MAILSUITE, S.L. v Mathias Gilson, Qualtir

WIPO Case No. D2025-2414

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

MAILSUITE, S.L. v. Mathias GILSON, Qualtir

Case No. D2025-2414

1. The Parties

The Complainant is MAILSUITE, S.L., Spain, represented by FOURLAW ABOGADOS, S.L.P., Spain.

The Respondent is Mathias GILSON, Qualtir, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <mailtrack.email> (the “Disputed Domain Name”) is registered with CloudFlare,

Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2025.
On June 18, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On June 20, 2025, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the Disputed Domain Name
which differed from the named Respondent (Mail Track for Gmail™ Inc./ Qualtir S.A./ Gilson GmbH) and
contact information in the Complaint. The Center sent an email communication to the Complainant on June
24, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on

June 24, 2025.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 25, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2025. On July 9, 2025, the Respondent requested the automatic 4- day extension. The new due date for Response was July 19, 2025. The Response was filed with the Center on July 18, 2025.

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The Center appointed Nick J. Gardner as the sole panelist in this matter on August 4, 2025. The Panel finds
that it was properly constituted. 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 Spanish company. It supplies (amongst other things) a software add-on which allows users of Google’s Gmail service to see when an email they have sent has been read by the recipient. The Respondent is an individual resident in Switzerland who through his company (in practice the individual and the company can be considered jointly to be the Respondent) offers a software add-on with the same functionality.

The Complainant owns the following registered trademarks.

United States (“US”) word trademark no. 7,377,862 registered May 7, 2024, for MAILTRACK (the
“MAILTRACK trademark”).

US device mark no. 5,470,257 registered May 15, 2018, and comprising the letters “MAILTRACK” as part of a device accompanied by two tick marks. The registration states “No claim is made to the exclusive right to use the following apart from the mark as shown: ‘MAILTRACK’“.

Spanish word trademark no. M3619105, registered November 22, 2016, for MAILTRACK.IO.

Spanish device mark no. M3097623, registered on February 26, 2014, and comprising the letters:
“MAILTRACK.IO” as part of a device accompanied by a logo of an envelope with a superimposed tick in a
green box.

The Complainant is the owner of the domain name <mailtrack.io> which was created in 2013 and has been used since then to promote the Complainant’s products and services.

The Disputed Domain Name was registered on March 24, 2023, by the Respondent and has been used since then to promote the Respondent’s products and services.

5. Parties’ Contentions

A. Complainant

The Complaint is lengthy and goes into considerable detail. The Panel will only set out here what it considers the key points of relevance.

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name.

The Complainant says that it started its business in 2013 and has been extremely successful and is well known. The Complainant says its MAILTRACK service operates as a Google Chrome Web Store extension and is the leading extension in its category, with the highest number of users and reviews among similar service providers, including the Respondent. It says that a search for “email tracker gmail” in the Chrome Web Store places the Complainant’s extension, “Email Tracker by Mailtrack,” at the top, while the Respondent’s extension appears near the bottom of the results.

The Complainant says its extension profile confirms a user base exceeding 2,000,000, while none of its competitors exceed 300,000 users. It says this substantial difference highlights the strong market position and widespread recognition of the MAILTRACK brand in the email tracking sector.

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In contrast, it says the Respondent’s extension, “Mail Tracker for Gmail” has only about 60,000 users.

The Complainant says that the Respondent registered and uses the Disputed Domain Name in bad faith, seeking to attract users for commercial gain by creating confusion with the Complainant’s trademark.

The Complainant says that it does not only provide email tracking services but also other email-related services and tools, including, without limitation, those related to email marketing campaigns, secure PDF delivery, response template tools or electronic signature of documents. In this context, in February 2024, the Complainant officially grouped all of its email-related tools and launched them as a suite of email productivity tools under the “MAILSUITE” trademark. Within this suite, the Complainant’s well-known email tracking tool continues to operate under its original brand name MAILTRACK.

