WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NVIDIA Corporation v. Giovanni Laporta, Yoyo.email Ltd.
Case No. D2014-0770
1. The Parties
Complainant is NVIDIA Corporation of Santa Clara, California, United States of America (the "US"), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (the "UK").
Respondent is Giovanni Laporta, Yoyo.email Ltd. of Dunstable, Bedfordshire, UK, self-represented.
2. The Domain Name and Registrar
The disputed domain name <nvidia.email> (hereafter the "Domain Name") 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 May 9, 2014. On May 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 12, 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 May 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response June 11, 2014. On May 30, 2014, Respondent requested an extension to file a Response and the due date for Response was extended until June 21, 2014. The Response was filed with the Center on June 20, 2014.
On June 30, 2014 Complainant submitted an unsolicited supplemental filing. On July 7, 2014 and July 12, 2014, Respondent submitted unsolicited supplemental filings.
In its discretion the Panel decided to consider all of these materials, notwithstanding the fact that the submissions by parties far exceed the word limits of paragraph 10 of the Supplemental Rules.
The Center appointed Dinant T. L. Oosterbaan, Tony Willoughby and David E. Sorkin as panelists in this matter on July 29, 2014. The Panel finds that it was properly constituted. Each member of 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 a large US-based international company in the semiconductor industry with annual revenue of over 4 billion USD in worldwide sales. According to the evidence submitted by Complainant, Complainant has a large number of trademark registrations for NVIDIA in over 70 jurisdictions, including:
- US trademark NVIDIA number 1895559, filing date April 20, 1993;
- US trademark NVIDIA number 2341815, filing date March 5, 1998.
Complainant also owns the European Community trademark NVIDIA number 000749382 with registration date October 14, 1999.
The Domain Name <nvidia.email> was registered by Respondent on March 27, 2014.
The trademarks of Complainant were issued prior to Respondent's registration of the Domain Name.
5. Parties' Contentions
Complainant submits that the Domain Name is identical or confusingly similar to its NVIDIA trademark as the Domain Name contains the NVIDIA trademark in its entirety. The generic Top-Level Domain ("gTLD") ".email" suffix is not sufficient to distinguish the Domain Name from the NVIDIA trademark.
According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name as Respondent is not affiliated or related to NVIDIA in any way, nor is Respondent licensed or authorized to use the NVIDIA trademark. Respondent is also not commonly known by the Domain Name and has not acquired any trademark or service mark rights in the NVIDIA name or trademark.
According to the evidence submitted by Complainant the Domain Name has not been used in connection with an active website so far. Complainant submits that Respondent has registered more than 3000 other ".email" domain names and that Respondent is ranked as one of the top ten owners of new gTLD's. According to Complainant the (passive) holding of the Domain Name does not demonstrate use of the Domain Name in connection with a bona fide offering of goods or services. Respondent is also not commonly known by the Domain Name.
Complainant submits that Respondent has registered and is using the Domain Name in bad faith as Respondent no doubt had knowledge of the well-known trademarks of Complainant.
The extensive submissions of Respondent can be summarized as follows.
According to Respondent the acquisition of a considerable number of ".email" domain names where the ".email" suffix is preceded by the name of a (international) company, including the Domain Name <nvidia.email>, is intended to establish an innovative system to use domain names and the emails that flow from them in order to create a domain name directory and a new system to be based on that directory to record the sending and receipt of emails. Respondent acquired these domain names after they had become available on the open market after March 26, 2014, the expiration of the "sunrise" period. The system intended by Respondent (hereafter also the "Yoyo Service") involves companies, services and others who are users of emails to be entered in an Internet directory and to adopt a recording system for emails in the same way that registered mail registers the sending and arrival of a letter. According to Respondent people can join the Yoyo Service and upon joining they obtain a free Yoyo email address. Emails are routed through a user interface to the Yoyo server and from there to the company using the <.email> address acquired by Respondent. According to Respondent, the role of the Yoyo Service is limited to the role of an email courier service or email operator; the Yoyo Service can record in both directions in order to obtain independent verification that an email has been sent or received at times when a recorded delivery system is needed.
