Tucows just lost a UDRP on the domain name Marker.com to Marker Völkl (International) GmbH of Baar, Switzerland

The domain name Marker.com is being used by Tucows,  Hover service to provide personalized email addresses.

However the one member panel found the fact that since the underlying domain name was also parked that amounted to not legitimate use and bad faith by Tucows

It appears Tucows has already filed a lawsuit in Canada over this complaint and therefore the UDRP decision is really of no effect and didn’t even have to be decided, but is still a very interesting read.

Here are the relevant facts and findings by the one member panel:

The Complainant, Marker Völkl (International) GmbH was founded by Hannes Marker in 1952.

The company manufacturers ski bindings and is one of the market leaders worldwide in that market.

Exhibited to the Complaint is the Wikipedia entry for “Marker (ski bindings)” which provides background to the binding concept pioneered by Hannes Marker and the subsequent development of the Company and its bindings including its expansion into winter sports apparel. F

urther such particulars are provided in extracts from the website “www.markerusa.com” which are also exhibited. Marker’s ski bindings were ranked first for the 2009 / 2010 and 2010 / 2011 seasons by the European Industry Forum, which also provides market share statistics in countries including Austria, Germany, France, Switzerland, Italy, Norway, Finland, Sweden, Canada, the USA, Japan and others. According to that Forum, in 2010 / 2011 Marker had 17% of the worldwide market for ski bindings.

The Complainant is the owner of the following registered trademarks.

 

Country	Reg. No.	Mark	Class(es)	Dates Filed and Registered
Canada	172,507	MARKER	Ski bindings	Filed: September 30, 1968Registered: November 6, 1970
Canada	372,787	MARKER + device	Clothing	Filed: June 14, 1989Registered: August 31, 1990
Canada	434,711	MARKER	Luggage and clothing	Filed: December 24, 1992Registered: October 21, 1994
International Registration*	IR350,312	MARKER	Class 28	Registered: October 17, 1968
International Registration**	IR442,662	MARKER	Classes 18 and 25	Registered: February 1, 1979
Germany	850,820	MARKER	Class 28	Filed: July 9, 1968Registered: October 17, 1968
Germany	924,615	MARKER	Class 25	Filed: May 20, 1970Registered: November 7, 1974
Germany	981,520	MARKER	Classes 18 and 25	Filed: May 29, 1978Registered: February 1, 1979

The German subsidiary of the Complainant, Marker Deutschland GmbH, is the owner of the domain name <marker.de> and its US subsidiary is the owner of the domain name <markerusa.com>. The website “www.markerltd.com” is owned by the US distributor of the Complainant’s MARKER branded ski and outdoor apparel.

The Respondent is the registrant of the disputed domain name which was created on May 29, 1997.

The Respondent operates a personal names service through which it offers email services through a substantial portfolio of domain names that correspond to surnames. Through the disputed domain name, the Respondent sells email services to persons with the last name of “Marker”.

The Respondent cites as a comparable example the email service it sells through the domain name smith.net.

The Respondent explains that this service, termed the “vanity email” business, was founded by Jerry Sumpton and operated as Mailbank, Inc trading as NetIdentity until that business was acquired by the Respondent in 2006.

In 2009 the Respondent transferred the business of Net Identity to a different business name known as Hover.

Through Hover the Respondent offers personalised email and domain registration services to the public worldwide through its collection and ownership of tens of thousands of personal surname domain names.

In that Statement of Claim the Respondent states that it currently has over 54,000 customers using its 43,003 surname domain names for the shared use of end-users.

The Respondent says that it has had customers using the disputed domain name since at least February 2008 and has provided those customers with sub-domain names so as to allow them to have personalised names.

The ‘www’ landing pages, such as marker.com, contain, or in the case of marker.com did contain, a search engine that allows users to input ‘keywords’ which in turn generates a list of sponsored ads from advertisers associated with the ‘keywords’.

“In addition, many of the Plaintiff’s operated websites contain hyper-links that point to sponsored ads from advertisers. The advertising on the Plaintiff’s operated websites are automatically generated by an algorithm. The Plaintiff states and the fact is that this form of advertisement is supplemental to Hover’s core business, namely, of providing personalized email and domain registration services.”

