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Mixed Use (Vanity Email and PPC) of Surname Trademarks

Registering surnames for operating a vanity email service is a legitimate business model. The problem comes when the trademark is well-known or famous and respondent also deploys the domain name for an advertising website. Co. is at the center of this kind of dispute. It has succeeded where the use is consistent with the model – Ancien Restaurant Chartier v. Co., D2008-0272 (WIPO May 6, 2008); Markel Corporation. v. Co., D2007-1750 (WIPO June 5, 2008)– and lost when it is inconsistent – Pernod Ricard v Co., D2008-0789 (WIPO August 21, 2008); Aubert France SA v. Co, D2008-1986 (WIPO March 17, 2009) (split decision, ) and most recently Marker Völkl (International) GmbH v. Co., D2012-1461 (WIPO November 14, 2012).

In Marker as in Pernod Ricard, Respondent answered the complaint together with a motion to suspend or terminate the administrative proceedings – Rule 18(a) reads: “In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.” The Panel declined to suspend or terminate the administrative proceedings because the issue was ripe for determination under the UDRP:

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.

Nevertheless, the applicable law is the Policy:

[A]s 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…. Naturally, it is for the Ontario Court to make its determination on the facts and issues before it under applicable law.

Tucows’ attempt to cure the infringement by “purging” the website of commercial advertising links is not a cure. While doing that after receipt of a cease and desist notice may exonerate respondent, the situation is different post hoc the complaint: it “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 model is allowable because (unlike websites) emails carry no commercial content linking the surname to the putative trademark owner. In this respect, trademarks and emails exist on mutually exclusive platforms. However, once the respondent strays from the business model it exposes itself to a charge of cybersquatting.

To qualify for a paragraph 4(c)(i) defense the domain name “must be registered solely because it is a bona fide surname and only for use with vanity email services.” Protection for the model dissolves when “a respondent … builds its domain around a surname that has acquired the protection of a trademark … and uses that domain merely to operate a click-through advertising scheme. Cargill, Incorporated v. RN WebReg c/o Rare Names, Inc., FA0904001260307 (Nat. Arb. Forum June 12, 2009).

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