National Arbitration Forum




Walls Industries, Inc., Cleburne, Texas v. Co

Claim Number: FA0610000824361



Complainant is Walls Industries, Inc., Cleburne, Texas (“Complainant”), represented by Susan Daly Stearns, of Greenberg Traurig, LLP, 2375 E. Camelback Road, Phoenix, AZ 90404.  Respondent is Co (“Respondent”), represented by Bret A. Fausett, of Cathcart, Collins & Kneafsey, LLP, 444. So. Flower Street, 42nd Floor, Los Angeles, CA 90071.




The domain name at issue is <>, registered with Tucows Inc.



The undersigned certify that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.


Hon. Sir Ian Barker, Sally M. Abel, Houston Putnam Lowry, Chartered Arbitrator, as Panelists.



Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 20, 2006.


On October 23, 2006, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Tucows Inc. and that the Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).


On October 25, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 14, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to by e-mail.


A Response was received on November 17, 2006.  The Response was deficient under ICANN Rule 5(a) as it was received after the Response deadline.  However, in the interests of justice, the Panel decided to consider this Response.


A timely Additional Submission from Complainant was received and determined to be complete on November 22, 2006.


A timely Additional Submission from Respondent was received and determined to be complete on November 27, 2006. 


On December 7, 2006, pursuant to the Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker, QC (Presiding), Sally M. Abel and Houston Putnam Lowry, Chartered Arbitrator, as Panelists.




Complainant requests that the disputed domain name be transferred from Respondent to Complainant.





A. Complainant


The Complainant is a manufacturer of workwear, hunting and outdoor apparel.  It sells its products under the brand name “WALLS” as well as under other brand names.  It has been in business since the late 1930s and has a large reputation for the manufacture of work wear and hunting and outdoor apparel.  It owns numerous trademarks registered in the United States of America, the European Union and in other countries.  Amongst these marks is one for WALLS that was registered in 1991 in the United States Patent & Trade Mark Office (“USPTO”).  The disputed domain name is identical with the Complainant’s registered mark. 


The Respondent has no rights or legitimate interest in the disputed domain name.  It has never been authorised by the Complainant to use its trademark.  The Respondent operates at the website of the disputed domain name a search engine with a tag line “what you need, when you need it.” 


At the Respondent’s search engine, the viewer may find an offer on a competitor’s product other than the Complainant’s product.  For example, by clicking on the “coveralls” category, the viewer will find sites that sell products other than the Complainant’s products. 


The Respondent is using the domain name in bad faith by linking the viewer to the <> website which is, in turn, linked to the domain name site owned by which assists domain name holders to maximize revenue from their parked domains.  It allows the domain name holder to forward the domain directory to an automated landing page with relevant advertisements.  The domain owner is credited with “click fees.”


The Complainant’s site lists a directory of business and product categories and encourages the visitor to go to the sites listed that include categories similar to the Complainant’s products.


The Respondent was aware of the Complainant’s products and marks and has registered the Complainant’s primary mark as a domain name where the website accesses product identical to the Complainant’s products. 


Accordingly, the Respondent’s domain name was registered in bad faith and for the purpose of diverting traffic to its site for the purposes of commercial gain or for selling back to the Complainant at a profit.  The continued use of the disputed domain name is likely to cause confusion among consumers, both as to ownership of the trademark, sponsorship and affiliation of the site.



B. Respondent


The Response was filed in the name of Tucows Limited Inc., which is the parent of the registrant <>.  The Respondent is a publicly-traded company and an ICANN accredited registrar.  It earns most of its revenue from domain name registration services, plus hosted e-mail spam and virus protection.  Unlike other registrars and Internet service providers, it provides its services wholesale to third parties for resale to the public.  It has some 6,000 Internet access and hosting providers.