The Complainant says that the Respondent lacks any legitimate interest. In this regard it says the factual background of this Complaint shares substantial and compelling similarities with the decision in Julie & Jason, Inc. d/b/a The Mah Jongg Maven v. Faye Scher d/b/a Where the Winds Blow,WIPO Case No. D2005-0073, (hereinafter, the “Mah Jongg Case”). In the Mah Jongg Case, the complainant operated an online business selling mah jongg games and accessories under the trademark “The Mah Jongg Maven,” registered in the US. The respondent, who also sold mah jongg-related products online, registered <mahjonggmaven.com>, incorporating the complainant’s trademark, and redirected it to her own competing website. The panel found that using the domain name to promote directly competing goods, without authorization and in a manner likely to cause confusion, was not a bona fide offering of goods or services and did not constitute fair use under the Policy. Similarly, in this case, the Respondent is not an authorized distributor, licensee, or affiliate of the Complainant. The Respondent uses the disputed domain name - a domain name identical to the Complainant’s trademark - to offer email tracking services that are functionally and commercially indistinguishable from those of the Complainant. The Respondent’s website targets the same user base, uses similar marketing language, and leverages the Complainant’s established reputation in email tracking. As in the Mah Jongg Case, this conduct is designed to exploit the goodwill associated with the Complainant’s trademark, to attract, mislead, and divert Internet users seeking the Complainant’s services, and to create a false association or affiliation. Following the reasoning of the panel in the Mah Jongg Case, the Respondent’s use of the disputed domain name is not bona fide, as it is intended to trade on the Complainant’s reputation and divert customers by creating the false impression of association or endorsement. Such conduct is expressly recognized by WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0“) section 2.5.1, as falling outside the scope of legitimate or fair use.

The Complainant says that there have been many instances of confusion in the marketplace where
consumers doing business with the Respondent have believed they were doing business with the
Complainant and provides examples of such confusion.

The Complainant says the Respondent has adopted a similar “double tick” logo to that which it uses which is further evidence of intent to confuse and bad faith.

B. Respondent

The Response is lengthy and goes into considerable detail. The Panel will only set out here what it considers the key points of relevance.

The Respondent says it is a company that develops, maintains and sells software automation platforms and operates as a provider of vision-based navigation systems for autonomous robots. The Respondent was founded in Switzerland in 2019. The Respondent’s parent company is Gilson GmbH. Both the Respondent and its parent company develop SaaS and AI applications, products and services to maximise the efficiency of Google Workspace for users which includes, but is not limited to Google Chrome add-ons. The Respondent says it has had over 15 million installations of its products by customers.

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The Respondent says its business model is to create addons that directly describe their intended purpose for their customers. These include “TasksBoard”, “Mail Merge” and “Sync Calendar”.

On March 2, 2022, the Respondent released an add-on then called “Gmail Track” on Google Workspace.
On February 21, 2022, a few days before the release of the add-on, the Respondent bought the domain
name <gmailtrack.com> to describe how the add-on was intended to be used i.e. as a tracking service for
Gmail. On March 17, 2022, Google requested the Respondent make certain changes to the add-on which
included renaming the add-on addon from “Gmail Track” to “Mail Track for Gmail”. The Respondent
proceeded to make changes in order to comply with Google’s guidelines. On March 21, 2022, the
Respondent designed the original version of its site on Google Site under the name “Mail Track” in
compliance with Google’s guidelines and in accordance with their own business model of naming products to
describe their intended purpose. The Respondent’s adoption of “MAILTRACK” was nearly ten months
before the Complainant’s US trademark for the word MAILTRACK was filed on January 25, 2023. As part of
the changes made by the Respondent, the Respondent acquired the Disputed Domain Name on March 24,
2023, for use in connection with the add-on. The Respondent says it did this without any knowledge of the
Complainant. On June 21, 2023, the Respondent released the Chrome extension “Mail track for Gmail”.

On or around January 11, 2024, the Respondent received a cease-and-desist letter via email regarding the response in reply to the Complainant on January 12, 2024. No further communication was received.

The Respondent says that the Complainant’s product was originally called “Mailtracker & Mail Merge for Gmail™”. The Respondent argues that this is evidence of the Complainant’s original intention to use the terms descriptively as a mail tracking service for Gmail.

The Disputed Domain Name consists of combination of two common dictionary words, the word “mail” and the common term “track”. The Respondent provides what it says is a representative sample of other services using these terms. Furthermore,it says there are also numerous third-party domain names that feature the terms “mail” and “track”. Again what is said to be a representative selection are provided. The Respondent says that the term “Mailtrack” cannot be considered to be exclusive to the Complainant.

