WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Masco Corporation v. Giovanni Laporta
Case No. D2015-0468
1. The Parties
Complainant is Masco Corporation of Taylor, Michigan, United States of America (“United States” or “US”), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
Respondent is Giovanni Laporta of Traverse City, Michigan, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <masco.email> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2015. On March 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2015, 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 proceeding commenced on March 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2015. On March 24, 2015, the Center received an email communication from Respondent. The Response was filed with the Center on April 12, 2015.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on April 21, 2015. 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
Complainant is the owner of registrations for the trademark MASCO on the registers of various trademark offices, including the United States Patent and Trademark Office (USPTO), registration number 1,437,933, registration dated April 28, 1987, in international class (IC) 11, covering “faucets and replacement parts therefor”, and; the Office of Harmonization in the Internal Market (OHIM), registration number 003496858, registration dated July 4, 2007, in ICs 2, 6, 11, 17, 19, 20, 35, 37, 40, and 42, covering various goods and services relating, inter alia, to building materials and construction. Complainant alleges substantial additional registrations in various countries, and provides evidence with respect to the United Kingdom, Canada and China.
Complainant is a publicly listed corporation on the New York Stock Exchange (since 1969), and is ranked 323 on the Fortune 500 list and 1638 on the Forbes Global 2000 Leading Companies. Complainant is based in the United States, but does business in a substantial number of countries. Complainant operates 63 manufacturing facilities and employs approximately 32,000 employees. Complainant operates a commercial Internet website at “www.masco.com”. It appears that a substantial part of Complainant’s goods and services are offered under trademarks or “brands” other than MASCO, for example, Delta faucets, Behr paints and Milgard windows and doors. Complainant has not provided a breakdown of corporate expenditures and sales with respect to individual brands under which its products and services are sold.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the creation date for the record of registration is March 26, 2014, and the disputed domain name was registered to Respondent since at least July 21, 2014.
As of the filing of the Complaint, the disputed domain name was not associated with an active website.1
Respondent asserts that, while there are various aspects to his business model, with reference to a beta test site at “www.yoyo.email/beta”,2 “the one that is relevant to the Complaint is to use the subject domain as a backend, non-public email server in order to route emails for the storing of Metadata which will allow yoyo.email [the name of Respondent’s business] to certified delivery and potentially receipt…”. Respondent further indicates that he is “providing certification of e-mail services, which will be free for both the sender and receiver of e-mails… By using the disputed domain names as a backend, non-public email server in order to route emails for the storing of Metadata, there is no public use of the domain name, no diversion of website traffic from the trademark holder and no intent to profit related to the use or trafficking of the subject domain name.” On August 1, 2014, Respondent submitted an application for registration of “YOYO.EMAIL” as a Community Trade Mark.3 Respondent is the named inventor with respect to a number of patents generally relating to door and window closures (see, e.g., UK Patent GB2475638, granted June 7, 2011, for “Locking system for a window or door”, naming GIOVANNI MARIA LAPORTA as inventor).4
Respondent has provided evidence that he rejected an offer for USD 1,000 to purchase a “.email” domain name unrelated to the present dispute on July 14, 2014, stating “Selling domain names is not the reason why domain names were registered, so I respectfully have to decline your offer”.
Respondent is presently operating a beta website requiring password. The accessible content includes various design features and photographs with a “letter” theme, and referring to the sending and receiving of “yo messages” and the “yo cloud”, referring to “the world’s only certified email service”, and using the phrase “Signed, Sealed & Delivered”. The demonstration site is accompanied by music and voiceover.
Respondent has submitted a Declaratory Judgment dated November 5, 2014, in Yoyo.Email, LLC v. Playinnovation, Ltd., DC Arizona, No. CV-14-01922-PHX-JJT, as well as the Complaint for Declaratory Judgment filed August 29, 2014, in the same matter. In the request for declaratory judgment, Respondent’s business entity (Yoyo.Email) sought to block implementation by the registrar of an adverse decision by a panelist under the Uniform Rapid Suspension System (URS) with respect to Yoyo.Email’s registration of the domain name <playinnovation.email>. The Declaratory Judgment recited a number of determinations regarding Yoyo.Email’s good faith intent to register, use and traffic the domain name at issue, finding that its intended use of the subject domain name was not “trademark use”, and that its intended use is not a violation of the Anti-Cybersquatting Consumer Protection Act (ACPA), the Internet Corporation for Assigned Names and Numbers’ (ICANN) URS and UDRP policies or other law. The Declaratory Judgment ordered the removal of the suspension of the subject domain name, and included a number of conditions applicable to Yoyo.Email, namely:
“L. Plaintiff [Yoyo.Email] shall include a disclaimer in the metadata for all email transmitted through <playinnovation.email> which states, ‘The domain name <playinnovation.email> is part of an independent, certified email service that is not affiliated with or approved by Playinnovation Ltd. of London, England [http://www.playinnovation.co.uk/].’
