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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
José de Jesús Velázquez Jiménez v. Mailbank.com Inc.
Case No. D2001-0341
1. The Parties
The Complainant is José de Jesús Velázquez Jiménez, an individual with an address at Santiago de Querétaro, Qro., Mexico.
The Respondent is Mailbank.com Inc., a Nevada corporation having its principal place of business in Reno, Nevada, USA.
2. The Domain Name and Registrar
The domain name at issue is <velazquez.com>. The domain name registrar is Melbourne IT Ltd.
3. Procedural History
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") which was received by email on March 6, 2001, and in hard copy on March 12, 2001.
On March 14, 2001, the Center transmitted a request for registrar verification to Melbourne IT Ltd. in connection with this case.
On March 14, 2001, Melbourne IT Ltd. sent via email to the Center a verification response confirming that the Respondent is the registrant and that the administrative and technical contact is JK Hullet of Reno, Nevada.
On March 15, 2001, the Center notified the Complainant that its Complaint was deficient.
On March 16, 2001, the Center received by e-mail Complainant’s amendment to the Complaint, resolving the deficiency.
On March 21, 2001, 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").
On March 21, 2001, the Center formally commenced this proceeding and notified Respondent that its response would be due by April 9, 2001. The notification was sent to the Respondent by courier and by email. The email appears to have been transferred without receipt of any "undeliverable" notice.
The Respondent filed its Response with the Center after the due date by email on April 10, 2001 and by hard copy on April 11, 2001. The Panel accepts the Respondent’s submission in this case as part of the record.
Respondent elected a three-member Panel. On May 22, 2001, after clearing for potential conflicts, the Center appointed Thomas H. Webster as the Presiding Panelist, Kiyoshi Tsuru and Neil Smith as Panelists and set June 5, 2001 as the deadline for issuance of a decision.
4. Procedural and Factual Background
Complainants’ Factual Statements
The following facts are taken from the Complaint and are generally accepted as true except as otherwise noted below.
"Our registered trade mark is VELAZQUEZ®, and the respective title of property recognize as the first date of use August 8th, 1992 as we proved before de IMPI (Mexican Institute for the industrial Property).
Since then, we provide human resources services (as trainning (sic), recruitment, payroll administration, outsourcing among others) to the industry. Actually we are located in Queretaro City, Mex. And thanks to the industrial developement (sic) in this area, we are working for american, french, german, spanish, italian and of course, mexican companies..."
Respondent’s Factual Statements
The following statements are taken from the Respondent’s Reply and Exhibit C thereto. The factual elements are generally accepted as true in the circumstances of this case.
"Respondent is a Nevada corporation with principal offices in Reno, Nevada, and operations or facilities in several other states. Respondent Mailbank’s corporate predecessor, who first registered the domain name,…sold [the business] in early 1999 to a group of venture capital investors in the United States, who have operated it as a separate, successor company since then."
"Mailbank was founded… for the specific purpose of operating what has come to be known as a "vanity e-mail service," which they call a "shared domain e-mail service" because of the fact that it permits more than one family or one business to share a specific domain name. At the present time, it has approximately 100,000 registered, worldwide customers for whom it provides this shared domain e-mail service. For this purpose, it registered and paid for registering and operating in excess of 15,000 surname and affiliation group domain names under various top-level domains, including .com, .org, and .net, depending on what was then available at the time of registration…
The vast majority of these domain names are intentionally statistically selected surnames that were found to be the most common surnames in English language speaking countries…
No trademark search was made then…since at that time (1996) there was no concept that trademark owners might have some superior right to Internet addresses in the form of domains, such that no one else could use a domain name if an unrelated trademark existed…
Mailbank first registered velazquez.com with NSI on June 3, 1996. It was re-registered in June 2000 with Melbourne IT since Melbourne IT’s annual registration fees are much lower. The domain has been in continuing use by Mailbank since the original registration date as a shared email or web site address." (Exhibit C)
"In April 2000 Complainant opened vanity email accounts with Respondent Mailbank for use by seven parties connected with its business. It has continued to use these accounts, which are still active…at the time it opened those accounts, it had two Mexican registered trademarks…
Later in 2000, Complainant sought and recovered the "velazquez.com.mx" domain name but still continued to use Respondent’s services."
5. Parties Contentions
Complainant and Respondent make the following allegations. The factual elements of Respondent’s allegations are generally accepted as true in the circumstances of this case in light of its supporting documents. The legal issues are discussed in the next section of this decision.
