respondent has no rights or legitimate interests because:
- the Respondent is not using the website operating from the disputed domain name;
- the Respondent is not a licensee of the Complainant, nor is it authorised to use its NICOLL trademarks;
- the Respondent is not engaged in any legitimate non-commercial or fair use of the disputed domain name.
The Panel agrees that the Respondent is not known by the name Nicoll, and has not been licensed or otherwise authorised by the Complainant to use its NICOLL trademarks. The Respondent does not appear to own any trademark or other rights in Nicoll.
The Respondent has admitted that it receives revenue from third party advertising on the website operating from the disputed domain name, therefore the Respondent is clearly making a commercial use of the website.
In the Panel's view, what remains is an assessment of whether the Respondent is making a bona fide offering of goods or services via the website (by offering a vanity email service) in accordance with paragraph 4(c)(i). That is, does the Respondent have a legitimate interest to use the disputed domain name in light of its specific business activity of providing vanity email address services?
The Respondent (or its predecessor) has deliberately registered domain names which mirror surnames in the United States of America. The Respondent rents email addresses and websites from these domains, to members of the public who have a surname that corresponds to the domain (although the Panel doubts that there is any criteria which requires the lessee to have a corresponding surname). The Respondent contends that in effect, many people can share the disputed domain name, so long as each email address is unique.
While the Panel accepts that vanity email addresses could be a legitimate business activity, the Respondent did not provide any information in its Response regarding the popularity of the name Nicoll in the United States of America. However the Respondent did state that it currently had two customers with the surname of “Nicoll” who acquired vanity email or website services from the disputed domain name (Exhibit F of the Response). The Panel is prepared to accept that Nicoll is a surname shared by many people in the United States of America (even though it may not be a well known surname), and that people with the surname Nicoll are currently using the Respondent's vanity service.
A number of previous UDRP proceedings involving the Respondent (or its predecessors Mailbank.com or NetIdentity) have held that a website providing a “vanity email service” may well constitute a legitimate use of a domain name. See for example, 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; Ancien Restaurant Chartier v. Tucows.com Co., WIPO Case No. D2008-0272 or Rusconi Editore S.p.A. v. Net Identity.com Inc. Formerly known as Mailbank.com Inc., WIPO Case No. D2001-0886.
The Panel has considered these decisions, in the application of the rules and law here, and finds it persuasive that the majority of previous panels have found for the Respondent. The Panel notes a different result in Pernod Ricard v Tucows.com Co WIPO Case No. D2008-0789, where the surname/domain name in question (Ricard) was a very famous trademark in France and abroad. In that case, which is on appeal, the panel did not accept that the Respondent's predecessor was unaware of the mark at the time of registration, or that the Respondent was unaware of the mark at the time it purchased the business. The panel also found that the website operating from that domain name contained third party sponsored links which offered competing products to complainant's products. This does not appear to be the case in the present dispute before the Panel.
Although this case is not without its difficulties, the Panel leans towards 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.
In any event, even if the Panel did not come to this conclusion under the second element, it would have made a finding of absence of bad faith and denied the complaint for the reasons set out below.
The Complainant asserts that the Respondent has not created an active web page, however this does not appear to be the case on the present record before the Panel. The website displayed a search facility, and sponsored links which were categorized under various subject headings (for example, “Hotels”, “Car Insurance”, “Games”, “Employment”). The website also contained the link to NetIdentity's website.
The Panel notes from Annex III to the Complaint that at some stage the website was not operational, and it appears at some stage the website was redirecting to the Complainant's “www.nicoll.fr” website. The Respondent claims that it had no knowledge as to whether this occurred, and if so why it occurred.
This evidence causes some difficulties for the Panel, but on balance the Panel finds that the website is currently operational, and is being used for the legitimate business model put forward by the Respondent. The examples of the website provided by the Complainant are not enough to show that the website did not operate for a significant period of time. Further, this evidence is undated, so the Panel cannot ascertain the timeframes during which the website was redirected to the Complainant's website (if at all), and whether this was before or after the date of acquisition by the Respondent. Perhaps more significantly in this case, there is a little evidence before the Panel to establish that the Respondent was or should have been aware of Complainant's trademark rights at the time the disputed domain name was acquired, as discussed further below.
The Panel has considered the Complainant's arguments as to bad faith, but is unable to make a finding of bad faith for the following reasons:
- The NICOLL trademark does not appear to be so well known in the United States at the time the domain name was acquired (July 12, 1996) or at the time the Respondent acquired the NetIdentity business (in 2006), that the Respondent should have been aware of it. While the Complainant undoubtedly has trademark rights in Europe, the Panel does not agree with the Complainant's assertion that its NICOLL trademark is notorious (at least in the United States).
- The Respondent's use of the disputed domain name does not trade on the brand or business of the Complainant. In particular, the sponsored links contained on the website do not relate in any way to industrial piping or plastic goods for the building industry. The closest category that the Panel could find on the website to the goods and services provided by the Complainant is “Houses for Sale”. When this link was followed, it did not offer any goods or services which competed with the Complainant's goods or services. (Contrast Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; and Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448).
- The Respondent only has one adverse UDRP finding against it, which turns on the particular facts of that case. The distinguishing elements of that case are not present here, and in any event, that matter is now the subject of an appeal in litigation. The many other UDRP decisions involving the Respondent and its vanity email service have confirmed that it can be a legitimate business, and there is no compelling evidence before the Panel in this case that the disputed domain name was registered and being used in bad faith. .
For all the foregoing reasons, the Complaint is denied.
John Swinson | |
Christophe Caron | Neil Smith |
Dated: December 3, 2008