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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Grasso`s Koninklijke Machinefabrieken N.V., currently acting as Royal GEA Grasso Holding N.V. v. Tucows.com Co

Case No. D2009-0115

1. The Parties

The Complainant is Grasso`s Koninklijke Machinefabrieken N.V., currently acting as Royal GEA Grasso Holding N.V., of s-Hertogenbosch, the Netherlands, represented by Novagraaf Nederland B.V., the Netherlands.

The Respondent is Tucows.com Co of Toronto, Canada, represented by Adorno Yoss Alvarado & Smith, United States of America.

2. The Domain Name and Registrar

The disputed domain name <grasso.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 29, 2009 by email and in hardcopy on February 3, 2009. On January 29, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On January 29, 2009, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced February 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response February 24, 2009. The Response was filed with the Center on February 25, 2009.

The Center appointed James A. Barker, Hub J. Harmeling and David E. Sorkin as panelists in this matter on March 27, 2009. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a company incorporated in the Netherlands. The Complainant is in the business of manufacturing compressors and other parts for industrial refrigeration, and is listed in the stock exchange of Amsterdam, the Netherlands. The Complainant is the owner of registered trademarks in various jurisdictions for the word mark GRASSO, including Brazil, Greece, the United Kingdom, South Africa, and Venezuela. The Complainant operates a website at "www.grasso.nl".

The Respondent is a United States corporation, with its principal place of business in Toronto, Canada. The Respondent is an ICANN accredited registrar and earns most of its revenue from domain name registration services plus hosted email, spam and virus protection, blogware, and website building tools, among others.

The disputed domain name was created in June 1996.

The Complainant provides evidence of email correspondence between the parties. In it, a representative of the Complainant, in October 2007, inquired of the Respondent, "At the moment you have register the Grasso.com domain. Is it possible to take over this domain?". The Respondent`s response included the following statements:

"Please note that, as a general rule, the company [the Respondent] does not sell the domain names in its portfolio. […] The domain in question is a common surname, and is part of our NetIdentity portfolio. […] If you are interested, we`d be happy to negotiate a yearly lease of the "www" subdomain, which would give you use of the www. iteration of the domain." There then followed some communications regarding possible lease of the disputed domain name.

In January 2008, the Complainant sent a cease and desist letter to the Respondent, claiming misuse of its trademark.

In February 2008, the Respondent responded with the following statements (among others). "‘Grasso` is a common surname used by over 6,200 people in the United States alone, and grasso.com is part of our NetIdentity portfolio. The NetIdentity Website (www.netidentity.com) provides more information about the business […]. We do not believe that our use of the grasso.com domain name infringes on your client`s trademark registrations in any way."

The Complainant responded to reiterate its objections and foreshadow possible action under the Policy. The Respondent responded again on March 14, 2008, stating that "Our response is identical to our earlier response. Grasso.com is part of our surname portfolio. We use these surname domain names for a legitimate purpose. These names are not for sale or transfer to a third party. Visit www.netidentity.com for more information. Also, please note that over the last few years, we have won every single UDRP complaint that we have responded to regarding our surname portfolio."

At December 16, 2008 and earlier dates (according to evidence in the Complaint), the disputed domain name also reverted to a portal website, but with different links to those more recently contained on the website. On December 16, 2008, at the top of the page, the website included the statement "Get your own grasso.com email address" next to a NetIdentity trademark (NetIdentity being the trading name of Mailbank, Inc. which the Respondent acquired in 2006). The website also contained links with titles such as "Compressors", "Ammonia Compressor Of Grasso", "Job Search", and "Employment", along with other apparently unrelated links.

At the date of this decision, the disputed domain name reverted to a "portal" or "landing" website, featuring a miscellany of links with titles such as "Social Networks", "Listen to Music" and "Rent Movies". The website also included the statement that "This domain name is part of the OpenSRS Personal Names Service and is one of the Tucows owned portfolio of personal domain names. The Personal Names Service concept allows multiple users to share domain names that correspond either with their personal names or their personal interests."

5. Parties` Contentions

A. Complainant

The Complainant claims to have expended considerable time, effort and money in advertising, promoting and offering its goods.

The disputed domain name is identical to the Complainant`s registered mark, or nearly identical. The domain name is used in a way which infringes the Complainant`s interest/trademark.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent intends to take unfair advantage of the Complainant`s trademark and also creates a risk of confusion among the relevant public. The website at the disputed domain name redirects customers to the services of the Complainant`s competitors, and is therefore not a bona fide use.

For somewhat similar reasons, the Complainant claims that the Respondent registered and has used the disputed domain name in bad faith. The Complainant claims that the disputed domain name is being used to offer competing goods or related services, and that it is creating initial interest confusion.

