Walls Industries, Inc.,
Claim Number: FA0610000824361
PARTIES
Complainant is Walls Industries, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <walls.com>, registered with Tucows Inc.
PANEL
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.
PROCEDURAL HISTORY
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 <walls.com> 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 postmaster@walls.com 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.
RELIEF SOUGHT
Complainant requests that the disputed domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
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
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 <searchportal.information.com> website which is, in turn,
linked to the domain name site owned by Oversee.net 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 <tucows.com.co>.
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
<smith.net> and including the disputed domain name
<walls.com>. Customers with hosted
websites with NetIdentity are given third level domain names corresponding to
their own first name and surname, e.g. <bill.smith.net>. 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 <walls.com>.
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
Mailbank.com.inc, 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, Tucows.com.corp. 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
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
FINDINGS
1.
The
Complainant has owned, since 1991, a
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.
DISCUSSION
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.
Preliminary
Despite the Response being filed by Tucows Inc., the parent company of
the Complainant, the correct Respondent is tucows.com.corp. However, since the Respondent is a
wholly-owned subsidiary of Tucows Inc., the Panel accepts the statements made
on its behalf by Tucows Inc.
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.
DECISION
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
Chartered Arbitrator
Panelists
Dated: December 21, 2006
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