WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arla Foods amba v. G. La Porta / yoyo.email
Case No. D2014-0855
1. The Parties
The Complainant is Arla Foods amba of Viby J, Denmark, represented by Zacco Denmark A/S, Denmark.
The Respondent is G. La Porta / yoyo.email of Dunsatble, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), self-represented.
2. The Domain Name and Registrar
The disputed domain name <cravendale.email> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History and Rulings
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 22, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on May 22, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 proceeding commenced on June 3, 2014. At the Respondent's request, the due date for Response was extended to June 30, 2014. The Response was filed with the Center on June 30, 2014.
In its Response, the Respondent requested a three-member panel. However, the Respondent failed to include with the submission of its Response the fees required for such an election. On July 1, 2014, the Center notified the Respondent that, for its request for a three-member panel to have effect, it would have to pay the fee, proscribed by paragraph 6(c) of the Rules, for appointment of a three-member panel, or else the Center would need to proceed with the appointment of a single-member panel. On July 7, 2014, the Respondent submitted a supplemental submission but did not address the composition of the panel and did not pay the required fee. That same day, the Center notified the Respondent that it had received the supplemental submission but not the fee for a three member panel, and gave the Respondent another opportunity to indicate its position on the appointment of a three member panel. On July 12, 2014, the Respondent submitted a second supplemental submission but again it did not address the composition of the panel and did not pay the required fee. Consistent with its notices to the Respondent, the Center proceeded to appoint a single member panel, and appointed David H. Bernstein as the sole panelist in this matter on July 21, 2014. The Respondent has not objected to the appointment of a single-member Panel. 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.
Paragraph 10(b) of the Supplemental Rules (as authorized by paragraph 5(b)(i) of the Rules) provides for a 5,000 word limit for the Response. The Response exceeded 6,000 words and its accompanying statement of its principal, Mr. Giovanni Laporta exceeded 2,000 words. In addition to that lengthy Response, the Respondent included more than 150 pages of accompanying annexes. The Respondent's July 7 supplemental submission exceeded 6,000 words in length, and was accompanied by more than 200 additional pages of annexes. The Respondent's July 12 supplemental submission exceeded 7,000 words and was accompanied by annexes that again exceeded 200 pages. Taken together, the Respondent's submissions exceeded 21,000 words and more than 550 pages of annexes.
In light of the extremely voluminous record, the Panel extended the date for decision pursuant to the Rules, paragraph 10(c). Having now reviewed the Respondent's submissions, the Panel finds that the supplemental submissions were largely duplicative of arguments and evidence submitted in the Response, and there was no legitimate reason that any of the new materials in the supplemental submissions could not have been included in the Response. For example, the supplemental submissions did not address new facts or new legal authorities that were unavailable to the Respondent at the time it prepared its Response. For that reason, and because the supplemental submissions added nothing that would have any impact on the decision, the Panel declines to accept the supplemental submissions (although the Panel expressly notes that, even if it had accepted the supplemental submissions in their entirety, as was done in Mejeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email, WIPO Case No. D2014-0730, it would not have changed any aspect of the Panel's decision). Accord: Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0637; Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686; Arla Foods amba v. Giovanni Laporta, Yoyo.email Ltd., WIPO Case No. D2014-0724.
Although the Response itself was longer than permitted by the Supplemental Rules, in the interests of fairness, the Panel has accepted the Response. However, having reviewed the Response, the Panel notes that all of the information therein could easily have been communicated in well under 5,000 words and encourages the Respondent and other respondents in UDRP proceedings to comply with the Rules and Supplemental Rules with respect to the length of their submissions.
4. Factual Background
The Complainant, Arla Foods, is a worldwide producer of milk-based products. The Complainant's wholly-owned subsidiary, Arla Foods Ltd, owns several Community Trademark Registrations for CRAVENDALE, as well as the domain names <cravendale.com>, <cravendale.eu>, and <cravendale.co.uk>. The Complainant uses the trademark CRAVENDALE in connection with the sale of dairy products in, inter alia, the United Kingdom.