M. Plaintiff’s use of <playinnovation.email> shall be limited to:
a. Use as a non-public, back-end email server used to link multiple email servers.
b. Use to track, record, document, or verify email communication.
c. Use only by an individual or entity whose corporate or trade
name is or incorporates ‘playinnovation.’”
Complainant has indicated that Respondent has been respondent in at least 24 previous proceedings under the Policy and URS system, and that in each of those cases (according to Complainant, but see below) he has been found to have engaged in abusive domain name registration and use. Complainant specifically refers to: Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686; Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0637; Mejeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email, WIPO Case No. D2014-0770; NVIDIA Corporation v. Giovanni Laporta, Yoyo.email Ltd., WIPO Case No. D2014-1172; The Royal Bank of Scotland Group plc, National Westminster Bank plc, and Coutts & Co. v. Domain Manager / yoyo.email / Giovanni Laporta, WIPO Case No. D2014-0825; Arla Foods amba v. G. La Porta / yoyo.email, WIPO Case No. D2014-0855; O2 Holdings Limited v Yoyo.Email/Giovanni Laporta, WIPO Case No. D2014-1399; Maplin Electronics Limted v Yoyo.Email, WIPO Case No. D2014-1346; Accor, SoLuxury HMC v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1650; MySQL AB v. Giovanni Laporta / Yoyo.Email, NAF Claim No. FA1412001595391; AA Brand Management Limited v. Giovanni Laporta, Yoyo.Email Ltd, WIPO Case No. D2014-1444.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant argues that it has rights in the trademark MASCO, that the second level of the disputed domain name is identical to its trademark, and that from the standpoint of the Policy it is unnecessary to assess the generic Top-Level Domain (gTLD) because it has no significant legal bearing unless it forms part of the trademark. In this regard Complainant states “Hence the extension ‘.COM’ can be disregarded [sic]”.5 Complainant contends that the disputed domain name is identical or confusingly similar to its trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) the MASCO trademark is a fanciful and strong mark; (2) Respondent has not been commissioned to manage Complainant’s email communications, has not been licensed to use Complainant’s mark for receipt and transmission of email communications; (3) has never received approval, express or implied, to use its mark in or as part of a domain name; (4) Complainant has had no dealings with Respondent and does not endorse its services; (5) at least 24 prior UDRP and URS cases have come to a consensus view that “the use of third-party trademarks in connection with Respondent certified email service cannot be legitimate” on grounds that (i) Respondent has not justified his registration of approximately 4,000 domain names the majority of which relate to third-party trademarks, (ii) Respondent’s mere indication of intent with respect to use of the disputed domain name is “insufficient especially when such intended use requires the unauthorized use of Complainant’s famous trademarks”; (iii) Respondent intends to benefit from the underlying value of Complainant’s trademarks; (iv) Respondent’s business model could not exist but for third-party trademarks, and he is unable to explain the connection between the domain names and a web service with the goal of making money from active users and advertising, and that he intends to oblige Complainant to join his system; (v) Respondent is intending to impose a unilateral obligation on Complainant to use or lose its privileged access to communication intended for it so use; (6) because the disputed domain name has been alleged not to be used in a manner visible to the public, Respondent is not avoiding consumer confusion by using third-party trademarks; (7) even if the use by Respondent of the disputed domain name does not amount to infringement under a particular national law, this is not the test under the Policy because it prevents the owner of the trademark from registering in the “.email” gTLD; (8) the proffered justification by analogy to a domain name or telephone directory does not hold because Respondent could create a directory of domain names without owning them; (9) it is not clear why Respondent’s service would address a product rather than a company; (10) Respondent misunderstands the Policy because his service could never be legitimate without the support of the organizations to which his email service is directed; (11) Complainant does not understand how Respondent’s service could work without the participation of the third-party trademark owners, including Complainant; (12) Respondent cannot in fact guarantee or certify arrival of an email at a particular destination because of the manner in which the Internet operates, and; (13) there is no evidence that Respondent has been commonly known by the disputed domain name.