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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Raelian Religion and Raelian Religion of France v. Mailbank.com Inc.
Case No. D2000-1210
1. The Parties
Complainants are the International Raelian Religion and Raelian Religion of France, respectively the international association representing members of a religion based on the teachings of a figure named Rael and the French national association. The Complaint does not disclose whether Complainants are formal or informal associations under the relevant national laws.
Respondent is Mailbank.com Inc., a Nevada corporation.
2. Domain Name and Registrar
The domain name at issue is:
The Registrar of the domain name at issue is Melbourne IT.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of the International Raelian Religion and the Raelian Religion of France (the "Complaint") on September 15, 2000. The Center issued a Notice of Deficiency on October 4, 2000. The Complainants resubmitted the Complaint on December 27, 2000. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The formal date of the commencement of this administrative proceeding was December 27, 2000.
The Response was received by the Center in hardcopy on February 19, 2001 and by email on February 20, 2001.
On March 21, 2001, after clearing for potential conflicts, the Center appointed Frederick Abbott and David Maher as Panelists and David H. Bernstein as the Presiding Panelist in this matter.
On March 8, 2001, the Respondent submitted a letter calling the Panel’s attention to a recent decision of another panel involving the same Respondent, Buhl Optical Co. v. Mailbank.com, Inc., Case No. D2000-1277 (WIPO March 1, 2001). That decision bears directly on the issues in this proceeding. Because that decision was issued after Respondent submitted its Reply, and because Respondent promptly brought it to the attention of the Panel without engaging in rebriefing or reargument, the Panel has decided to accept this supplemental submission pursuant to Rules 10 and 12. Pet Warehouse v. Pets.com, Inc., Case No. D2000-0105 (WIPO April 13, 2000), at § 3.
4. Factual Background
Complainants are organizations representing the adherents of the Raelian religion, a religion founded in 1973 by a man using the name Rael.
Respondent is in the business of offering "vanity" email accounts for a yearly fee.
5. Parties’ Contentions
Complainants contend that the domain name at issue is identical to the name of the leader of their religion. Complainants, and other national Raelian organizations, have registered many "rael.TLD" (top-level domain) domain names. Complainants allege that Rael is known worldwide, both as the spiritual leader of a religion that originated in 1973, and as the author of several books translated into 17 languages with sales of several million copies.
Complainants further allege that the domain name was registered and is used in bad faith and for mocking and slanderous purposes. In particular, the Complaint states that the domain name is rented to a person who plagiarizes and ridicules Rael and the Raelian religion. The Complaint also contends that the domain name was registered as a means to make money. Furthermore, the Complaint alleges that the Respondent has knowingly tried to make money by attracting Internet users, thus creating a probability of confusion with Complainants as to source, sponsorship or affiliation. Finally, the Complaint states that Respondent failed to respond to a letter of June 26, 2000, asserting the Complainants’ rights.
In its defense, Respondent argues that Complainants lack any rights in "Rael," and that a search of trademark databases in the United States, France, and the EC shows that neither Complainants nor any related entities appear to have any registered "Rael" marks. Respondent also alleges that Complainants do not use "Rael" as a trademark or service mark, that "rael.com" is not confusingly similar to Complainants’ full names, and that "Rael" is not protected because it is a pseudonym adopted by the founder of the Raelian Religion. Respondent further argues that Rael is both a given name and a surname for tens of thousands of people around the world, primarily in Spanish- and French-speaking countries.
Respondent alleges that, well before Complainant notified Respondent of its interest in the domain name, Respondent had been using the domain name as part of its stable of domain names used for "vanity" email, which can reflect either a name (e.g., "firstname.lastname@example.org" for John Smith) or an affiliation (e.g., "email@example.com" for a lawyer). In fact, Respondent claims that it owns domain names corresponding to 70% of the most common surnames in English-speaking cultures, including "Rael," and offers them as vanity addresses to anyone willing to pay registration and annual fees. According to Respondent, it currently has 16 users of "rael.com" vanity addresses, as well as approximately 10 others who formerly used the service. As a result, Respondent contends that it has a legitimate interest in the domain name. In the alternative, Respondent argues that the use of a common surname is a fair use under the Policy.
Respondent contends that no confusion is likely, particularly given that the Complainants have other websites using other TLDs and that an ordinary Internet user would not expect a religion to use the ".com" TLD.
As for Complainants’ allegations of defamation, Respondent maintains that the rael.com site does not contain any damaging references to the Raelian Religion, and that it was not even aware of the Complainants or their religion prior to the initiation of this proceeding.
Respondent maintains that there is no evidence of bad faith registration or use. Respondent contends it had never heard of Complainants before this proceeding, never offered to lease or sell the domain name to them, and never knowingly permitted a competitor to use it. Respondent also argues that no other circumstances evidencing bad faith exist. In particular, Respondent claims that it does not use the domain name for the purpose of attracting users in a way that implies endorsement or sponsorship by the Raelian Religion, and that its only use of the website at rael.com is to solicit business for vanity email customers.