The Respondent, Yoyo.email Ltd, is a company incorporated in the United Kingdom. The Respondent offers a service that provides each user with a unique email address, such as "member@yoyo.email." A user can send an email from the Respondent's website using the email address provided by the Respondent. When an email passes through the Respondent's servers, the Respondent creates a record that the email was in fact sent and received. This record is intended to function as a form of proof of sending and delivery for later reference. This service is free to both senders and recipients.
The Respondent, without authorization from the Complainant, registered the domain name <cravendale.email> for the stated purposes of offering the same service to users who may want to send emails to the Complainant. The Respondent explains that the <cravendale.email> domain name will never be publicly seen; rather, it is a technical, behind-the-scenes link which somehow facilitates the ability to send emails through the Yoyo system to the Complainant and to permit Yoyo to track the delivery and receipt of the email. The Respondent does not explain why the use of the Complainant's mark in the domain name is essential for that functionality. The Respondent also suggests that the reason it registered <cravendale.email> is that the Complainant might want to use the Yoyo system for tracking delivery and receipt of emails. The Respondent asserts that it would provide the email addresses to the Complainant at no charge; presumably, those addresses would be something like [name]@cravendale.email, in which case the domain name would no longer be used only behind-the-scenes, but would rather be part of publicly-available email addresses. To the extent this would not be the case, with respect, despite its extraordinary voluminous submissions, the Respondent has failed to explain the nature of his intended service
5. Parties' Contentions
A. Complainant
The Complainant contends that the domain name <cravendale.email> should be transferred to the Complainant because each of the three elements required in paragraph 4(a) of the Policy is present.
First, the Complainant argues, the domain name is identical to its trademark because the domain name consists of the mark CRAVENDALE followed by the generic Top-Level Domain ("gTLD") ".email". According to the Complainant, the top-level suffix in a domain name should be disregarded for the purpose of determining whether the domain name and the trademark are identical or confusingly similar. The Complainant states however that use of the gTLD ".email" in connection with its trademark is particularly likely to confuse Internet users because it will give them the impression that the Complainant is using the domain name for email services. Additionally, the Complainant argues that the domain name will result in confusion among Internet users regarding whether the Complainant is actually associated with the domain name.
Second, the Complainant asserts that the Respondent has no rights or legitimate interests with respect to the domain name. The Complainant states that the Respondent is not using or preparing to use the domain name in connection with a bona fide offering of goods or services since the domain name is not being used for an active website. Additionally, the Complainant states that it has not authorized or licensed the Respondent's use of the trademark, nor is the Respondent commonly known as Cravendale.
Third, the Complainant alleges that the Respondent registered and used <cravendale.email> in bad faith. Because CRAVENDALE is a well-known brand in the United Kingdom, the Respondent, who is located in the United Kingdom, was likely aware of the Complainant's trademark at the time the Respondent registered the domain name. The Complainant asserts that the Respondent registered the domain name in order to profit from the high traffic that already visits the "www.cravendale.com", "www.cravendale.eu", and "www.cravendale.co.uk" websites. The Complainant also asserts that the Respondent registered the domain name in order to sell it to the Complainant at an excessively high price, pointing out that the Respondent has also registered the domain names <arla.email> and <arlafoods.email>1 . The Complainant argues that the Panel is not prevented from finding bad faith simply because the domain name is not an active website and the Respondent has not attempted to sell the domain name to the Complainant. Instead, the Panel should examine all the circumstances of a case in determining whether the Respondent acted in bad faith.
B. Respondent
The Respondent argues that it should retain the disputed domain name and that none of the three elements required in paragraph 4(a) of the Policy is present.
First, the Respondent argues that, because the disputed domain name functions as a "behind the scene technical link," and because it is not seen by Internet users and will never be used as a "URL website address," it cannot be considered identical or confusingly similar to the Complainant's trademark.