B. Respondent

The Response was filed on February 25, 2009, after the due date of February 24, 2009. As it was filed so shortly after the due date, the Panel elected to consider Respondent`s Response.

The Respondent denies the allegations against it.

The Respondent accepts that the disputed domain name is identical to the Complainant`s mark. However, the Complainant`s mark does not provide it with exclusive rights to the use of the word "Grasso".

The Respondent has used the disputed domain name as part of a personal email service that allows customers to select an email address in the form of their own last name. The Respondent uses the disputed domain name to provide email services to customers with the last name "Grasso". Because NetIdentity`s surname domain names are shared domain names, NetIdentity has chosen not to give the "www" site to any single customer. Instead the "www" page contains the NetIdentity branding and registration link, followed immediately below by a search page which provides advertising revenue for NetIdentity and its parent, the Respondent. The links are generated by an automated technology based on what users search for after arriving at the domain page.

Long-established case law and numerous decisions under the Policy support the proposition that a domain name identical to a user`s surname is a legitimate, non-infringing use of the name. See e.g. Raccords et Plastiques Nicoll v. Tucows.com Co., WIPO Case No. D2008-1322, Ancien Restaurant Chartier v. Tucows.com Co, WIPO Case No. D2008-0272, Markel Corporation. v. Tucows.com Co, WIPO Case No. D2007-1750. One of the leading trademark-domain name cases in the United States (the decision of the United States Court of Appeals for the Ninth Circuit, in Avery Dennison Corp v Sumpton, 189F. 3d 868 (9<sup>th</sup> Cir. 1999)) also establishes the legitimacy of the Respondent`s "vanity email" email services. The Respondent refers to a number of other cases decided under the Policy directly in its, or NetIdentity`s favor. In relation to two cases relied on by the Complainant, one was overturned on appeal by the Ontario Superior Court of Justice; the other is currently challenged by litigation.

In relation to bad faith, the Respondent submits, the Complainant failed to undertake the normal due diligence necessary to understand the Respondent`s business model. The Complainant has also overestimated the fame of its mark. The Respondent had no knowledge of the Complainant`s trademark. The Respondent is making a bona fide use of the disputed domain name. Even if no active webpage were presented at the disputed domain name, the NetIdentity business of the Respondent is primarily an email business, so the presence or absence of a website is immaterial.

6. Discussion and Findings

To succeed under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

These three elements are discussed in turn as follows.

A. Identical or Confusingly Similar

The Complainant provided substantial evidence of its rights in the registered word mark GRASSO. The disputed domain name is relevantly identical to that mark. The Respondent accepts as much.

The Complainant also argues that the disputed domain name creates a risk of confusion for the relevant public. The Panel considers this argument to be relevant to this first element of the Policy (the Complainant argued its relevance in relation to the second). Having found that the mark is relevantly identical to the domain name, it is not strictly necessary for the Panel to also consider whether it is confusingly similar. However, for completeness, the Panel accepts that there is an obvious potential for the disputed domain name to be confusingly similar to the Complainant`s mark. In this case, there is some evidence of actual confusion. The Respondent states that its website automatically generates links, based on what users searched for after arriving at the domain page. If so, a number of users must have searched for products of the Complainant. This is because various links on the website related to the Complainant itself or its products. That included links called e.g. "Compressors", "Ammonia Compressor Of Grasso", and "Grasso Manuals". This suggests that a number of consumers may have arrived at the website looking for the Complainant, and continued to search for the Complainant on the search facility provided on that site. This activity then ‘automatically` generated further links associated with the Complainant or its goods. The possibility of this confusion fortifies the Panel in its finding on the first element of the Policy.

The Respondent makes other arguments under this heading, including that the Complainant`s rights are limited to certain types of goods, and to certain jurisdictions. While they may be relevant to the remaining two elements of the Policy discussed below, they are not however relevant for this first element.

Accordingly, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In essence, the Complainant bases its claim on the nature of the website to which the disputed domain name at one point reverted. As noted above (under "Factual background"), in December 2008 the disputed domain name reverted to a portal website containing various links, including those associated with the Complainant and its products. The Complainant`s claim appears to be that, whatever else the Respondent might do, the nature of that website is such that the Respondent`s activity relating to the domain name cannot be bona fide.

The Respondent says that this website is irrelevant. It claims that it has a legitimate use for the disputed domain name. That use is for email services for those whose last name is "Grasso".

The content of the Respondent`s website however is not, by itself, determinative or irrelevant. It is only one component of all the evidence. All the evidence before the Panel in this case indicates that the Respondent is making a bona fide offering of goods or services, which paragraph 4(c)(i) makes clear is sufficient to establish a right or legitimate interest for the purpose of paragraph 4(a)(ii) of the Policy.