The Respondent says it considered that the Disputed Domain Name (including the “.email” extension) was ideal for the Respondent’s business insofar as it directly describes the purpose for which their add-on was to be used, namely a tracking service for email.

The Respondent argues that it is commonly known by the term “mailtrack.email” and demonstrates in this customers under the “mailtrack.email” name.

The Complainant refers to certain claimed similarities of the logo used between the parties. If this is of concern, the Respondent questions why the Complainant did not take action in a court if law. In any event the “double tick” element in the logos is not unique. For example, both Facebook and WhatsApp use them to denote that a message that has been read and such usage is commonplace and not relevant to this complaint.

The Respondent acknowledges that the Complainant has US Trademark registration no. 7,377,862 for MAILTRACK in Classes 9 and 42 filed on January 25, 2023. However, the Respondent observes that the mark is inherently weak as highlighted by the Office Action raised by the US Patent and Trademark Office on the grounds that the trademark application was descriptive of the subject goods and services.

The Respondent says that the three remaining trademarks cited in the Complaint should not be applicable to this matter as they are figurative marks where the design elements overtake any textual elements comprised in the registrations.

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The Respondent maintains that the Complainant knew the mark was descriptive and was almost certainly aware that they would have been unable to secure a word mark trade mark registration in Spain, where the Complainant is based. The Respondent believes that the Complainant then became aware of the Respondent after March 21, 2022 (the date the Respondent started using the terms “Mail Track”) and were concerned. The Respondent believes the Complainant responded by attempting to obtain a word mark registration in a jurisdiction where it thought it could obtain one in the shortest amount of time possible, namely the US.

Whilst the Respondent does not deny that that the Disputed Domain Name is identical or confusingly similar to US Trademark registration no. 7,377,862 for the word MAILTRACK in Classes 9 and 42, it refutes that the Complainant has a global monopoly in the mark MAILTRACK.

The Respondent also invites the Panel to take the approach adopted in ATVTracks.net Property, LLC v. Domains By Proxy, LLC, DomainsByProxy.com / Chad Green, FPNW, WIPO Case No. D2021-1774 - that stated even where a complainant is deemed to have standing to file a UDRP complaint under the first element, “the strength of the complainant’s mark may be considered relevant in evaluating the second and third elements.”).

As set out above, the Respondent’s motivation for the selection and use of the Disputed Domain Name was not to compete unfairly with the Complainant’s business. On the contrary, further to receiving the request from Google as highlighted above, the Respondent intended to take advantage of the descriptive nature of the term “mailtrack” in the domain and in the “.email” extension as they clearly outline to consumers the purpose of the Respondent’s own add-on, a mail tracking product.

Lastly, to the extent that the Complainant has provided some evidence of confusion in online comments of the Complainant’s product, the Respondent argues that this is the inevitable consequence of Complainant’s decision to use a highly descriptive and weak term as its mark.

For the purpose of these proceedings, the Respondent contends it has submitted evidence of i) preparations to use the Disputed Domain Name before notification of these proceedings in relation to its tracking add-on for Gmail, and ii) actual legitimate use of the MAILTRACK mark for the same, a bona fide offering of goods or services. Consequently, it argues this is sufficient to show rights or legitimate interests in a domain under paragraph 4(c) of the Policy.

Furthermore, the Respondent states that it has presented evidence to show it is commonly known by the mark MAILTRACK.EMAIL by its customers.

Next, the Complainant argues that the Respondent is not making a bona fide offering of goods and services or fair use of the Disputed Domain Name, which the Respondent denies. The Complainant asserts that the Respondent is “a direct competitor of the Complainant insofar as the service provided through the disputed domain name is substantially identical to the service offered by the Complainant. Therefore, the

Complainant understands that this undisputed fact alone, should be enough to establish the Complainant´s prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name.” The Complainant also relies on the decision in Julie & Jason, Inc. d/b/a The Mah Jongg Maven v.Faye Scher d/b/a Where the Winds Blow,WIPO Case No. D2005-0073. However, the Respondent argues that this
misstates the law and that this case is substantially different in the facts of the present matter as it concerns
an inherently weak and descriptive mark. The Respondent notes that the panel in the cited case above even
state that “The use of common words or descriptive terms in a mark, of course, limits the mark owner’s right
to exclude others from using the mark or a variance, under trademark law and under the Policy. That may
raise issues, addressed briefly below, under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy”.