A. Similarity of the Domain Name and Trademark.
In respect of the domain name being identical or confusingly similar to a trademark or service mark in which the Complainant has rights, Complainant alleges that:
"The domain name is identical to a trademark or service mark in which I have rights. VELAZQUEZ as we prove with our title of property (Annex 1 & 2)."
The Respondent concedes that:
"the word "Velazquez," being a common surname, is both part of Complainant’s mixed logo trademark of Complainant and the "velazquez" portion of the domain name of Respondent, "velazquez.com." It is not, however, the same or substantially the same, since Complainant’s mark is not a word mark, but a mixed word and artistic mark consisting of the word and horizontal bars. It is a logo."
The Respondent contends that:
"it could [not] have been registered in Mexico, Canada or the United States if it were merely a word mark since it is a generic surname, the registration of which is prohibited by law unless it has acquired significant secondary meaning. The Complainant does not even seek to argue that its mark is famous or distinctive enough to have a secondary meaning. For this reason, it is not, in my judgment, similar to the domain name in the trademark sense." (Exhibit C)
B. Respondent’s Rights and Legitimate Interests.
Complainant contends that the Respondent has no rights or legitimate interests in the domain name on the basis of the following elements:
"The respondent have (sic) no rights or legitimate interests in respect of the domain name that is the subject of this Complaint, because they don’t use velazquez.com for commercial purposes. By the other hand, they don’t have a trade mark previously registered as we do." (emphasis not added)
The Respondent argues that:
"current case and ICANN decisional law does not hold that mere registration and use of a domain name is automatically a trademark use – to the contrary, it is not a trademark use in and of itself…
Jose de Jesus Velazquez Jimenez may have a trademark on the logo including the surname Velazquez, but that does not give him the exclusive right to preclude others from using the same surname as a personal name, as a business name, or an otherwise descriptive use.
Complainant did not even file for or register its trademark claim on the very common surname "Velazquez" until 1999, three years after Respondent’s registration of the domain name…Complainant cannot seek to retroactively apply unknown trademark rights to third party domain name registration and use, if for no other reason than that in 1996 no one in the world had any idea that domain names would later be sold or leased to or between trademark owners. It would never have occurred to anyone in 1996 that registration of a domain name from Canada might years later be considered trademark infringement of an unregistered mark in Mexico."
Furthermore, Respondent alleges that:
"Registering a trademark or commercial use of the name is not a prerequisite for registering a domain name. Thousands of individuals hold domain names for personal use and without owning any trademarks on the word…Complainant has absolutely no standing to make the allegations of exclusive rights to use of the name "Velazquez" on the Internet as a domain name under the ICANN rules."
C. Bad Faith Registration and Use.
Complainant claims that the domain name was registered and used in bad faith by the Respondent and relies on the following elements:
"The domain name should be considered as having been registered and used in bad faith, because the respondant bought several thousand domains and are using them for renting and sublet, including velazquez.com, attempting against our trade mark. As a matter of fact, actually we have need to rent 7 subdomains with Mailbank for e-mail purposes for a yearly fee of 4.95 dlls. besides 19.95 dlls. as one-time set-up fee each subdomain. It means $174.30 dlls for the first year. As prove we atach (sic) the FAQ web page of Mailbank (Annex 7)
Mailbank (sic) attempt against the Conservation principle for the Internet domain names stated in the RFC 2050 which establish:
1) "Conservation: fair distribution of globally unique Internet address space according to the operational needs of the end-users and Internet Service Providers operating networks using this address space. Prevention of stockpiling in order to maximize the lifetime of the Internet address space"" (emphasis not added)
Respondent disputes this allegation of the Complainant:
"At the time that "velazquez.com" was registered by the company, the company personnel had no idea that anyone had an exclusive trademark on a surname or word so generic as Velazquez, particularly since it was an unregistered mark apparently in use in a city in Mexico, while Mailbank was in Canada. It did not register the name for the purpose of withholding it from use by the trademark owner or for the purpose of attempting to sell it to any trademark owner of whom it was totally unaware. It registered the name and uses it simply because it is a common surname." (Exhibit C)
"Respondent is not a domain name warehouser or stockpiler as the Complaint suggests. To the contrary, Respondent is a vanity email service and Internet Service Provider that operates using these shared addresses for nearly 100,000 users. Even Complainant has found the services that Respondent provides to be useful which is presumably why the business has signed up for seven different email accounts. See Exhibit G…The whole point of a shared domain system is so that more than one person or organization can share use of it for email or web purposes. Currently, there are 17 users using this domain, including the seven addresses that Complainant has registered…
Respondent can[not] be said to be acting in bad faith merely because its use of the domain name precludes Complainant from using the domain name for its business. The same argument could be said of anyone who uses a domain name, since ordinarily only one person or business could use a domain name."