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because: (1) it has been so found at least 24 prior decisions under the UDRP and URS; (2) Respondent invested approximately USD 82,000 in acquiring scores of domain names in full knowledge they related to famous marks “in a deliberate scheme to coerce these companies into joining its system and further preventing them from reflecting their marks in the ‘.email’ space”; (3) Respondent’s actions can be analogized to a “land grab”; (4) because there is no mechanism for trademark owners to opt out of Respondent’s email system, Respondent is attempting to impose a unilateral obligation on Complainant which already operates its own system for communicating with the public, much of which involves confidential communication; (5) there are virtually endless ways in which Respondent could exploit the 4,000 domain names at his disposal; (6) Respondent could operate his system for a fraudulent purpose; (7) Complainant has the right to control how its marks are used; (8) Respondent is continually changing his business plans and is unreliable; (9) Respondent is attempting to attract Internet users to his website and email service for commercial gain by using “.email” domain names that incorporate brand names, and; (10) despite assertions to the contrary, Respondent has suggested that domain names he is using will be accessible to the public, and that he intends to commercially benefit from their use.
According to Complainant, the Declaratory Judgment involving <playinnovation.email> was the consequence of a settlement between the parties, does not relate to matters central to the requirements of the Policy, and relates to parties different than those in this case.
The address on Respondent’s record of registration for the disputed domain name is the address of his legal counsel, not his address in the United Kingdom.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
By email dated March 24, 2015 to Complainant, copied to the Center, Respondent advised that he does not recognize the authority of the UDRP process because UDRP panelists are inherently biased, unlike US federal court judges. Respondent advised Complainant that a decision against him in this proceeding (which he assumes will be the result) will be challenged in federal court in Arizona, and Complainant may be subject to paying Respondent’s legal fees, plus statutory damages. Respondent invited Complainant to withdraw its Complaint.
The Response does not challenge Complainant’s assertion of rights in its MASCO trademark, and refers to Complainant as “holders of a matching trademark”.
Respondent argues first, in summary:
1. There has been no use of the disputed domain name to date, and the intended use is not a trademark use or public use; there has been no trafficking of the domain.
2. Respondent responded to ICANN’s expressed goal of the new gTLD program to expand consumer choice on the Internet, and has invested considerable time and money developing a lawful business under the “.email” gTLD. Respondent provides a link to his beta site, including password.
3. Respondent has been grossly and deliberately misinterpreted in some prior cases. Respondent does not intend to oblige trademark holders to join its service.
4. The mere purchase of domain names incorporating trademarks of third parties does not in itself evidence bad faith intent or bad faith use. The UDRP is clear on this point. Yet, this is the manner in which some prior panels have interpreted the UDRP.
5. Owners of matching trademarks were entitled to secure corresponding domain names during the Sunrise registration period, following which they went on general sale to the public. If ICANN did not intend that the public be able to purchase these domain names, it would have (but did not) indicate that their purchase was prohibited. Complainant could have, but did not, purchased the disputed domain name during the Sunrise period.
6. Prior UDRP panelists have engaged in speculation, unsupported by evidence, and repeated what prior examiners have said.
7. The suggestion by the panel in MySQL AB v. Giovanni Laporta / Yoyo.Email, supra that Respondent’s system would not work merely identified the problems that Respondent was proposing to remedy by controlling its own server to server email traffic, “a technical solution which for some reason bypasses the [panelist’s] mind”.
8. Yoyo is primarily a service working on behalf of the consumer/sender, not the receiver. “Yo-yo is the neutral party that sits between sender and receiver and works on behalf of the sender as proof the email has been sent, much like regular mail courier services.” Respondent draws an analogy to mail and parcel courier services, and asks whether it would be logical to require them to have the permission of the addressees of mail and parcels before transmitting them. Also, purchasing variations of domain names and deciding which to keep and use is not bad faith.