This Plaintiff states that this advertising model is similar to that of Google, Yahoo and other businesses on the Internet. The Plaintiff states that this is an accepted Internet business practice and in no way infringes on the rights of trademark holders.”

The Respondent goes on to say in paragraph 46 of that Statement of Claim that, upon receiving notice of the Complaint in this administrative proceeding, it took steps to suspend such advertising on websites to which the disputed domain name resolved:

“Moreover, once the Plaintiff received notice of the Defendant’s complaint that the use of sponsored advertising on the ‘www’ landing page of marker.com may infringe on its rights, which is not admitted, but expressly denied, the Plaintiff immediately suspended the automated advertising algorithm for <marker.com> to block the placement of any possible infringing advertisements. Further, out of an abundance of caution, the Plaintiff has removed the alleged ‘offending’ advertising off of the <marker.com> website. Accordingly, the Plaintiff states and the fact is that it has at all times acted in good faith.”

The Complaint explains that when the Complainant became aware of the disputed domain name, it contacted BuyDomains.com with a view to purchasing the name. BuyDomains.com was at that time seeking USD 200,000.00 to USD 250,000.00 as the purchase price.

The Complaint exhibits a chain of emails between Mr. Kevin Nguyen of BuyDomains.com and Mr. Geoff Curtis of the Complainant’s US subsidiary in February and March 2012. BuyDomains.com initiated the contact in February 2012 and Mr. Curtis offered USD 4,000.00.

Mr. Nguyen rejected that offer but counter-offered USD 40,000.00 as a possible price that the registrant might accept.

“Here two uses have been made since the Respondent acquired the disputed domain name in 2006. One is the provision of the disputed domain name as part of its vanity email address business. ”

“The Respondent says that it has had customers using that name for that purpose since February 2008; paragraph 4.2.4 above. The other use was to generate click-through revenue as described in paragraphs 4.2.5 to 4.2.6 and 5.A.2 above. As noted in paragraph 4.2.6 above, the Respondent apparently blocked any such further use upon being put on notice of this dispute.”

“In the Panel’s view a registrant of a domain name seeking to generate revenue from a pay-per-click link risks a finding of no rights or legitimate interests under paragraph 4(a)(ii) of the Policy if it makes such use of a domain name without first investigating whether such use may infringe third-party trademark rights. ”

“It is simply not sufficient to say, as the Respondent does in its Statement of Claim in the Ontario proceedings, that it blocked any further use on becoming aware of this dispute.”

“Given the nature of the use (explained in paragraph 5.A.2 above), and the fact that the Respondent by virtue of its business must be taken to be aware of the way in which the Policy has been generally applied to pay-per-click usage – see, paragraphs 2.6 and 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) – this Panel takes the view that such use by the Respondent of the disputed domain name was, on the facts of this case, neither a bona fide nor a fair use of that name. Consequently, the Respondent cannot assert rights or legitimate interests for that use under paragraph 4(c)(i) of the Policy”.

“In this case, doubtless MARKER is also very well-known internationally, but to the smaller and more specialist skiing community. However, as in the present case, the Pernod Ricard respondent immediately took down the pay-per-click website at “www.ricard.com” in response to the dispute. The Panel considers that this decision (from an experienced WIPO UDRP panel) is important in the context of the legitimacy, or otherwise, of trading in domain names for use as vanity email addresses.”

“The Panel has already found that the Respondent’s use of the disputed domain name to derive pay-per-click revenue was neither a bona fide nor a fair use; paragraphs 6.7 and 6.9 above. That use is sufficient to deprive the Respondent of rights or legitimate interests in the domain name. Accordingly, the Panel finds that the Complaint satisfies the requirement of that paragraph of the Policy.”

“After the Respondent acquired the disputed domain name in June 2006 that name was transferred into the Respondent’s name. Paragraph 2 of the Policy provides that the Respondent upon applying for that transfer represented and warranted to ICANN that, inter alia:

“(b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party”.

“The WIPO Overview 2.0 (referred to in paragraph 6.9 above) states in paragraph 3.7 that transfer of a domain name to a third party – as occurred in this case between NetIdentity and the Respondent – amounts to a new registration for the purpose of assessing bad faith. It follows that, for the purpose of assessing bad faith under paragraph 4(a)(iii) of the Policy, the Respondent’s registration and use of the disputed domain name is to be judged on the basis of its compliance with the representation and warranty made under paragraph 2 of the Policy.

