Vanity Email Services Survive WIPO Review

When it comes to domain name disputes, not all advertising holding pages necessarily point to bad faith, and special considerations apply when the trade mark in question is also a name. So confirmed a WIPO panel recently in Raccords et Plastiques Nicoll v Tucows.com Co. (WIPO Case No. D2008 – 1322). Although the decision broke no new ground, it is a useful reminder that vanity email services may be lurking behind common-surname domain names, and that such services can prove a respondent’s legitimate interest and defeat a UDRP claim. 

Plastic Passion

The complainant, Raccords et Plastique Nicoll, was a French manufacturer of plastic products for the building industry. Its NICOLL trade mark was registered in France, the UK and a number of other countries, dating from as early as 1981.

The respondent, Tucows, was an ISP who had acquired the business of a US-based vanity email service including the subject domain name, nicoll.com, in 2006. The domain name had been registered in 1996 and had been used for 12 years to provide email services to individuals with the surname “Nicolls.” The respondent’s predecessor in title had owned tens of thousands of domain names for similar purposes and at one stage owned domain name registrations covering 70% of surnames in the US.

Because the disputed domain name was used to provide email services to more than one person, the respondent had kept the homepage for its own use. The homepage was used to host a variety of advertising links.

Action in Vain

The complainant brought an administrative complaint under the UDRP, claiming that nicoll.com was identical to its NICOLL trade mark and arguing that the domain name had been registered and used in bad faith.

The complainant pointed to the domain name’s use for a mere advertising holding page and to evidence that, for a time, the disputed domain name had re-directed to the complainant’s own website at
www.nicoll.fr. 

The respondent claimed to have no knowledge of the claimed re-direction, and asserted that its only use of the domain name had been to host email for persons with the surname Nicolls and to host its own advertising homepage. It argued that providing vanity email services of the type offered was a legitimate business activity and pointed to its success in a number of UDRP proceedings, which recognised the legitimacy of such activities.

The panel hesitated, but ultimately agreed with Tucows. The panel was satisfied that there was identity of trade marks and domain name, but other panels had already recognised that the provision of vanity email services could constitute a right or legitimate interest under a domain name. In light of that, the panel was prepared to accept as a matter of principle that such activities could confer a legitimate interest.

Although it was not strictly necessary for the panel to consider bad faith given its finding on legitimate interest, the panel nonetheless noted that the homepage hosted links to third-party advertising. However, there was no evidence that the advertising was for any competitors of the complainant or even within the same or a related field to that of the complainant.

There was, moreover, no evidence that the complainant’s NICOLL trade mark in the plastics field was so well-known in the US at the time the disputed domain name was originally registered in 1996 that the original registrant should have known about the complainant’s mark.

What gave the panel pause was the evidence that the disputed domain name had linked to the complainant’s own website for a time. However, taking into account that the current use of the website appeared to accord with the respondent’s account, and noting the absence of evidence on the timeframe for the apparent re-direction to the complainant’s site, the panel was prepared to accept that, on the balance of probabilities, the domain name had not actually been registered in bad faith.

The panel therefore dismissed the complaint.

Comment

Avid watchers of domain name decisions will already have noted panelists’ recognition of vanity email services as a legitimate interest under domain names that constitute personal names as well as brands.

This decision could easily have gone the other way, however, in light of the evidence of re-direction to the complainant’s site. Nonetheless, the current legitimacy of the respondent’s activities, together with the lack of clear evidence as to the timeframe for the alleged re-direction, tipped the scales in the respondent’s favour.

The decision emphasises the importance of assessing each case on its own facts. Most vanity email services are likely to be regarded as legitimate, but the outcome may be different if plausible evidence can be adduced to call into question whether the domain name was registered with that purpose in mind. The respondent itself had lost one other domain name proceeding involving RICARD (Pernod Ricard v Tucows.com Co., WIPO Case No. D2008-0789) due to the substantial fame of the PERNOD RICARD spirit brand and the respondent’s use of the linked homepage to host advertising links to competitors of the complainant.

Where a respondent uses a disputed domain name for a vanity email service, therefore, a complainant might still win an action if the facts are right—although in the absence of clear reputation and/or evidence of registration and use in bad faith, the climb will be steep.

The decision is also an important reminder of the need to take the nature of a trade mark and domain name into account when considering a possible complaint. Brand owners can be blinded to any other significance for their brand other than the trade mark one, but in fact where a trade mark is also a name the prospects are greater that a registrant may be able to prove a right or legitimate interest.

Preliminary investigations and letters before action can help flush out such potential defences, a helpful outcome given that UDRP actions typically allow each party only a single opportunity to file submissions. In appropriate cases, they may avoid unpleasant surprises and ensure that would-be complainants do not take action, and incur costs, in vain.