9 Quoting Respondent:
“For the sake of completeness. The initial idea is to launch the service as a closed software service which means that users can only send emails via the Respondents software, so initially the service works as a back end service where all emails are directed and documented internally by name. At this point domain names are not seen by the general public, however domain names may be used to forward emails to the respective company (recipient). At this point there can be no confusion as to source and origin as the company (recipient) cannot be confused to who they are. Further, there is absolutely no need for Recipients (the Complainant) to ‘sign up’ for the Respondent service.
Further, the service at some point in the future may be extended so that consumers can send emails via any email client software, the intention is to expand consumer choice. However as long as users sent emails using the Respondents domain names which pass through its owns email servers Yoyo could still provide an email certified service when emails are then sent from other software email clients.”
10. Previous panels under the Policy have been willing to rely on decisions of other panelists, but have refused to consider the district court order because it addresses other parties, showing a contradiction in legal standards. Quoting Respondent: “Whatever prior [panels] may think of the Declaratory Judgment obtained in the United States District Court of Arizona, one thing is known for sure, the court did not have to agree to enter the Judgment. We urge the Examiner in this case to read the court order as it was not ‘just’ a consent order or ‘just’ a stipulation between parties.” … “While there are various aspects to the Yoyo services business model, as seen on its beta test site … the one that is relevant to this Complaint is to use the subject domain as a backend, non-public email server in order to route emails for the storing of Metadata which will allow yoyo.email to certify delivery and potentially receipt” … “The Complainant has provided no evidence to contradict the business model or domain use described in the Judgement.”
11. The Policy was designed to protect domain name registrants as well as trademark owners, something which previous panelists have failed to give equal weight.
12. Respondent does not intend to use trademarks registered in domain names as trademarks as required by law to establish commercial use, but instead words that happen to be trademarks “for their non-trademark value”.
13. Respondent refers to cases in which relief was not granted to the complainant or in which a panelist dissented: eHarmony, Inc. v. yoyo.email et al, (NAF Claim No. FA1408001575592) (denying URS claim); dissent by panelist in URS Appeal involving Footlocker vs. yoyo.email (NAF Claim No. FA1406001565344); successful appeal under URS for the disputed domain name <stuartweitzman.email> (Stuart Weitzman IP, LLC v. yoyo.email et al.,NAF Claim No. FA1404001554808); Dissent by panelist in appeal of Deutsche Lufthansa v. yoyo.email, NAF Claim No. FA1404001552833.
14. Respondent contends he has rights or legitimate interests in the disputed domain name because: (1) he has made demonstrable preparations to use the disputed domain name in connection with a bona fide offer of services, specifically to provide certification of email services (by using the disputed domain names as a backend, non-public email server in order to route emails for the storing of Metadata); (2) Respondent has provided an affidavit from his trademark attorney that his business model and use did not violate trademark law or the UDRP6 ; (3) “by providing free use of its domains and limiting the use of the domain name to route and capture email meta-data [Respondent] is making a legitimate fair use of its <.email> domain name portfolio”, with no intent to profit from Complainant or to deceive or attract Internet users by intentionally creating confusion; (4) Respondent has applied for a Community Trade Mark, and is a respected inventor and businessman with 22 granted patents; (5) Respondent’s proposed service can only work if he is independent from Complainant.
15. Respondent alleges that he has not registered and used the disputed domain name in bad faith because: (1) Respondent has never intended to profit from using the disputed domain name as a trademark, and has not profited from advertising connected to the use of a trademark-related web service; (2) Respondent has registered many generic domain names, and Respondent is not intending to defraud the public by creating a false impression; (3) Respondent declined an offer to sell one of his other disputed domain names, and; (4) Respondent did not register the disputed domain name to disrupt the business of Complainant.
16. The fact that UDRP panelists disagree with Respondent’s business model does not establish that it is illegitimate. Because a majority of UDRP panelists are commercial trademark lawyers, the UDRP is biased against innocent purchasers. This represents clear abuse of discretion and misuse of powers. This is inconsistent with paragraph 10(b) of the Rules that provides that parties are treated with equality and given a fair opportunity to present their case. The burden of proof is on Complainant. Mere registration of a domain name incorporating a trademark is not bad faith. If that was ICANN’s intent, it could have provided for that. Speculative harm is not enough for a finding of bad faith.