The Respondent fervently denies that it any knowledge of the Complainant at the time the Disputed Domain Name was registered. Furthermore, The Complainant has not provided any evidence which might indicate that the Respondent knew or should have known of its trademark registrations, especially in Switzerland, the country of the Respondent.

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The Respondent says that terms in the Disputed Domain Name are also widely used by various organisations throughout the world. The Respondent based in Switzerland confirms it was not aware of the Complainant and did not acquire the Disputed Domain Name to target the Complainant specifically and had no intention to prevent the Complainant from reflecting its mark in a corresponding domain name, to disrupt the business of a competitor, or to intentionally attract the customers of Complainant to Respondent’s site by creating a likelihood of confusion.

Lastly, to the extent that the Complainant believes that the Respondent’s actions, including the alleged instances of actual consumer confusion, might establish a claim of trade mark infringement or unfair competition, as the Complainant appears to suggest in its complaint, any such claim is more appropriately adjudicated in another forum such as a court of law and not through the UDRP, which is limited to clear cases of cybersquatting only. The Panel is referred to AutoNation Holding Corp. v. Rabea Alawneh, WIPO Case No. D2002-0581 which held “that the UDRP Policy applies only to abusive cybersquatting and nothing else”.

The Respondent asks for a finding of reverse domain name hijacking against the Complainant under Rule
15(e). The Complainant is represented by counsel and the Respondent argues it should have been obvious
to them that any claims of alleged trade mark infringement or unfair competition regarding the general use of
the mark MAILTRACK fall strictly outside the remit of the UDRP Policy. The Respondent argues that the

Complainant is attempting to disguise these underlying issues in the form of a UDRP complaint.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i)        that the Disputed Domain Name 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 Disputed Domain Name; and,

(iii)      that Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

WIPO Overview 3.0 at section 1.11. In the light of this finding the Panel does not need to consider further issues relating to the other trademarks relied upon by the Complainant.

The Complainant has established that it is the owner of the MAILTRACK trademark. The Disputed Domain “.email”, is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See

Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Given that the third element under the Policy is not established (see below) the Panel does not need to determine this issue. The Panel would however say it does not consider this case to be the same as Julie & Jason, Inc. d/b/a The Mah Jongg Maven v. Faye Scher d/b/a Where the Winds Blow,WIPO Case No. D2005-0073. That case involved a domain name which included the word “maven” which was distinctive and not descriptive of the products being offered for sale. The same is not the case here (see discussion below).

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C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:

(i)        circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii)       you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii)      you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)      by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Complainant’s case is that (iv) applies. It says that the Respondent must have had the Complainant in mind when it registered the Disputed Domain Name in and it did so in order to divert people from using the Complainant’s famous and successful product to the Respondent’s similar competing product.

The first difficulty the Complainant faces is that the Respondent has established by clear and corroborated evidence that it originally intended to adopt the name GMAILTRACK and acquired the domain name <gmailtrack.com> for its product. Its evidence shows that Google objected to this name and suggested the use of Mail Track for Google. Following this suggestion the Respondent acquired the Disputed Domain Name. This to the Panel’s mind suggests it is more likely than not that the Disputed Domain Name was acquired as a result of Google’s intervention rather than for any reason associated with the Complainant.

The second difficulty with the Complainant’s case is that the term MAILTRACK or MAIL TRACK (or variants such as EMAIL or GMAIL and TRACKER) seem to the Panel to be highly descriptive when used in relation to software which tracks whether an email message has been read. It seems to the Panel that this type of terminology could readily have been derived by many people and the Respondent could have readily

independently chosen its name. The Panel’s opinion in this regard seems to be confirmed by the context of gmail’ in the Chrome Web Store” In fact it appears to be the first two pages of such a search. It lists the following products:

Email tracker by Mailtrack® - this is the Complainant’s product. The associated domain name is third party product. The associated domain name is <mailmeteor.com>.

