José de Jesús Velázquez Jiménez v. Mailbank.com, Inc.

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.

7. Decision

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

Presiding Panelist

Kiyoshi Tsuru

Panelist

Neil Smith

Panelist

Dated: June 10, 2001

More cases by this complainant

• José de Jesús Velázquez Jiménez v. Velazquez-Perez, CPA — D2001-0342 · velazquez.net · Complaint denied · 16 May 2001