Respondent also alleges that this proceeding constitutes attempted reverse domain name hijacking.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) 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;
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
A. Similarity of the Domain Name and Trademark
Complainant has established its rights in the trademark "VELAZQUEZ (and device)". Complainant filed two trademark (word and device) applications in June 1999 that were registered in November and December 1999 in Mexico. The Panel sees no reasons why these trademark registrations are not valid under Mexican law as Mexican Intellectual Property Law apparently does not prohibit the registration of a surname as a trademark which covers specific goods or services.
The fact that a trademark consists in whole or part of a common surname in a particular country or countries does not mean that the holder of the trademark does not have rights in that trademark or that a domain name cannot be confusingly similar to it. However, the fact that a trademark is a common surname may well be relevant in determining whether, as in this case, the Respondent is making legitimate use of the domain name or whether there has been bad faith registration or use of the domain name.
This Panel finds that < velazquez.com> is identical to the trademark "VELAZQUEZ (and device)" for said Domain Name consists in exactly the same verbal elements as Complainant’s protected trademark "VELAZQUEZ (and device)". Only the graphic elements of such trademark (eight parallel bars arranged in an uneven vertical pattern), which anyway cannot be reproduced in a domain name, were left out (see: EFG Bank European Financial Group SA v. Jacob Foundation, Case No. D2000-0036 WIPO, March 22, 2000). Moreover, the use of lower case letter format and the addition of the gTLD ".com" are not significant in determining whether the domain name is identical or confusingly similar to the mark (see CBS Broadcasting Inc. v. Worldwide Webs, Inc., Case No. D2000-0834 WIPO, September 4,2000).
Therefore, the Complainant has satisfied the first requirement.
B. Respondent’s Rights and Legitimate Interests.
Respondent has demonstrated that it is in the business of registering common surnames for use with vanity email addresses and that "Velazquez" is such a surname. Exhibit E provides evidence that many different people use the name "Velazquez" and therefore may have an interest in using "velazquez.com" as a vanity address. Complainant has failed to show that "Velazquez" is so singularly associated with Complainant’s human resources consulting business 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 Cir. 1999), effectively disposes of the argument, under U.S. law, that a vanity email service is per se not legitimate. The United States Court held that Respondent’s predecessor was not using the domain names "avery.net" and "dennison.net" as a trademark and was not attempting to capitalize on the trademark value of the terms. Rather, Respondent’s predecessor used words that happen to be trademarks for their non-trademark value.
The Panel notes that this issue has also been raised in a number of ICANN proceedings involving the Respondent. Those decisions are authority that a vanity email service like Respondent’s can be a legitimate use; see International Raelian Religion and Raelian Religion of France v. Mailbank.com Inc, Case No. D2000-1210 (WIPO, April 4, 2001) (Respondent’s use of "Rael" in connection with its vanity email service is legitimate use); Buhl Optical Co v. Mailbank.com, Inc., Case No. D2000-1277 (WIPO, March 1, 2001) (reaching same result with respect to surname "Buhl"); Bosco Products, Inc. v. Bosco E-Mail Service and Mailbank.com, NAF Case No. FA94828.
In the present case, the Panel finds the rationale of the prior decisions persuasive. Because "Velazquez" is a bona fide surname, the Panel finds that Respondent is not using the domain name in its trademark sense, but rather is using <velazquez.com> in a legitimate business enterprise.
Therefore, the Panel finds that the Respondent has rights and legitimate interests in respect of the domain name at issue.
C. Bad Faith Registration and Use.
Given that the complainant has failed to satisfy the second requirement of the policy, there is no need to analyze the issue of bad faith and the panel declines to do so.
D. 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).
Although Complainant did not satisfy the standard for transfer of a domain name, we do not believe, on this record, we can determine whether or not the Complainant knowingly or maliciously pursued this action knowing that it was futile. Accordingly, we believe that this Complaint was not brought in bad faith as an attempt at reverse domain name hijacking.
For the foregoing reasons, the Panel decides that Complainant has failed to meet its burden of proof under paragraph 4(a) of the Policy. The Panel therefore holds that the domain name <velazquez.com> shall remain registered to the Respondent.
Thomas H. Webster
Dated: June 10, 2001