Respondent requests the Panel to reject the Complaint.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent, and Respondent filed a detailed Response. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by Complainant to merit a finding that Respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has provided substantial evidence of rights in the trademark MASCO in the United States, European Union and other jurisdictions, including through registration (see Factual Background, supra). Respondent has not challenged Complainant’s rights in its trademark, and has directly and indirectly acknowledged that Complainant is owner of the term “masco” as a trademark. The Panel determines that Complainant has rights in the trademark MASCO.
The second level portion of the disputed domain name, “masco”, is identical to Complainant’s trademark. Complainant has not made an argument regarding the significance of the “.email” gTLD, instead referring to the potential significance of the gTLD “.com” from the standpoint of the Policy. Respondent has not argued that the disputed domain name is not identical or confusingly similar to the disputed domain name. From the standpoint of Internet user association of the disputed domain name, which combines the distinctive trademark of Complainant (i.e. a coined term) with the common reference for a form of Internet-based communication (i.e. email), the Panel considers that Internet users would be likely to assume that Complainant was associated with the disputed domain name. The Panel, in the absence of argument to the contrary, determines that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel determines that Complainant has established rights in the trademark MASCO, including in the United States and the European Union, and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.” (Policy, paragraph 4(c)).
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has made two principal arguments regarding the basis for establishing his rights or legitimate interests in the disputed domain name. The first is that he has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services, and the second is that he is or will be making fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Respondent has not addressed the issue of prior notice of a dispute in paragraph 4(c)(i) of the Policy. Because Respondent knowingly registered the trademark of a third party, it might be presumed that Respondent had constructive notice of a dispute when he registered the disputed domain name. In any case, establishing rights or legitimate interests under paragraph 4(c)(i) of the Policy requires that the demonstrable preparations to use be for a “bona fide” offering of services. For present purposes, this raises a question that is essentially the same as that as raised under paragraph 4(c)(iii), namely whether Respondent’s intended use of Complainant’s trademark constitutes “fair use”. Since Respondent has knowingly registered the trademark of Complainant in the disputed domain name, his use may be bona fide if it qualifies as some form of fair use, regardless of whether he undertook preparations prior to notice of a dispute.
While paragraph 4(c)(iii) of the Policy refers to “making” legitimate noncommercial or fair use, this Panel has previously recognized that there are circumstances in which domain name registrants may not be making immediate “use”, but nevertheless may have adequately demonstrated fair use intent. A requirement of immediate fair use in certain circumstances may place an untenable burden on domain name registrants. (See, e.g., Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000; Pfizer Inc v. Van Robichaux, WIPO Case No. D2003-0399; Southwest Airlines Co. v. Cattitude a/k/a LJ Gehman, WIPO Case No. D2005-0410). An intended future bona fide or fair use nevertheless must be sufficiently substantiated, not merely a statement or speculation. North Atlantic Operating Company, Inc. and National Tobacco Company, L.P. v. The Safe Cig, WIPO Case No. D2013-0841.
Respondent registered the disputed domain name on or about March 26, 2014.7 Since that time he has defended a substantial number of his other registrations of third-party trademarks in the “.email” gTLD. In two URS proceedings he has succeeded in persuading the panel or Appeals body that the “clear and convincing” standard by which URS proceedings are judged was not satisfied by the complainant, and that “a question exists as to legitimate fair use, a question likewise exists as to bad faith registration and use” (Stuart Weitzman IP, LLC v. yoyo.email et al., Appeal Determination, supra). In the Stuart Weitzman IP, LLC v. yoyo.email et al. proceeding, the Appeal panel considered the fact that there was no record evidence of Respondent’s intent to monetize the free email service as distinguishing the facts from a prior adverse decision involving Respondent in Deutsche Lufthansa AG v. yoyo.email et al., supra.
A determination by a URS panel or Appeal panel is made using different standards than a proceeding under the Policy. A URS determination based on failure to meet the “clear and convincing” standard can be analogized to a rejection by a civil court of a preliminary injunction or summary judgment request where relief may be denied if substantial questions are raised. A URS body is not making a determination regarding which party would prevail in a dispute settlement proceeding under the UDRP, but rather whether sufficient question is raised such that it should not be resolved by an abbreviated summary proceeding. It remains for a UDRP panel such as this one to subject the merits to a more deliberate assessment. In other words, by surviving a URS complaint, Respondent has demonstrated that he has raised a question(s) that should not be summarily dismissed; not that it has been answered.