<mailsuite.com>.
Mailtracker: Email tracker for Gmail - this is a third party product. The associated domain name is
<getmailtracker.com>.
Email Tracker - this is a third party product. The associated domain name is <emailtracker.website>.
Email Tracker by CloudHQ - this is a third party product. The associated domain name is
<free-email-tracker.com>.
Unlimited Email Tracker by Snov.io - this is a third party product. The associated domain name is <snov.io>.
Mail Seen - Unlimited email Tracker for Gmail - this is a third party product. The associated domain name is
<mailseen.com>
Track email opens, Clicks, Location and Device - this is a third party product. The associated domain name
is not shown.

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Mail Tracker for Gmail - this is the Respondent’s product. The associated domain name is name is <getsonar.co>.
<mailtrack.email>.

At the end of page 2 is a “load more” button which suggests further results are available. The Panel infers these are likely to contain more third party usages of “email tracker” or similar terminology.

Given the widespread usage of “email tracker” or broadly similar terms for products from many parties which all appear to be broadly similar in nature the Panel does not think it appropriate to infer the Respondent necessarily had the Complainant in mind when it registered the Disputed Domain Name. The Panel does not consider the filed evidence shows the Complainant or its product are so famous that this is a reasonable inference to draw. To the contrary the evidence shows this is a crowded field with many participants using highly similar terminology to describe products which are functionally identical. The burden of proof on showing registration and use in bad faith is on the Complainant and the Panel does not consider it has discharged that burden given (i) the objection by Google to the Respondent’s original choice of name is what appears to have prompted the Respondent to select the Disputed Domain Name; and (ii) the widespread usage by third parties of terms which are the same or substantially similar to the Disputed Domain Name.

The Panel is not persuaded that the examples of customer confusion that the Complaint has produced alter this analysis. The examples clearly show that confusion is occurring. But that seems to the Panel to be a direct consequence of both parties using the same highly descriptive term - MAILTRACK - for software that tracks email. If you choose to name your product with terminology that describes exactly what the product is or does it is likely that confusion will arise if others do the same. It does not prove that other party is acting in bad faith.

The Panel is also not persuaded that the fact that both parties use a “double tick” logo is relevant. The evidence clearly establishes that this type of logo is in common usage to designate an email that has been read – and that is precisely what the parties respective products deal with.

The Panel notes the Complainant has obtained the MAILTRACK trademark. It appears the USPTO during prosecution of this trademark raised an office action objecting to the trademark as being descriptive. The Panel does not know what steps the Complainant took to overcome that office action. It may or may not be the case that the Respondent’s actions infringe this trademark (or indeed any other of the Complainant’s trademarks relied upon) but that is a matter that would need to be determined by an appropriate court and is not for the present Panel to determine.

Accordingly the Panel concludes the Complainant has failed to discharge its burden of proof and has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled.

D. Reverse Domain Name Hijacking

Reverse Domain Name Hijacking (“RDNH”) is defined under the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.

As set out in the WIPO Overview 3.0, section 4.16, reasons articulated by UDRP panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements - such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (such as registration of the disputed domain name well before the complainant acquired trademark rights; (ii) facts which demonstrate

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that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts
reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed
domain name or readily available public sources such as the WhoIs database; (iii) unreasonably ignoring
established Policy precedent notably as captured in this WIPO Overview - except in limited circumstances
which prima facie justify advancing an alternative legal argument; (iv) the provision of false evidence, or
otherwise attempting to mislead the panel; (v) the provision of intentionally incomplete material evidence -
often clarified by the respondent; (vi) the complainant’s failure to disclose that a case is a UDRP refiling;
(vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the
respondent without a plausible legal basis; (viii) basing a complaint on only the barest of allegations without
any supporting evidence”.

.

On balance the Panel does not consider the Complainant’s conduct warrants a finding of RDNH. It prompted by Google’s intervention has only emerged in the Response and was not communicated to the Complainant in the earlier reply sent to its cease-and-desist letter. Had the Complainant been aware earlier of this fact it might have proceeded differently. Overall the Panel is not persuaded the Complainant’s conduct falls within the above guidelines nor that it deserves the censure of a finding of RDNH
considers the Complainant has attached too much weight to its own apparent success and too little weight to

the descriptiveness of the terms relied upon and their widespread use by many persons for similar services.

7. Decision

For the foregoing reasons, the Complaint is denied.

/Nick J. Gardner/ Nick J. Gardner Sole Panelist

Date: August 18, 2025