“In this case, the disputed domain name was registered before the Policy was adopted in 1999. However, at the date of the transfer of the disputed domain name to the Respondent in 2006 the Policy was in force and the Respondent in registering that transfer made the representation and warranty as to existing and future use required by paragraph 2 of the Policy.

“In the Panel’s view the Respondent’s use of the disputed domain name to generate click-through revenue constitutes a bad faith use under paragraph 4(b)(iv) of the Policy (see paragraphs 5.A.2 and 6.7 to 6.9 above). That use was current at the date the Complaint was filed in this administrative proceeding.

“The question then arises as to whether that bad faith use alone is sufficient for a finding in the Complainant’s favour under paragraph 4(a)(iii) of the Policy, regardless of the issue as to whether or not provision of the disputed domain name to individuals to use as vanity email addresses is also a bad faith use.

“The Panel’s view is that such bad faith use in connection with click-through revenue is sufficient.”

“The Respondent is, clearly, very active in the domain name field and fully familiar with the Policy and the way that it has been applied. It appears that the Respondent’s acquisition and use of the disputed domain name was not only for the purpose of offering vanity email addresses.”

“What is clear to the Panel is that the domain name was registered, and was subsequently used for sponsored advertising which in part took account of the Complainant’s trademarked reputation corresponding to the disputed domain name. In relation to that use of the disputed domain name, the Panel takes the view that the Respondent has not succeeded in rebutting the resulting inference that the Complainant has met the requirements of the third element of the Policy. Accordingly, the Complainant has made out its case under paragraph 4(a)(iii) of the Policy.

“Here, the Panel notes with the Respondent that the Ontario Court is a court of competent jurisdiction being at the location of the Respondent’s address as shown for the registration of the domain name in the Registrar’s WhoIs database at the date this Complaint was filed.”

“In this case, the Response is primarily directed to the Request to Suspend or Terminate and not to answering the Complaint in full. However, the essence of the Respondent’s case on the legitimacy of use of the disputed domain name as a vanity email address is pleaded both in the Request and quite fully in the Statement of Claim in the Ontario case exhibited to the Request. Accordingly, the Panel takes the view that the Respondent’s case on the merits has been quite fully canvassed in its two Submissions and by reference to the case law relied upon as supporting its contention that commercial exploitation of the disputed domain name for use of vanity email addresses is a legitimate use under the Policy notwithstanding that such use is identical or confusingly similar to the Complainant’s registered trademark. ”

“However, this Panel has decided under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, it is not necessary for this Decision to be based on the Respondent’s use of the disputed domain name as a vanity email address.”

“As to use of the disputed domain name to generate click-through revenue, the Respondent’s case is that it has purged any such misuse by suspending the advertising complained of: see paragraph 4.2.6 above. That does not, however, in the Panel’s view alter the nature of the use current at the date of the Complaint in this administrative proceeding. The Panel in the Pernod Ricard case took the same view: see, paragraph 6.16 above.”

“While the Respondent is clearly entitled to bring this dispute before the Ontario Court, in the Panel’s opinion it is nevertheless appropriate for a decision to be made under the Policy. ”

“The thrust of the Respondent’s court case appears to be to obtain support under national law of the registrations it offers in its vanity email program. But, as noted, this Decision is based on what this Panel believes to be the Respondent’s bad faith use of the disputed domain name to generate click-through revenue. With full respect for the jurisdiction of this and any other competent court, this Panel believes that a failure by the Panel to address the merits of the case before it would serve to frustrate the intended effect of the Policy, to which the Respondent as domain name registrant has submitted on its part. Consequently, the Respondent’s request to suspend or terminate this proceeding is denied. Naturally, it is for the Ontario Court to make its determination on the facts and issues before it under applicable law.

”

For all the foregoing reasons, in the exercise of its discretion under paragraph 18(a) of the Rules, without prejudice to the general operation of paragraph 4(k) of the Policy, and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel hereby orders that the disputed domain name <marker.com> be transferred to the Complainant.”