As Respondent recognizes, a substantial number of UDRP panels have determined that the use of domain names incorporating trademarks of third parties as he has proposed and described does not constitute bona fide, legitimate noncommercial or fair use within the meaning of the Policy. Respondent is correct that those prior determinations are not binding precedent with respect to this Panel and its determination here, inter alia, because there are different parties, different trademarks and different facts involved.
One key fact that appears to distinguish this proceeding from similar proceedings involving Respondent is that he has now made available a “beta” website intended to demonstrate his “Yoyo” certified messaging concept. This website demonstrates that Respondent continues to invest in his business model, and is able to articulate a consumer-oriented service, even though it is not yet operational. Yet while his website lends some “flesh” to what may have previously been only a speculative concept, it does not respond to the core issues focused on by prior panels. These include whether Respondent has presented a sound reason why “.email” domain names incorporating trademarks of third parties are necessary to the functioning of his business model, and whether the proposed use he suggests is sensible from a technical standpoint.
Part of Respondent’s answer in this proceeding is that he is an inventor with a number of patents to his name. This may demonstrate that Respondent is generally a creative person with technical skills. However, the patents he placed in evidence are in fields unrelated to computer technology, mainly involving window and door fastening mechanisms. As noted above, establishing future fair or bona fide use is not a matter of mere statement or speculation. There must be substantial evidence. It is not sufficient merely to use the terms “back end server” and “metadata” to explain the technical solution he may be proposing.8 Domain names are human friendly identifiers of locations on the Internet, typically the IP number of a server or sub-server location that routes the person entering the domain name in a browser address line to the specified location. Respondent has not explained the relationship between the domain names incorporating third-party trademarks he has registered, back end servers and a metadata function. If vague reference to computer-related technical terms was deemed adequate to establish rights or legitimate interests, common adoption of such references could go a long way to facilitating circumvention of the Policy. This is not to suggest that is what Respondent here has in mind, but rather to indicate why the explanation does not suffice
Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. This shifts the burden to Respondent to explain why he is entitled to a fair use defense. His answer at this point is: (1) I am demonstrably a creative person; (2) I have invested time and money, and (3) you should trust that I know what I am doing and that eventually you will see a result that will satisfy you.
There is also the question whether Respondent’s proposed “non-public” use of the disputed domain name might transform an otherwise abusive use into a fair use. There has been considerable case law within the United States, for example, on the question whether use of trademarks in metadata for the purposes of linking Internet users to competing webpages and offerings of goods or services is legitimate non-trademark use.9 The jurisprudence on this issue is not on a single line. That said, this Panel is unable to assess Respondent’s claim of fair use on the basis of lack of public use without factual evidence regarding what his use is or will be. Respondent has the burden of rebutting Complainant’s assertion that his use or intended use of the disputed domain name is not fair use. He has not satisfied that burden.
The Panel determines that Complainant has demonstrated that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These are “(i) circumstances indicating that [the respondent has] registered or [the respondent 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; (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 [the respondent’s] web site or location.”
There is no direct evidence on the record of this proceeding that Respondent registered the disputed domain name for the purpose of selling it to Complainant or a third-party. This does not mean that this was not Respondent’s intent when he acquired a substantial block of “.email” domain names incorporating the names of third-party trademark owners, or that Respondent might not eventually sell or attempt to sell those domain names, including the disputed domain name. Respondent has pointed to one instance in which he refused a USD 1,000 offer for one of his other disputed domain names. This is probative, but certainly does not prove an intention, given that he may have refused this offer because of the prospective purchaser’s offering price. In connection with the Panel’s finding (below) under paragraph 4(b)(ii) of the Policy, the Panel considers that there is a basis for an inference that Respondent’s decision to acquire a large number of “.email” domain names incorporating the trademarks of third parties was for purposes of financial gain, whether by direct sale of the domain names or some other mechanism for establishing a “toll” payable by third-party trademark owners, consumers or advertisers.