On June 15, 2006, Tucows acquired Mailbank Inc. trading as NetIdentity.  Since 1996, NetIdentity had been providing personalized e-mail blogging and web-hosting services through a collection of personal surname addresses.  NetIdentity had acquired thousands of surname domain names such as <> and including the disputed domain name <>.  Customers with hosted websites with NetIdentity are given third level domain names corresponding to their own first name and surname, e.g. <>.  Netidentity had this secured over 70% of US surnames as domain names.  An overview of its sponsored servers is provided in the case of the Eye Acad. of Am. Ltd. & Total Vision Care Group PC v. Ashanti Plc Ltd., FA 644205 (Nat. Arb. Forum April 6, 2006).


The disputed domain name was one of many acquired by Tucows Inc. when it acquired NetIdentity.  The name had been owned by NetIdentity since November 2, 1996 and had been used by it continuously for the sale of e-mail and web-hosting services.  Some 30 individuals had used the shared domain name <>.  Currently 14 active customers use the name for e-mail and/or web-hosting services.


For the present purposes, the Respondent acknowledges that the disputed domain name uses the Complainant’s trademark and is identical thereto. 


Caselaw and UDRP decisions support the proposition that a domain name identical to a user’s surname is a legitimate non-infringing use of the name (see Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999).  Numerous UDRP decisions with similar factual backgrounds were resolved in NetIdentity’s favour or that of Mailback. 


There is no registration or use in bad faith and no evidence that Tucows registered the disputed domain name for the purposes of selling back to the Complainant for a profit.  In fact, Tucows Inc. is unwilling to sell the name because it has existing customers to whom it provides e-mail and hosting services.


As to the submission that the Respondent registered the disputed domain name and wanted to divert traffic to its site for the purpose of commercial gain, this allegation ignores the obvious business of NetIdentity.  The copy of the website exhibited to the Complaint was not accurate in that it did not reveal the obvious reference to NetIdentity shown plainly on the website.


The Respondent requests the Panel to make a finding of Reverse Domain Name Hijacking against the Complainant because the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.  The established surname business of NetIdentity and its successor, Tucows, is evidence of the fact the Complainant was wrong to say that the Respondent registered the disputed domain name on September 1, 2006.  The disputed domain name had been in continuous use by NetIdentity for 10 years.  Moreover, the Complainant misrepresented the content of the website by only presenting part of the information and excluding that part of the page that revealed the NetIdentity name and registration information. 


On October 18, 2006, after the initial Complaint was filed, the President and CEO of Tucows, Mr Noss, called counsel for the Complainant to discuss the Complaint and to explain how Tucows had acquired the NetIdentity business of using a surname portfolio of domain names.  He referred counsel to various public material detailing Tucows’s acquisition in the NetIdentity business.  The Respondent has shown that the Complainant knew of the Respondent’s unassailable legitimate interest in the disputed domain name and the clear lack of bad faith but nevertheless, brought the Complaint in bad faith.


There was exhibited to the Response an unsigned declaration by Mr Noss.  The Panel notes that, if parties wish a Panel to give heed to declarations, affidavits, affirmations and the like, it is elementary that such should be signed by the person concerned who states that he/she recognizes that the statement is made with possible sanctions in case it is untrue.

C. The Complainant’s Additional Submissions


Tucows Inc is a not a party to the proceeding and the Response should not be considered properly filed.  The Response includes many statements of the past actions and intent of NetIdentity which could not have been known by Tucows. 


The declaration that accompanied the Response was not signed by Mr Noss and contained a number of self-serving statements.  NetIdentity was not the owner of the domain name at the time the Complaint was filed and the Respondent cannot claim ownership back to 1996.  The Complainant queries the Respondent’s claim that it owns the disputed domain name for the purpose of selling the “vanity” e-mails.  At the time of the initial search, the banner heading containing the NetIdentity logo did not contain any information pertaining to “vanity” e-mail addresses (This statement was confirmed by a signed declaration from Ms. Stearns, counsel for the Complainant). 


