WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L’Oréal SA v. Yoyo.email, Giovanni Laporta

Case No. D2014-1172

1. The Parties

Complainant is L’Oréal SA of Paris, France, represented by Dreyfus & Associés, France.

Respondent is Yoyo.email / Giovanni Laporta of Dunstable, the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <garnier.email> and <kiehls.email> are registered with GoDaddy.com, LLC

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2014. On July 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 7, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 9, 2014. On July 21, 2014, Respondent emailed the Center requesting an extension of time to file the Response which was granted. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2014. The Response was filed with the Center on August 5, 2014.

The Center appointed Sally M. Abel as the sole panelist in this matter on August 21, 2014. 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.

On August 21, 2014 Complainant submitted an unsolicited Supplemental Filing. On September 5, 2014 Respondent also submitted an unsolicited Supplemental Filing. Because these Supplemental Filings were not requested, the Panel, in its discretion, chooses not to consider or admit these filings.

4. Factual Background

Complainant is a French cosmetics company that owns several international brands, including GARNIER and KIEHL’S. The GARNIER brand was founded in 1904, and its hair care products are sold in over 120 countries. The KIEHL’S brand was founded in New York in 1851, and covers skin care and hair care products. Complainant owns numerous GARNIER and KIEHL’S registered trademarks, including in France (Registration No. 97666543 for GARNIER), the United Kingdom (Registration No. UK00001444126 for KIEHL’S), and the European Union (Registration No. 001505767 for KIEHL’S), and elsewhere, for beauty products. Complainant’s earliest registration, still in effect, is a 1961 International Trademark Registration for GARNIER (Registration No. 248215). Complainant and its affiliates also own and use the Internet domain names <garnier.com> and <kiehls.com>.

Respondent registered the disputed domain names <garnier.email> on March 30, 2014, and <kiehls.email> on April 4, 2014, without Complainant’s authorization. Complainant notes that the disputed domain names do not direct to any active websites. Complainant’s trademarks long predate Respondent’s registration of the disputed domain names.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain names <garnier.email> and <kiehls.email> are identical or at least confusingly similar to Complainant’s GARNIER and KIEHL’S marks, that Respondent has no rights or legitimate interest in the disputed domain names, and that Respondent registered and used the disputed domain names in bad faith.

B. Respondent

Respondent makes no argument as to whether the disputed domain names are identical or confusingly similar to Complainant’s marks, though he concedes that “the Complainant appears to have trademark rights.” His argument is focused on an infringement analysis, which is not relevant to this first prong of the UDRP test. Respondent otherwise explains that, under his intended business model, he plans to use the domains to “run a back end email server to capture send/receipt data” not visible to the consumer, and to use the domains as part of an email verification service that would “easily capture and segment the data for verifying the sending and, potentially, receipt of emails sent to particular companies for customers using his service.”

Respondent also contends that he has rights or legitimate interest in the disputed domain names because his registration of over 4,000 “.email” domain names for the “purpose of certifying emails” is legitimate, and he intends to use the disputed domain names for “backend administrative and technical data tracking.” Respondent also contends that he is making a fair use of the disputed domain names because he is not using them in any “consumer or public facing way.” Respondent also notes that he has not attempted to sell the disputed domain names to Complainant, nor is he a competitor of Complainant.

Finally, Respondent contends that he registered the disputed domain names in good faith, has hired attorneys to ensure compliance with trademark law, and has not made any use of the disputed domain names to date as his business model is still being developed. Respondent also contends that “no public use of the brand.email domain names are [sic] anticipated” and that “[b]rand owners such as Complainant herein can use Respondent’s yoyo.email service or not. Even if it does not, consumers can still send emails to Complainant through the yoyo.email system and Respondent will invisible [sic] track that email through its server and be able to verify, if necessary, that consumer’s email was sent to Complainant.”

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain names <garnier.email> and <kiehls.email> are identical to Complainant’s GARNIER and KIEHL’S trademarks. The disputed domain names contain the entirety of Complainant’s marks, and the “.email” gTLD does not distinguish the disputed domain names from the marks. While Respondent contends that his intended business model does not “display the trademark to consumers,” this is not relevant to the question of whether the disputed domain names themselves are identical or confusingly similar to Complainants’ marks.

B. Rights or Legitimate Interests

Respondent has not shown that he is making a non-commercial use of the disputed domain names (Policy, paragraph 4(c)(iii)), as he has admitted that he intends for customers to use his service, who will presumably pay money for such a service. Respondent does not mention anywhere that his business model is intended to be not-for-profit. Nor has Respondent established any other basis under the Rules for claiming rights or legitimate interest in the domains.

Additionally, Respondent has not articulated why it is necessary for him to fully incorporate Complainant’s marks in order to operate his intended service. Prior panels ruling on challenges to other “.email” domains acquired by Respondent have made the same observation. E.g., NVIDIA Corporation v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0770 (<nvidia.email>) (”Respondent has not made clear why it was necessary for it to register the Domain Name incorporating the trademark of Complainant to operate its email courier service.”); Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0637 (<statoil.email>) (“the Respondent does not necessarily have to register the disputed domain name and other domain names consisting of well established trademarks to establish his service. An email address such as "recipient_statoil@yoyo.email" would work just as well as "recipient@statoil.email".)

C. Registered and Used in Bad Faith

Complainant has established that Respondent’s selection of the disputed domain names <garnier.email> and <kiehls.email> almost 53 years after Complainant’s initial trademark registration, and business model designed, whether directly or not, to involve Complainant’s brands and related communications from consumers, constitute bad faith registration and use of the disputed domain names. Respondent intentionally and deliberately targeted Complainant’s trademarks, and its associated goodwill, for commercial gain (Policy, paragraph 4(b)(iv)).

The Panel notes that several other panels have found that Respondent obtained other “.email” domain names in furtherance of his purported “business model” in bad faith. See, e.g.,Government Employees Insurance Company v. G La Porta, yoyo.email / Yoyo.Email Ltd., WIPO Case No. D2014-0805 (<geico.email>) (“the Respondent has registered the Domain Name to promote its services to subscribers who are customers of the Complainant or otherwise have a desire to communicate with the Complainant by email; the Respondent has registered the Domain Name also to seek to convince the Complainant to subscribe to its services; and the success of the Respondent’s system depends in part on subscriptions by companies such as the Complainant.”); Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686 (<sheraton.email> and <sheratonparklane.email>) (“In any case the Respondent admits that it deliberately registered the disputed domain names, as it makes clear that a purpose of owning it was to oblige the Complainant to join its system. It professes to do this as part of a free service, but nonetheless it seeks to extract a benefit from the Complainant by the preemptive registration. The Panel would be reluctant to lend its approval to the registration of a domain name incorporating another party’s trademark for the purpose of being able to establish a system or scheme in relation to which the trademark owner becomes a supplicant. This would set the clock back on the Policy in a way that was never intended.”).

The Panel agrees with the earlier panels; Respondent has not successfully refuted Complainant’s showing of bad faith registration and use.

The Panel also notes that Respondent asked for an extension of time to file the Response, explaining that “[m]y legal advisor’s [sic] need additional time to prepare,” but, after receiving the extension, proceeded to file the Response pro se. While this behavior, alone, does not rise to the level of bad faith, it is troubling to the Panel, and may itself constitute bad faith if repeated in other proceedings.

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 names, <garnier.email> and <kiehls.email>, be transferred to Complainant.

Sally M. Abel
Sole Panelist
Date: September 4, 2014