As it has in previous cases, the Respondent has set out the nature of its interest in the disputed domain name, which it has used since 1996 for the purpose of offering email services for those whose last name is "Grasso", and who want to use a third-level email address (e.g. "name@grasso.com"). The Respondent provided evidence of operating this service more generally (in relation to a large number of other surnames) as well as specifically to a number of its customers whose last name is "Grasso". The Panel has also noted that, in past cases concerning similar evidence and arguments by the Respondent (including its now subsidiary, NetIdentity), a clear majority of panels have sided with the Respondent.

The content of the Respondent`s website (at least, as it was evidenced by the Complainant in December 2008), does not outweigh the Respondent`s evidence of its bona fide activity. Contrary to what is claimed in the Complaint, there is little provided evidence that the Respondent intended to take advantage of the Complainant`s mark.

Neither does the Panel accept the Complainant`s argument that the Respondent`s use "cannot be bona fide because it is misleading". As noted above in relation to the first element of the Policy, the Panel accepts that there is the possibility that some consumers may be confused as to whether the disputed domain name is associated with the Complainant. But that possibility contributes to the Panels finding on the first element. It is not directly relevant in this particular case to this second element. Once the Respondent has established a legitimate interest (which the Panel finds below), it does not matter that some Internet users may be confused about the association between the disputed domain name and the Complainant.

The Complainant also argues, not unreasonably, that it is "objectionable" that the previous content of the Respondent`s website contained links to the Complainant`s competitors. The Complainant refers to the decision in Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946. There, the panel stated with reference to a practice of "bait and switch" selling, that "[t]he use of the Complainant`s trademark to offer for sale or to direct customers to the products of the Complainant`s competitors is objectionable and therefore not bona fide". That is undoubtedly correct as a general principle. However, it is not a principle that applies in this case. The important difference in this case is that the Respondent is not using the disputed domain name because of its value as the Complainant`s trademark. The evidence provided by the Respondent, as outlined above, indicates that the Respondent is instead using the disputed domain name because of its association as a surname.

This is not to say that the previous content of the Respondent`s website helps its case. The Panel notes that, more recently, the content of the Respondent`s website is different, and no longer contains links associated with the Complainant or its competitors. The Response gives no explanation for this change. Regardless, the Respondent has on balance sufficiently established that it has rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

There is insufficient provided evidence in this case that the Respondent deliberately sought to take unfair advantage of the Complainant`s trademark.

While the Respondent`s website, as noted above, at one point contained links associated with the Complainant, the Respondent plausibly explains that this was because the links were automatically generated. It appears to the Panel that that explanation may be consistent with the somewhat random and ungrammatical presentation of those links (e.g. including such unrelated terms as "Compressors" and "Job Search"; or ungrammatical or nonsensical phrases such as "Compressors Grasso" and "Ammonia Compressor Of Grasso".)

Otherwise, there is little to suggest that the Respondent (or its predecessor in interest) had the Complainant in mind when it registered and then used the disputed domain name. The Respondent is well-established in a different field of business. There is no apparent relationship between the nature of the Respondent`s business and that of the Complainant. The Complainant has not pointed to any registered marks owned by it in the jurisdiction where the Respondent is based (the United States and Canada) and provided little evidence of having any significant trading presence there. As such, there is little reason to believe that the Respondent`s predecessor or the Respondent was aware of the Complainant when the disputed domain name was registered and used in connection with "vanity" email services.

D. Reverse Domain Name Hijacking

The Panel has considered whether it would be appropriate to make a finding of reverse domain name hijacking against the Complainant. The Rules define "reverse domain name hijacking" as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name."

It might be argued that the Complainant should have known that it could not succeed. In communications between the parties in 2007, the Respondent explained its use for the disputed domain name. When the Complainant suggested it was preparing to make a complaint under the Policy, the Respondent also noted that it had been successful in each case where it had rebutted such allegations against it. The Complainant appears to have made no mention of these cases in its Complaint, even if only to argue why its case should succeed when those others have failed.

However, on balance, the Panel does not make such a finding. Primarily, this is because the content of the Respondent`s website (in December 2008), containing links explicitly referable to the Complainant, gave some basis for the Complainant to be aggrieved. The Respondent also accepted that those links were generated for the purpose of commercial gain. In other cases involving the Respondent, the absence of a relationship between links on the Respondent`s website and the Complainant was taken into account in the Respondent`s favor in finding an absence of bad faith. (See Raccords et Plastiques Nicoll v. Tucows.com Co., supra. Conversely, the presence of such links in this case might have suggested to the Complainant that it had some better chance of success.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: April 10, 2009