The revenue generated by the sales of the vanity e-mail accounts generated by the disputed domain name would be minimal.  Walls is not a predominant surname.  There were only 40,000 hits for “Walls” generated on a Yahoo people search. 


The search engine on the webpage for the disputed domain name immediately directs to a webpage that shows another search engine; the Respondent admits to a partnership with one of the leading providers of “per click” advertising, Domain Parking.


After October 19, 2006, the date of filing of the original Complaint, the Respondent’s webpage did not promote the sale of vanity e-mails, nor did it contain any language pertaining to the sale of vanity emails for Walls, as it now does currently. 


After the conversation referred to in Mr Noss’s declaration, a banner appeared with the NetIdentity logo.  At the time of filing of the Complaint, the website showed a banner with the NetIdentity logo in the tag line but did not reference the sale of vanity e-mails. 


The legal precedents are distinguishable on their facts because the cited cases do not involve “per click” advertising. 


Although use of a domain as a surname to send vanity e-mails has been upheld as a legitimate use in the past, it has been the subject of some concern (see Emilio Puccisrl v, D2000-1786, (WIPO March 27, 2001) where the panel called this a “worrying development”). 


Acquisition of the domain name by the Tucows Inc was to generate revenue through domain parking which is a multi-million dollar business.  The domain owner’s business of selling vanity e-mail addresses was eclipsed by its use of the domain for domain parking and leasing services and this constitutes bad faith.


As to the claim for Reverse Domain Name Hijacking declaration, the Complaint was filed in good faith, the disputed domain name being identical to the Complainant’s registered mark.  At the time of the filing, the Complainant was not aware of the NetIdentity business of sending vanity e-mails.  The declaration of Mr. Noss does not prove the Respondent had an unassailable right or legitimate interest in the disputed domain name.



D.        The Respondent’s Additional Submissions


Tucows Inc. is entitled to respond on behalf of its wholly-owned subsidiary,  The “Black letter” corporate law indicates that Tucows Inc. as successor in title to NetIdentity, is able to speak on matters of history relating to NetIdentity.  In addition, there is a statement from a Mr. Wink Jones, former Chief Operating Officer of NetIdentity, which substantiates the claim made by Tucows Inc. in its initial Response.


One of the reasons for Tucows Inc. acquiring NetIdentity was to offer NetIdentity’s portfolio of surname-based domain names to its large and extending network of service providers who, in turn, serve an estimated 50,000 to 60,000 million end-users worldwide.  These names can be sold with Tucow services and the vanity business will be increased and enhanced because of Tucows’s wider spread of business. 


The submission that Walls is not a common name is irrelevant because the legitimacy of the Respondent’s business does not depend on its size.  Walls is the 697th most popular surname in the United States, according to the 1990 United States census.  NetIdentity, both before and after Tucows acquisition, has always presented the stylised NetIdentity at the top of the page <> and informed viewers of the ability to open an e-mail account under the <> domain name.


As to the argument that the presentation of keyword-triggered links on the www page of the disputed domain name by itself renders the entire use a bad faith use, this is contrary to precedent.  The keyword-driven use of a common word is not necessarily the trademark use of the name, particularly in the current context.  Tucows does not use the Complainant’s mark to identify the source of either its search engine or its advertising products.  Instead, it uses its stylized NetIdentity mark prominently at the top of each landing page to identify the source of its services and the source of the links.  It relies on the name at the second level of domain registration only as a trigger for displaying advertisements.


The Complaint was brought in bad faith because it was made with a knowing and reckless disregard of the likelihood that the Respondent possessed legitimate interests.  These allegations were supplemented by declarations by Mr. Noss, Mr. Wink Jones (unsigned) and Mr. Ross Rada, Director of Retail Services of Tucows Inc.


The Respondent referred to numerous United States Court decisions – none of which was exhibited.  The Failure by a party to produce copies of such decisions is unhelpful when the presiding panelist is not from the United States and has no ready access to these decisions.