According to a statement submitted by Respondent as part of its initial response "we intend to commercialise the system by various means which will be explored as the system develops, however, we will not involve the use or display of any trademark or engage in any way cybersquatting or illegal activity".
Respondent argues that it is an email courier service. Much like real world couriers that transport letters and parcels (that have addresses and company names written on them) Respondent would use all its <.email> domain names as names and addresses as a courier would use names and addresses written on the parcel/letter to deliver mail. If Complainant should arbitrarily choose it does not want to send out emails from Respondent's email courier system, Respondent still uses the domain name as the "courier link" to send emails via the Yoyo Service to the company; so even if a company chooses not to take part in the sending out of emails via the service, the service is still useful as the Yoyo Service would still independently record and provide an e-receipt ticket to the sender that shows an email had been sent to known standard email addresses of the company.
According to Respondent the Domain Name is not identical or confusingly similar to a trademark in which Complainant has rights. Respondent argues that the Domain Name is only used as a technical link which links users of the Yoyo Service to the companies whose trademarks are used in the multiple domain names acquired by Respondent. There is no intent to use the Domain Name as a website address.
According to Respondent it incorporated the UK private limited company "Yoyo.Email Limited" on March 31, 2014. Respondent argues that it spent a considerable sum of money (about GBP 100.000 according to Respondent) in buying a considerable number of domain names as one of the world's largest ".email" registrants and in having seven staff members working on the project, all in preparation for the Yoyo Service and thus in connection with a bona fide offering of a service.
Finally, Respondent argues extensively that there is no bad faith. Respondent submits it does not require permission from a trademark holder to make "fair use" of the Domain Name, simply because Respondent does not display the trademark in the Domain Name anywhere online. Respondent argues against the suggestion that permission is first needed from Complainant to use the Domain Name and that without having secured permission it automatically constitutes "bad faith".
Under the heading "legal monetization not in bad faith" Respondent argues there is no intent to confuse the public. There is no intent to passively hold the Domain Name, as the activity of Respondent is to provide its service. There is no intent to advertise the Domain Name, or gain illegitimately from connected social media or advertising. There is no intent to sell, rent or transfer the Domain Name to Complainant for monetary consideration in excess of documented out of pocket costs directly related to the Domain Name. There is no intent to sell or rent the Domain Name to a competitor of Complainant. There is no intent to engage in any pattern of registration of bad faith activity. There is no intent to disrupt the business of a competitor, because Respondent is not a competitor of Complainant. There is no intent to tarnish anyone's trademark. There is no intent to violate anyone's trademark rights. There is no intent to copy anyone's trademark. There is no intent to hijack anyone's email, it's a widening of consumer choice that Respondent offers. There is no intent to stop anyone from reflecting their mark in a domain name because everyone can if they choose to do so, Respondent does not prevent it anyway. There is no intent to disrupt the business of Complainant, because Complainant already has the ability to email freely. There is no intent to force anyone to use the service, it is an optional service. There is no intent to force or hold anyone hostage to use the service, as Respondent provides the service and the Domain Name to use for free. There is no intent to mislead the public for commercial gain. The Policy clearly does not say that domain names that reflect trademarks cannot be used in a commercial service; the Policy clearly says domain names (when they can be seen), can be used, as long as it's done fairly, legitimately and above all without intent to mislead the public.
Finally, on the basis of quotations from a Wikipedia entry on an affirmative defense available under United States trademark law Respondent argues extensively that its use of the trademarks of Complainant is to be regarded as (nominative) fair use.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." The Center received unsolicited supplemental filings from Complainant and Respondent. Paragraph 10(d) of the Rules empowers the panel to determine the admissibility, relevance, materiality and weight of the evidence. In this case, this Panel has decided to take into account such Parties' supplemental filings.
Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the Domain Name should be transferred or cancelled:
(i) the Domain Name registered by Respondent 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Name is identical or confusingly similar to that trademark or service mark in which Complainant has rights.
Complainant has established that it is the owner of numerous trademark registrations for the trademark NVIDIA. The Panel notes that Complainant's registrations predate the creation date of the Domain Name.