Second, the Respondent asserts that it has a right and a legitimate interest in the disputed domain name. The Respondent claims to have made demonstrable preparations to use the domain name for a bona fide offering of goods and services, in accordance with paragraph 4(c)(i) of the Policy. The Respondent states that its planned bona fide activity is to use the domain name as a technical link between the Respondent's server and the recipient, as part of its email courier and hosting service. Yoyo.email Limited was incorporated on March 31, 2014, following which it acquired many domain names, including <cravendale.email>, as soon as they became available. The Respondent registered these domain names for potential future users. Additionally, the Respondent argues that it is making a legitimate fair use of the disputed domain name in accordance with paragraph 4(c)(iii) of the Policy. The Respondent argues that its use of the domain name is a fair use because it is being used only as a technical link. Furthermore, the Respondent explains that it does not intend to mislead users to believe that the Respondent is associated with the Complainant because the value in the service the Respondent provides is that it is a third party, independent from the sender and recipient of the emails. The Respondent also states that the Respondent's proposed business and use of the disputed domain name would not tarnish the trademark. Finally, the Respondent argues that the Respondent is not required to receive permission from the Complainant to make fair use of the disputed domain name.
Third, the Respondent argues that it has not acted in bad faith and that its actions do not fall within paragraphs 4(b)(i)-(iv) of the Policy. The Respondent firmly asserts that it is not a cybersquatter and that it will not use the Complainant's trademark to attract business, nor does it intend to sell, rent, or transfer the disputed domain name, in accordance with paragraph 4(b)(i) of the Policy. The Respondent states that it did not register the disputed domain name "primarily for the purpose of disrupting the business of a competitor," as is prohibited by paragraph 4(b)(iii) of the Policy, explaining that the Complainant is not a competitor. Finally, the Respondent claims that it has not violated paragraph 4(b)(iv) of the Policy because it does not intend to attract business through confusion with the Complainant's trademark, as creating a "likelihood of confusion" would counteract what the Respondent believes is the value in its system, namely its status as a third-party and its independence from the Complainant and other potential email recipients.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to a mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
In order to prevail, the Complainant must show that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. Here, the Complainant clearly has rights in the trademark, as the Complainant owns several Community Trademark Registrations for CRAVENDALE.
The disputed domain name is identical to the Complainant's trademark for purposes of the UDRP. Although top-level domains may be considered when appropriate in assessing identicality or similarity, they may also be disregarded (as has traditionally been the case) for purposes of determining whether the second-level domain is identical or confusingly similar to the trademark at issue.
The Respondent acknowledges that the "cravendale" portion of the disputed domain name is identical to the Complainant's trademark but argues that the domain name nevertheless is not confusingly similar to the trademark because it will operate only as a technical link, behind the scenes, and thus will not be seen by the public and therefore cannot cause confusion. The Respondent's argument misunderstands the purposes of the first element, which is essentially to determine whether the Complainant has standing to challenge the disputed domain name. The Respondent's arguments with respect to how the domain name will be used are more appropriately considered in assessing whether the Respondent has a legitimate interest in the domain name and whether the Respondent registered the domain name in bad faith; they do not undermine the obvious identicality of the domain name and the trademark.
Accordingly, the Complainant has shown that the disputed domain name is identical to the trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Policy sets out three non-exclusive ways in which the Respondent can demonstrate that it has rights or legitimate interests in the disputed domain name, set out in paragraph 4(c) of the Policy:
(i)before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii)the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii)the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent argues that it has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services – namely, the Yoyo email service described above. However, to come within the protections of paragraph 4(c)(i), the use must be bona fide. See, e.g., Universal City Studios v. G.A.B. Enters., WIPO Case No. D2000-0416. The Respondent's registration of the disputed domain name is not bona fide because the Respondent has no right to hijack the Complainant's trademark for its email service and no right to force the Complainant to work with the Respondent should the Complainant want to make use of the domain name now that the Respondent has registered it2 . Moreover, the Respondent has merely asserted but not explained why it is required to use <cravendale.email> as a technical link behind the scenes in order to provide its services; this assertion alone is plainly insufficient to demonstrate rights or legitimate interests under the Policy.
The Respondent also argues that the Complainant gave up its rights to registration of <cravendale.email> when it failed to participate in the sunrise registration period for the ".email" gTLD. That argument is without merit. Although brand owners are free to participate in sunrise registration periods if they so wish, they do not lose their rights to protect their brands if they elect not to register domain names during sunrise periods.