There is no substantial evidence that Respondent is attempting to disrupt the business of a competitor. It is not clear how Respondent might be considered in competition with Complainant.
There is no evidence that Respondent has made any use of the disputed domain name to this point, in commerce or otherwise. Therefore, there is insufficient basis for concluding that Respondent is using the disputed domain name intentionally to attract Internet users for commercial gain by creating confusion as to Complainant acting as source, sponsor, affiliate or endorser of his website or other online location.
Respondent has registered Complainant’s trademark in the “.email” gTLD. This prevents Complainant from registering its trademark in the same “.email” gTLD. Respondent has admittedly engaged in a pattern of doing the same thing with respect to other third-party trademark owners. This pattern of conduct is part of his business model.
The further question under paragraph 4(b)(ii) of the Policy is whether Complainant has demonstrated that Respondent undertook this pattern “in order to prevent the owner of the trademark”, here Complainant, from reflecting its trademark in a corresponding domain name. Respondent appears to have set out to substantially control the “.email” gTLD. It is reasonable to conclude that Respondent registered the disputed domain name and other third-party owned trademark-incorporating domain names in order to prevent them from reflecting those marks in corresponding domain names. By doing so, Respondent in effect becomes a second level registrar controlling the “.email” gTLD space from the standpoint of trademark owners, yet without the expense and substantial administrative requirements involved in operating a gTLD. From this perspective, his investment of USD 82,000 is modest in comparison to the investments that are otherwise made by registrars of new TLDs. Of course, because he claims to have purchased “only” 4,000 domain names in the “.email” gTLD he does not control the full universe of potential second-level domains available in the “.email” space. The Panel accepts that some portion of the domain names he registered do not incorporate third-party trademarks. But that does not change the fact of registering multiple domain names incorporating the trademarks of third parties, a key part of Respondent’s business model.
As this Panel has previously noted, registration of multiple domain names does not standing alone constitute bad faith within the meaning of the Policy. In a recent case involving a respondent that had registered a commonly descriptive term that subsequently became the trademark of a third-party (Diltex, S.A. de C.V. v. Domain Administration, Web Development Group Ltd / Privacydotlink Customer 269486, WIPO Case No. D2015-0082), this Panel observed:
“Respondent has conceded that it registered the disputed domain name because it might have a resale value greater than the cost of registration. Respondent has conceded that it is a ‘domainer’.
Registering domain names for the purpose of resale is not bad faith under the Policy. In order to prove bad faith registration and use, Complainant must demonstrate that Respondent knew or reasonably should have known of its trademark rights at the time Respondent registered the disputed domain name [and Respondent must otherwise have acted in bad faith].”
In the present case, sharply distinct from the facts in Diltex, S.A. de C.V. v. Domain Administration, Web Development Group Ltd / Privacydotlink Customer 269486, supra, Respondent has registered multiple domain names incorporating trademarks of third parties for the very reason that the trademarks are known to the public. Justification for such action requires a showing of legitimate intent and a plausible mechanism for carrying out that intent. It is not enough to say “trust me, I am a creative person”, or to use the terms “back end server” and “metadata” as though these explained his proffered technical solution. That is not persuasive evidence to refute the prima facie evidence of bad faith in the form of registering multiple third-party trademarks in domain names, including Complainant’s trademark.
Respondent has not presented a plausible explanation for his acquisition of the disputed domain name. In the absence of such an explanation, the Panel concludes that Respondent registered the disputed domain name for purposes of preventing Complainant from registering its trademark in the “.email” gTLD. This has been part of a pattern of conduct.
Whether Respondent is actively making commercial use of the disputed domain name in a trademark law sense such that his actions might constitute infringement of Complainant’s trademark might be an issue if Complainant proceeds against him in an infringement action in the United States.10 The Lanham Act in the United States appears by its terms to require use in commerce in order for an infringement to be found, but there is jurisprudence to the effect that this apparent requirement was not intended to foreclose infringement actions that do not involve direct use in commerce. See, e.g., Rescuecom v. Google (2d Circuit 2009), 562 F.3d 123. This is an “unsettled issue”. But, whatever may be the precise state of the use requirement under US law, paragraph 4(b)(ii) of the Policy does not speak of use of a disputed domain name in commerce, but rather a pattern of conduct by a respondent. From the standpoint of the Policy, the registration of third party trademarks in domain names in a pattern to prevent registration is evidence of abusive use.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(ii) of the Policy.