The Domain Name incorporates the entirety of the NVIDIA trademark as its distinctive element. Many UDRP decisions have found that a domain name is identical or confusingly similar to a complainant's trademark where the domain name incorporates the trademark in its entirety. It is well established that for this purpose the applicable top-level suffix in the domain name (in this case ".email") may be disregarded as it is often not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between Complainant's trademark and the Domain Name.
The Panel finds that Complainant has proven that the Domain Name is identical to Complainant's trademarks.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
Respondent claims to have rights or legitimate interests in the Domain Name based upon its intended use and demonstrable preparations to use the Domain Name in the email courier service described above. As noted above Respondent's business plan is to register a very large number of domain names with the ".email" gTLD, all such domain names incorporating (well-known) trademarks and names of companies, and to operate an email courier and confirmation service.
The Panel notes that a similar business plan and motive was advanced by Respondent in several other cases decided under the Policy, including (1) Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686 (<sheraton.email> and <sheraton.parklane.email>, "the Sheraton case"), (2) Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0637 (<statoil.email>, "the Statoil case"), and (3) Mejeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email, WIPO Case No. D2014-0730 (<lurpak.email>, "the Lurpak case").
In the Sheraton case the panel noted the following:
"The essence of this matter lies in the contention of the Respondent that he is entitled to register the disputed domain names notwithstanding the fact that they include the Complainant's SHERATON trademark, because he intends to establish a purportedly legitimate email recorded delivery service. The Respondent submits that this is required, along with the acquisition of many other analogous registered '.email' domain names, because otherwise it is not possible to establish the service he intends to operate. The Respondent contends that he is taking all necessary steps to establish the service. The main weakness in the Respondent's argument is that nothing the Respondent has put before the Panel either explains or justifies why the Respondent actually has to register and own the disputed domain names for this purpose. The analogy with a directory does not hold: any person may indeed be free to compile a directory of domain names, or telephones or addresses or similar, but need not for that purpose actually own any related domain names, by registration or otherwise. To compile a list or directory of trademarks, or company names, or business or trading names, the compiler need not acquire any rights whatsoever in those names. In most cases it would in fact render the directory pointless if he did. Here the Respondent has not established beyond bald assertion, how and why he needs to own the registered domain names for the purpose of establishing his intended service. This is not a case where his rights or interests can be established by the nature of the intended or activated website to which the relevant domain name resolves. For the Panel to hold otherwise i.e. that the Respondent's interests vest on mere registration of a domain name incorporating a third-party trademark would render the Policy ineffective based on his mere indications of intention, which cannot be permitted to occur."
The reasoning of the panel in the Sheraton case was adopted by the panels in the Statoil case and in the Lurpak case. This Panel agrees with the panels in the Sheraton, Statoil, and Lurpak cases.
Even assuming that Respondent met its burden of proving demonstrable preparations under paragraph 4(c)(i) of the Policy, the Panel finds Respondent's business plan and email courier service not to result in any rights or legitimate interests in connection with a bona fide offering of goods or services for the following reasons:
First, 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.
In addition, in the opinion of the Panel, the use of the Domain Name incorporating the trademark of Complainant in connection with the email courier service of Respondent, cannot be considered a bona fide offering of a service nor as a legitimate noncommercial or fair use of the Domain Name as the trademark concerned will be affected or tarnished by the email courier service, especially in view of the fact that some form of commercialization seems inevitable in view of the substantial investments made by Respondent, which commercialization and intent for commercial gain is expressly admitted by Respondent; this opinion of the Panel is also true in the event the Domain Name incorporating the trademark is not displayed or made visible in a website.
Furthermore, the Panel could not find any indication in the record that Respondent is commonly known by the Domain Name nor that it has acquired trademark rights corresponding to the Domain Name.
In view of the above findings, there is no need for the Panel to address the additional issues and submissions of Respondent.