Finally, the Respondent claims that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain and without any interest in misleadingly diverting consumers. In particular, the Respondent claims that its use of the domain name is noncommercial because it will not charge the Complainant or its users for use of the Yoyo email service, and that it has no interest in confusing consumers. Those arguments reflect a misunderstanding of the Policy. That the Respondent does not intend to charge its users does not render its use noncommercial; to the contrary, the Respondent concedes that Yoyo email is intended to be a profitable, commercial enterprise. It is not a legitimate or fair use for the Respondent to register domain names containing the Complainant's and other brand owners' trademarks, without those trademark owners' consent, for the purposes of building a directory of email address to support its commercial venture. Moreover, contrary to the Respondent's assertion, the Panel finds that the registration of this domain name by the Respondent – a fact that is publicly available through WhoIs – risks misleading consumers into believing that the Complainant has somehow endorsed the Yoyo email service and will confuse consumers into believing that any email address containing the disputed domain name is associated with the Complainant.
For the foregoing reasons, the Panel finds that the Respondent does not have rights or legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to show that the Respondent registered and used the disputed domain name in bad faith. Paragraph 4(b) describes four non-exclusive ways in which the Complainant can meet this requirement:
(i) circumstances indicating that the respondent has registered or has 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 the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 the respondent's web site or location or of a product or service on your web site or location.
The Respondent vigorously disputes the Complainant's assertion of bad faith. The Respondent claims to be a legitimate company, that its principal is an upstanding and respected businessman, and that it has a novel idea that will improve email communications and be in the best interests of companies like the Complainant.
All that may be true, but it is not the focus of this inquiry. Even respected, upstanding businesses may sometimes register and use domain names in ways that they may objectively think is in good faith but that a panel may find to be in "bad faith" as that term is used in the Policy. This decision is not a referendum on the Respondent or its principal or on their proposed Yoyo email service; rather, it is an objective assessment of whether the Respondent's registration and use of the disputed domain name meets the Policy's definition of "bad faith" registration and use.
The Panel finds that it does. First, by its own admission (and as shown by the numerous other Uniform Rapid Suspension System (URS) and UDRP actions that have been filed against the Respondent over its registration of other domain names in the ".email" TLD), the Respondent has not only registered the disputed domain name, but has also registered scores of other domain names containing brand names in the ".email" gTLD. The Respondent claims to have invested more than GBP 50,000 in acquiring thousands of domain names and that it is among the world's top registrants of ".email" domain names. By registering all these brand names in the ".email" gTLD, the Respondent is preventing the Complainant and similarly situated trademark owners from reflecting their marks in corresponding ".email" domain names. This pattern of conduct (including thousands of other brands the Respondent appropriated, which the brand owners may have yet to learn of or take action on) satisfies the Policy's definition of bad faith registration and use.
Second, notwithstanding the Respondent's protestations that its conduct cannot be in bad faith because it is planning to provide a free service that will be of value to the Complainant, other brand owners and the public more generally, the fact remains that the Respondent is doing this in furtherance of its commercial enterprise which unfairly piggybacks on the goodwill and reputation of brand owners without their authorization. In terms of the Policy, by registering this domain name, and many others that also contain brand names, in the ".email" gTLD, the Panel finds that the Respondent is attempting to attract Internet users to its website and email service for commercial gain. Further, by having a portfolio of many ".email" domain names that contain brand names, the Respondent is inevitably going to confuse consumers and other companies into believing that the companies whose trademarks are reflected in the Respondent's domain names may have endorsed its Yoyo email service.
Accordingly, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith, as that term is defined in the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <cravendale.email>, be transferred to the Complainant.
David H. Bernstein
Sole Panelist
Date: August 23, 2014
1 Subsequent to the filing of the Complaint, the panel in that case ordered transfer of the <arla.email> and <arlafoods.email> domain names. Arla Foods amba v. Giovanni Laporta, Yoyo.email Ltd., WIPO Case No. D2014-0724.
2 The Respondent's actions here, and in registering thousands of brand owners' marks in the ".email" new gTLD more generally, presents a concerning situation insofar as other brand owners that may feel compelled to pre-empt such risk by registering their brands during the Sunrise launch phase for hundreds of new gTLDS. If however (assuming they are aware of a particular Sunrise period) brand owners choose not to pre-empt cybersquatters, by no means should that be misinterpreted as any kind of forfeiture of their rights. Moreover, simply because a third party such as the Respondent happens to register a domain name because it is available, that should not be misinterpreted as vesting rights in that registrant.