1.                  The Complainant has owned, since 1991, a United States registered trademark for the letters WALLS.

2.                  The parent company of the Respondent (Tucows Inc.) acquired the business in June 2006 of NetIdentity that had owned the disputed domain name since November 1996.

3.                  NetIdentity and its successor in title, Tucows Inc., have operated a “vanity” e-mail address service whereby the provider registers domain names of numerous surnames, (including the surname “Walls”) and offers an e-mail address to persons of that name who wish to have their own website.  Currently 14 persons are using the “Walls” website.

4.                  As at the time of filing of the original Complaint, the disputed domain name resolved on a “click-through” basis to advertised products, including products of competitors of the Complainant.  It also gave links to the vanity e-mail business operated by NetIdentity. 

5.                  According to Mr. Noss, CEO of Tucows Inc., he did not know of the existence of the Complainant or its mark at the time he acquired the business of NetIdentity. 





Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”


Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:


(1)               the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

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





Despite the Response being filed by Tucows Inc., the parent company of the Complainant, the correct Respondent is  However, since the Respondent is a wholly-owned subsidiary of Tucows Inc., the Panel accepts the statements made on its behalf by Tucows Inc.



Identical and/or Confusingly Similar


Complainant has established rights in the WALLS mark through registration of the mark with the USPTO.  See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark).  There is no doubt that the disputed domain name is identical to the Complainant’s registered mark.  The Panel therefore finds Policy ¶ 4(a)(i) satisfied.


Rights or Legitimate Interests


In the Panel’s view, the business carried on for 10 years or so by NetIdentity of advertising “vanity sites” to persons of a particular surname was a legitimate business.  This view appears supported by the Avery Dennison decision (supra) where the Court held that vanity e-mail operators did not use the trademarks qua trademarks but for their non-trademark value.  The evidence is that this business was taken over by Tucows Inc. with the aim of enhancing the business through the use of Tucows’s superior contacts and worldwide influence.  Walls may not be a particularly common surname but it is one which nevertheless is used by a sizeable amount of people in the English-speaking world although there are currently only 14 persons of that name using the present vanity e-mail setup; that small number does not detract from the legitimacy of the business.


Accordingly, the Panel finds although the Complainant gave the Respondent no rights in its mark, the Respondent has succeeded in showing that, prior to receiving notice of its use of the Complainant’s mark, it was operating a legitimate business, one which its parent had purchased from NetIdentity, which had operated that business for some 10 years and which had owned the disputed domain name for some 10 years.


Although laches or limitations do not feature in the UDRP, the Panel notes that this disputed domain name had been registered for some 10 years before the Complainant took any action.  This delay can only strengthen the situation of a Respondent.


The Panel finds Complainant has failed to carry its burden under Policy 4(a)(ii).



Registration and Use in Bad Faith


It is not necessary nor is it appropriate for the Panel to go into bad faith on this record.  While the question of “click-through” sites raises issues of possible trademark infringement or unfair competition, it is not for this Panel to decide this issue, particularly in light of its determination that the Complainant has not satisfied the second criterion of the UDRP test.


Reverse Domain Name Hijacking


This does not strike the Panel as a suitable case for the making of a declaration of Reverse Domain Name Hijacking.  The Complainant owned a registered trademark which it had used for many years.  It had a well-known presence in a particular market for producing a particular type of garment.  It did not know about Tucows’s operation or that of NetIdentity of vanity e-mail services.


The Panel considers that, whilst unsuccessful, the Complaint was brought in good faith.  Therefore the Panel refuses to make the declaration sought.






Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.


The Panel also declines to make a declaration of Reverse Domain Name Hijacking.





Hon. Sir Ian Barker (Presiding)

Sally M. Abel

Houston Putnam Lowry

Chartered Arbitrator


Dated: December 21, 2006



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