As the Policy is governed by its own terms and not necessarily by national laws including those of the United States or England (though in appropriate cases, such national law may be taken into account as relevant), the Panel does not review or discuss the relevant arguments of Respondent based on (nominative) fair use of trademarks in its intended email courier service. Even so, for the sake of completeness, the Panel does not share Respondent's view as to any potential (nominative) fair use.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name and paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
It is undisputed that Respondent, through the Trademark Clearinghouse instituted by ICANN, had or can be expected to have had prior knowledge of Complainant's trademarks at the time the Domain Name was registered. For reasons largely overlapping with the Panel's conclusion that Respondent lacks a right or legitimate interest in the Domain Name, the Panel also concludes that Respondent has registered and is using the Domain Name in bad faith within the meaning of the Policy and the non-exclusive factors of bad faith articulated in the Policy, paragraph 4(b).
Respondent expressly admitted in its submissions that it intends to commercialize its email courier service in some manner, both in its statement submitted as part of its initial response (and mentioned above), and in its supplemental filing of July 7 and July 12, 2014 when it argued: "There is no intent to … gain illegitimately from connected social media or advertising"; the addition of the word "illegitimately" in the sentence quoted above strongly suggests that it is the intent of Respondent to gain from social media or advertising.
In addition, Respondent has not demonstrated why it needs to own the Domain Name (which incorporates Complainant's distinctive mark in its entirety) in order to carry out its email courier service although objectively it can be seen that a domain name in that form might attract (enforcement-based) interest from the trade mark owner.
Even assuming that the Domain Name is not visible to the general public but only to users of the Yoyo.email Service, these users are still to be considered Internet users who are intentionally attracted, for commercial gain, to Respondent's online location (the Yoyo Service) which creates a likelihood of confusion with Complainant's mark as to the source, affiliation, or endorsement of the service on Respondent's Yoyo website, Yoyo location or Yoyo Service.
The Panel finally notes that Respondent has been found to have registered and used ".email" domain names in bad faith in other cases under the Policy, which suggests a pattern of such conduct on the part of Respondent (see Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email,supra, Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd.,supra, and Mejeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email,supra).
In view of the above findings, there is no need for the Panel to address the additional issues and submissions of Respondent.
In the circumstances of this case, as Respondent has registered the Domain Name with clear knowledge of Complainant's prior trademark rights, the Panel concludes that this is both evidence of bad faith registration and use.
Accordingly, paragraph 4(a)(iii) of the Policy is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <nvidia.email> be transferred to Complainant.
Dinant T. L. Oosterbaan
David E. Sorkin
Date: August 5, 2014
On June 30, 2014, and unbeknown to me, Complainant submitted to the Center by email its list of candidates for a three member panel in this case and nominated me as one of those candidates. Respondent was copied in on that email.
On July 4, 2014, the Center requested from me (and I provided) a Statement of Acceptance and Declaration of Impartiality and Independence. The names of the parties were unfamiliar to me. I had never had any dealings with them.
On July 4, 2014, the Center notified the parties of my appointment as a panelist in this case. The notification included the warning: "The Parties are reminded of the prohibition contained in Rules, paragraph 8 against unilateral communications with the Administrative Panel or an individual Panelist."
On July 14, 2014, I received an email from Respondent stating he had "come across [my] name online as someone that can maybe assist [him] in some legal matters". At the time, his name had not registered with me as being Respondent in this case. Attached to the email was a document that he described as a "defence template" document. The document was generic in the sense that all parties' names and the case numbers were blanked out. I responded on July 15, 2014 saying "I'm now retired as a practising lawyer, although I do still adjudicate some domain name disputes" and I recommended another lawyer expert in the field who might be able to help him. I concluded by saying that I had had a quick look through his "defence template" document and I expressed a 4-sentence preliminary and very general view on it, which, as it has turned out after a review of all the extensive submissions, is consistent with the views of the Panel as set out above.
It was only when I was given access to the case papers in this case that I realised that the person who had contacted me on July 14, 2014, was Respondent and I duly reported the matter to the Center.
If Respondent's purpose in contacting me for assistance was to have me disqualified as a panelist or to somehow compromise my impartiality in this case, it failed. In approaching me as he did, Respondent committed a flagrant breach of the Rules and in the face of a clear warning from the Center, but it is to be noted that this incident played no part in the Panel's decision in this case.
Date: August 5, 2014