D. The District Court Declaratory Judgment
UDRP panelists are not applying the law of a particular national jurisdiction (see, e.g., Diet Center Worldwide, Inc. v. Jason Akatiff, WIPO Case No. D2012-1609). In that regard, whatever may be the general precedential effect of the Arizona District Court Declaratory Judgment as a matter of US law, it is not precedent binding on this Panel. This Panel may take into account decisions of US courts under the ACPA or otherwise relating to domain names and trademarks when assessing disputes regarding parties based in the United States. Nonetheless, there are circumstances where this Panel has disagreed with a line of reasoning adopted by a US District Court because it is inconsistent with this Panel’s interpretation of the Policy (id.).
With respect to the Arizona District Court Declaratory Judgment involving Yoyo.Email and a third-party trademark owner, the terms of the Declaratory Judgment are summary in nature and do not explain the reasoning of the District Court. In all events, the District Court was not rendering a decision controlling this proceeding where the parties and facts are different. Respondent here is an individual. The plaintiff in the District Court proceeding was a limited liability company (Yoyo.Email, LLC), even if owned or controlled by Respondent. The Declaratory Judgment incorporated a significant number of obligations with respect to Respondent’s potential future use of the domain name at issue in that case (outlined in the Factual Background, supra), substantially restricting its use. This Panel does not have authority to impose conditions on Respondent or his future use of the disputed domain name.
Although Respondent may well intend to pursue initiation of litigation in the United States to block implementation of this decision, the Panel is not controlled by that intention.
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 <masco.email> be transferred to Complainant.
Frederick M. Abbott
Date: April 27, 2015
1 As of April 25, 2015, entering the disputed domain name in a browser address line returns a blank white screen. Panel visit of April 25, 2015.
2 Respondent has provided a temporary password for access by Complainant and the Panel. Panel visit of April 24, 2014.
3 Filing number 013135091, dated August 1, 2014, for classes 35, 38, 42 and 45. The Panel notes that an opposition was filed on December 10, 2014 by RAI-Radiotelevisione italiana Spa with respect to IC 35. Panel visit to OHIM search facility of April 25, 2015.
4 Respondent provided a list of patents generated by Espacenet, and the Panel verified the referenced patent on the UK Ipsum database.
5 The Panel notes that the Complaint refers to the domain name <masco.com> in Section V of the Complaint, referring back to that in Section VI.A, and does not address the significance of the “.email” gTLD. The Panel assumes that Complainant intended to address the “.email” gTLD in the disputed domain name, which becomes more apparent, at least by inference, in subsequent parts of the Complaint.
6 Respondent has referred to retaining a UDRP panelist who opined to the same effect, but does not include a written opinion to that effect.
7 The Registrar has indicated that Respondent has been the registrant since at least July 21, 2014. Neither party has addressed the difference between the record creation date and the date noted by the Registrar as above. The Panel does not consider this material to its decision.
8 Metadata is a broad term, but for present purposes we may take it that Respondent is referring to information relevant to the transmission of data such as information concerning the technical aspects of sending and receiving, including sender and recipient, routing, dates and times, etc. See, e.g., “www.en.wikipedia.org/wiki/Metadata”, and Ben Grubb and James Massola, What is ‘metadata’ and should you worry if yours is stored by law? Sunday Morning Herald, Digital Life, August 6, 2014, visited April 26, 2015 “www.smh.com.au/digital-life/digital-life-news/what-is-metadata-and-should-you-worry-if-yours-is-stored-by-law-20140806-100zae.html”.
9 Compare, e.g., Rescuecom v. Google (2d Circuit 2009), 562 F.3d 123 (sale of adwords use and infringing), with 1-800 Contacts v. WhenU.com, 414 F.3d 400 (2d. Cir. 2005)(metatag not infringing use in context). See also North American Medical Corp. v. Axiom Worldwide, 522 F.3d 1211 (11th Cir.2008)(metatag both use and infringing); Market America v. Optihealth Products, 2008 WL 5069802 (2008)(metatag both use and capable of infringing); Boston Duck Tours v. Super Duck Tours, 527 F.Supp.2d 205 (D.Mass.2007)(collecting cases).