Respondent also alleges that this proceeding constitutes attempted reverse domain name hijacking. Respondent claims that this proceeding was initiated without any prior notice to or contact with Respondent, that if Complainants had investigated the facts, they would have become aware that Respondent is a legitimate business, and that they could have asked Respondents to remove any allegedly defamatory content. Moreover, Respondent states that, after the initial Complaint was rejected by the Center, it provided Complainants with information sufficient to dispel any reasonable belief that an ICANN proceeding was justified, but that Complainants nevertheless proceeded with the filing of an amended complaint.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a Complainant must prove each of the following:
(1) that 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) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the Respondent has registered and used the domain name in bad faith.
A. The Domain Name is Identical or Confusingly Similar to Complainants’ Trademark
Respondent raises significant questions as to the trademark interests of a religious organization in the name of its founder. Those questions are complicated by the fact that the founder, whose name is Rael, appears to be alive but is not a Complainant in this proceeding. We need not resolve these issues in this case because, even if Complainants could establish trademark rights in "Rael," the Complaint fails to satisfy the second and third elements of the Policy.
B. Legitimate Interest in the Domain Name
Respondent has provided evidence that it is in the business of registering common surnames for use with vanity email addresses and that "Rael" is one such surname. There is evidence that many different people use the name "Rael" and therefore may have an interest in using "rael.com" as a vanity address. Complainants have not shown that "Rael" is so singularly associated with Complainants and their religion that use of the surname alone is likely to confuse Internet users.
The question of the legitimacy of vanity email services has already been addressed under the laws of the United States, which is the home country for the Respondent. The holding in the leading case, Avery Dennison v. Sumpton, 189 F.3d 868 (9th Circular 1999), effectively disposes of the argument, under U.S. law, that a vanity email service is per se not legitimate. We note that this issue has also been raised in a number of UDRP proceedings, e.g., Buhl Optical Co., supra (reaching same result with respect to surname "Buhl"), and we believe that our decision is consistent with the previous decisions that a vanity email service like Respondent’s can be a legitimate use.
Even if some users of Respondent’s service had used the rael.com address to maintain web pages critical of the Raelian Religion (as the user "firstname.lastname@example.org" allegedly did, though the only evidence in the record is that this user maintained a separate web page that did not use the rael.com domain name), and even if such critical sites were found not to constitute fair use, see Policy ¶ 4(c)(iii), Respondent would still have a legitimate interest in its use, which is separate from the uses of its subscribers. We need not decide whether a vanity email service targeted at members of the Raelian Religion (or their critics) could similarly constitute a legitimate interest, because there is absolutely no evidence that Respondent targets its service in that way. Respondent has credibly shown that its business model involves registering many surnames for use as surnames, and that it does not rely on the trademark status, if any, of "rael," in its business model. Cf. Experience Hendrix, L.L.C. v. Denny Hammerton and The Jimi Hendrix Fan Club, Case No. D2000-0364 (WIPO, August 15, 2000) (vanity email service exploiting "Jimi Hendrix" mark for its fame was not a legitimate use).
Because we find that there is nothing in this record to establish any illegitimacy in Respondent’s use of "Rael" in connection with its vanity email service, we conclude that Complainant has failed to establish that Respondent has no rights or legitimate interest in "rael.com."
The Panel specifically declines to rely on the fact that Complainant owns a number of other "rael.TLD" registrations as evidence of Respondent’s legitimate use of "rael.com." A use is not legitimate merely because alternatives remain for a mark holder and, in other circumstances, the fact that a mark owner defensively uses another TLD should not insulate a cybersquatter from losing a .com domain name.
C. Bad Faith
For similar reasons, the Panel finds that Respondent did not register and use the domain name in bad faith.
6. Reverse Domain Name Hijacking
Respondent has requested a finding of reverse domain name hijacking. Rule 1 defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." See also Rule 15(e).
Complainants, who are francophone entities, may have been unclear about the relationship between "email@example.com," whose website was critical of Complainants, and Respondent, whose business is conducted entirely in English. Although Complainant did not come close to satisfying the standard for transfer of a domain name, we do not believe, on this record, that Complainants knowingly or maliciously pursued this action knowing that it was futile. Accordingly, we do not believe it necessary to declare that this Complaint was brought in bad faith as an attempt at reverse domain name hijacking.
For all of the foregoing reasons, the Panel decides that Complainants have failed to meet their burden of proof under paragraph four of the Policy. The Panel therefore denies the Complainants’ request that the domain name be transferred from Respondent to Complainants.
David H. Bernstein
Dated: April 4, 2001